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 '''III
 
 UNIVERSITY 
 
 OF CALIFORNIA 
 
 LOS ANGELES 
 
 SCHOOL OF LAW 
 LIBRARY
 
 THE FIXED LAW OF PATENTS
 
 THE FIXED LAW 
 OF PATENTS 
 
 AS ESTABLISHED BY THE SUPREME COURT OF 
 
 THE UNITED STATES AND THE NINE 
 
 CIRCUIT COURTS OF APPEALS 
 
 By 
 WILLIAM MACOMBER 
 
 COUNSEL IN PATENT CAUSES 
 
 LECTURER ON THE LAW OF PATENTS IN CORNELL UNIVERSITY COLLEGE OF LAW 
 AUTHOR OF " engineers' HANDBOOK ON PATENTS" 
 
 SECOND EDITION 
 WITH ADDITIONS 
 
 BOSTON 
 
 LITTLE, BROWN, AND COMPANY 
 
 1913
 
 T 
 I<)I3 
 
 Copyright, 1909, 1913, 
 Bt Little, Brown, and Company. 
 
 All rights reserved. 
 
 ^37.'7^ 
 
 9. J. PARHniLL A Co., UOSTON, U.S.A.
 
 TO 
 
 ADELBERT MOOT, Esq^ 
 
 EEGENT OF THE UNIVERSITY OF THE STATE OF NEW YORK, MEMBER 
 OF THE NEW YORK BOARD OF STATUTORY CONSOLIDATION, ETC 
 
 THIS BOOK IS DEDICATED BY HIS ERSTWHILE PUPIL AND 
 LIFELONG FRIEND.
 
 PEEFACE TO THE SECOND EDITION 
 
 A SECOND edition of this work is made necessary by the large 
 number of important decisions reported since the first publication. 
 A considerable number of these — notably the Supreme Court 
 decisions in the Expanded Metal Case, the Mimeograph Case and the 
 Westinghouse Transformer Case — have worked changes of im- 
 portance. 
 
 These many decisions have been excerpted and added in an Ap- 
 pendix Chapter, and include 225 U. S. and 194 Fed, Rep. The 
 classification, section headings and numbers are identical with the 
 body of the work. This chapter contains also excerpts from a num- 
 ber of other cases which were insufficiently covered in the first edition. 
 
 The Brief Survey Chapter has been revised throughout to meet 
 these changes and additions. 
 
 The tables of cases have been entirely reset, and the Table of Cases 
 Excerpted has been much amplified. 
 
 The Patent Statute Digested Chapter has been made to conform 
 to changes in statute, especially those of the Federal Judicial Code. 
 
 Such general revision has made necessary an entirely new General 
 Index. 
 
 This occasion gives opportunity to express my appreciation of 
 the numerous and kindly commendations of this work by bench 
 and bar alike. 
 
 W. M. 
 
 Buffalo, September, 1912.
 
 PREFACE 
 
 In other days, an introduction was called an " advertisement." 
 It advertised what the book contained — what it stood for. The 
 writer reverts to this ancient custom, and here proceeds to indicate 
 the character and scope of this work, the plan of construction, 
 and how it may be used. 
 
 The first fact to be advertised is that this book is written primarily 
 and chiefly for the general practitioner — for the lawyer looking 
 for general principles. Questions of patent law, which are both 
 simple and settled, arise from day to day in general practice. To 
 put the answers to those questions between the thumb and finger 
 of the busy lawyer is my prime object. 
 
 Nevertheless, since the book gathers up, in the language of the 
 decisions, the appellate law, it should be of interest to the specialist 
 who, unless he has digested the law for himself, will hardly have 
 such a compilation. 
 
 It is an orderly statement of the fixed law of patents in the 
 exact language of the court, except in minor instances where 
 such course is not possible. It is, therefore, absolutely authori- 
 tative, because it is what the courts have said, and not what I, 
 or anyone else, may think they have said. 
 
 The fixed law of patents comprises the decisions of the Supreme 
 Court of the United States, the decisions of the nine Circuit Courts 
 of Appeals, and the Patent Statute. Nothing else can be regarded 
 as fixed law. 
 
 The book does not cover pleading, practice, or procedure, 
 except as to matters peculiar to patent law; it does not cover 
 patent soliciting; it does not cover trade-marks or copyrights. 
 
 The entire work is founded upon the principle that a patent is 
 a monopoly created in contravention of the common-law, and that 
 every decision must, therefore, root back in a statute. Every main 
 proposition is accordingl}^ worked out from the statute. No other 
 plan can be in harmony with the facts. 
 
 No one of the two thousand appellate decisions relating strictly
 
 X PREFACE 
 
 to patents, stating or reiterating any principle or rule, has been 
 intentionally omitted; and in many cases the principle or rule 
 has been restated and reiterated with seeming prolixity. But it 
 is not wise to omit any. Each case differs from every other; and 
 what is seeming repetition is but a repeated application of a prin- 
 ciple to varying facts and conditions. And yet, quite a number of 
 appellate decisions yield no quotation in this work. This is so 
 because those cases turned upon questions of fact or claim con- 
 struction. 
 
 No rule is stated upon the authority of a court of original juris- 
 diction. No matter what the rule may be, or how long or how much 
 respected, a rule of a circuit court is not fixed law. A remarkable 
 example of this is seen in Mayor v. American, 60 Fed. 1016; 9 
 C. C. A. 336, where a rule established in Brooks v. Jenkins, 3 
 McLean, 432; Fed. Cas. 1953, was reversed in the Second Circuit 
 after more than fifty years of general and unquestioning following. 
 And while the consequent omission of many familiar rules renders 
 the work incomplete, in a sense, it places it without the pale of 
 flux and gives it the character of a code, rather than the detail of 
 a digest. Here it is also to be remarked that I have declined to 
 quote as fixed law a statement of a judge sitting in circuit even when 
 such statement has been quoted verbatim and approved by the 
 appellate court. I do not believe that law by adoption is fixed 
 law, and it would seem that I am following high authority in 
 taking this position. (Westinghouse v. Stanley, 138 Fed. 823; 
 71 C. C. A. 189). 
 
 In the preparation of the material for this work, I have per- 
 sonally read and excerpted from every appellate patent decision 
 containing any point of law. No reliance whatever has been 
 placed upon syllabus of court or reporter. This has been necessary 
 for many reasons, but chiefly three: First, the syllabi of reported 
 patent decisions, by reason of the abstruse and technical subject- 
 matter, are often vague and unreliable, and in some cases abso- 
 lutely misleading. Second, all of the questions passed upon in a 
 given case arc rarely included in the syllabus; and this is as true 
 when the notes are made by the court as when they are made by 
 the reporter, for the court views the opinion from the cause itself, 
 and often retrards unessential a holding of importance because 
 the case, itself did not hinge directly thereon. Third, most rules 
 are founded upon authorities cited in direct connection with the 
 statement of the rule; and as the anthoritv for the rule is well- 
 nigh as important as the rule itself, the collection of such authori-
 
 preface' xi 
 
 ties to accompany the statement of the rule has made a detailed 
 study and analysis of every opinion indispensable. 
 
 In addition to such a study of the entire text of every decision, 
 this work has necessitated, — (1) Making a condensed statement 
 of every point of law in the exact language of the decision, wherever 
 possible. (2) Classifying these quotations under titles and section 
 headings. (3) Appending to each quotation the authorities, if any, 
 upon which the ruling was founded. (4) Repeating the ruling as 
 necessary to bring it under all necessary titles to prevent over- 
 looking a decision by going to a wrong title. (5) Making a cor- 
 responding analysis of the patent laws so that each title may read 
 out from the statute. (6) Tabulating and cross-referencing the 
 titles and section-headings so that the general practitioner, without 
 detailed familiarity with patent law terminology, may at once 
 find all the fixed law on any subject. (7) Appending a table of 
 cases quoted from with section references; the name of the judge 
 writing the opinion; whether affirming or reversing the court 
 below, with reference to the opinion below if reported; names of 
 dissenting judges, if any; and in C. C. A. decisions the circuit, 
 and the names of the judges sitting; also, in many cases, memoranda 
 of other cases bearing upon the patent under review. (8) Preparing 
 a table of cases cited by the courts as authority for rulings made. 
 (9) Giving with each case the volume and page of all standard 
 reports containing the case. 
 
 At the solicitation of lawyers whose opinions I value I have 
 preceded the main body of the work with a chapter entitled 
 " A Brief Survey of the Fixed Law of Patents." This was not 
 a part of the original conception; it is supplemental — written 
 in the freedom of personal expression — and stands in contrast 
 with the fixed, authoritative character of the body of the work. 
 
 I have not hesitated, in some instances, to express my opinion 
 upon certain rulings; but these are always appended in such form 
 as to be readily distinguishable from the law. 
 
 The method of citing cases is an innovation. Titles have been 
 curtailed. Life is too short to give descriptive titles. It is sufficient 
 to say " National v. Interchangeable," rather than " The National 
 Hollow Brake Beam Company v. The Interchangeable Brake Beam 
 Company." The time has gone by when learned judge or lawyer 
 may give from memory the titles of the leading cases. 
 
 A labor of this character, growing out of the necessities of my 
 practice, cannot be free from faults. Years teach consciousness 
 of one's own frailty, and a deeper respect for the greatness of great
 
 xii PREFACE 
 
 minds. Yet great minds are fallible, and from time to time I have 
 not hesitated to dissent from a rule or holding, knowing that 
 criticism founded on conviction born of experience, is never un- 
 welcome to a broad mind. 
 
 In dedicating this book to my preceptor, counselor, and friend, 
 Adelbert Moot, Esq., I am but recognizing the fact that it is not 
 ourselves alone, but contact with lofty minds, that inspires us to 
 our best work. 
 
 William Macomber. 
 Buffalo, August, 1909.
 
 CONTENTS 
 
 PAGE 
 
 Preface to the Second Edition vii 
 
 Preface . . . ix 
 
 Table of Cases Excerpted xv 
 
 Table of Cases Cited cxiii 
 
 A Brief Survey of the Fixed Law of Patents _ . . 1 
 
 The Fixed Law 77 
 
 Cross - Reference Table of Patent Laws .... 856* 
 
 The Patent Statute Digested 857 
 
 Appendix of Cases Reported since First Edition . .915 
 Index 1027
 
 TABLE OF CASES EXCERPTED 
 
 WITH ANNOTATIONS 
 
 The annotations give generally: (1) volume and page of each case in all 
 standard reports; (2) affirmance, reversal or other disposition of the case 
 below, with volume and page of opinion, if reported; (3) name of judge or 
 justice writing the opinion, in small capitals; (4) name of judges or jus- 
 tices dissenting, and name of writer of dissenting opinion, in small capitals; 
 (5) the circuit, and names of judges sitting in C. C. A. cases; (6) references 
 to other cases related by subject-matter or patents involved. 
 
 [References are to sections. " App." refers to Appendix Chapter, pp. 00 
 covering cases reported since first printing down to and including 225 U. S. 
 and 194 Fed.] 
 
 Acme V. Gary, 101 Fed. 269; 41 C. C. A. 338 74, 79, 620 
 
 Affg. 99 Fed. 500; 96 Fed. 344. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Acme V. Meredith, 183 Fed. 124; 105 C. C. A. 414 App. 188, 456 
 
 Eighth; Hook, Adams, Reed. 
 
 Acme Acetylene v. Commercial, 192 Fed. 321; 112 C. C. A. 573 App. 
 
 9, 420, 421, 476, 543, 544, 561 
 Affg. 188 Fed. 89; see 166 Fed. 907; 181 Fed. 387. 
 Sixth; Warrington, Knappen, Sanford. 
 
 Acme-Keystone v. Dearborn, 185 Fed. 503; 107 C. C. A. 603 App. 506 
 
 Affg. 180 Fed. 766. 
 
 Second; Lacombe, Coxe, Ward. 
 Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. .438, 459, 473, 554, 794, 929 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Adams v. Bellaire, 141 U. S. 539; 35 L. Ed. 849; 12 S. Ct. 66. .90, 596, 635 
 Field. 
 
 Adams v. Burks, 84 U. S. 453; 21 L. Ed. 700 763, 769, 927 
 
 Miller; dissenting: Bradley, Swayne, Strong. 
 Adams v. Lindell, 77 Fed. 432; 23 G. C. A. 223. . .204, 223, 441, 473, 507, 674 
 Affg. 63 Fed. 986. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Adams v. Tannage, 81 Fed. 178; 26 G. G. A. 326 561 796 
 
 Affg. 77 Fed. 191. 
 
 Third; Dallas, Butler, Buffington. 
 
 Adee v. Mott, 55 Fed. 876; 5 C. G. A. 288 903 
 
 Affg. 46 Fed. 77. 
 
 Second; Per Curiam; Lacombe, Wheeler. 
 
 Adriance v. National, 121 Fed. 827; 58 G. C. A. 163 516 924 
 
 Revg. Ill Fed. 637. 
 
 Second; Wallace, Lacombe. 
 Adriance v. National, 101 Fed. 1005; 41 C. C. A. 675. . . Add 133 
 
 See 98 Fed. 118. • • • • kf 
 
 Second; Wallace, Lacombe, Shipman, Per Curiam.
 
 XVI CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix | 
 
 Aeolian v. Juelg, 155 Fed. 119; 86 C. C. A. 205 478, 579 
 
 Affg. 149 Fed. 939. 
 
 Second; Per Curiam; Wallace, Lacombe, Coxe. 
 Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. .. .6, 144, 267, 318, 319, 
 Clifford. 321, 368, 369, 487, 503, 795, 850, 861 
 
 Ager V. Murray, 105 U. S. 126; 26 L. Ed. 942 151, 157 
 
 Gray. 
 
 Ajax V. Pettibone, 125 Fed. 748; 60 C. C. A. 516 '. 207 
 
 Seventh; Jenkins, Baker, Bunn. 
 
 Albany v. Worthington, 79 Fed. 966; 25 C. C. A. 258 187, 200, 341 
 
 Affg. 73 Fed. 825. 
 
 Second; Lacombe, Shipman. 
 Albrigiit V. Teas, 106 U. S. 613; 27 L. Ed. 295; 1 S. Ct. 550. . . .714, 724 
 Woods. 
 
 Allen V. Culp, 166 U. S. 501; 41 L. Ed. 1093; 17 S. Ct. 644 887 
 
 Affg. 166 Pa. St. 286. 
 Brown. 
 
 Allen V. Riley, 203 U. S. 347; 51 L. Ed. 216; 27 S. Ct. 95 920 
 
 Affg. 71 Kan. 378. 
 
 Peckham; dissenting, White, Day. 
 
 Allington v. Booth, 78 Fed. 878; 24 C. C. A. 378 551, 556, 562 
 
 Affg. 72 Fed. 772; see 61 Fed. 297. 
 Second; Wallace, Lacombe, Shipman. 
 Allis-Chalmers v. Westinghouse, 184 Fed. 722; 107 C. C. A. 541. .App. 604 
 Affg. 180 Fed. 751. 
 
 Third; Gray, Buffington, Lanning. 
 
 Am. Bell Tel. Co. v. U. S. 68 Fed. 542; 15 C. C. A. 569 26, 57, 361, 
 
 727, 789 
 Revg. 65 Fed. 86. 
 First; Colt, Putnam, Nelson. 
 
 Am. Bell Tel. Co. v. National, 119 Fed. 893; 56 C. C. A. 423 690 
 
 Affg. 109 Fed. 976. 
 
 First; Colt, Putnam, Aldrich. 
 
 Am. Box Mach. v. Crosman, 61 Fed. 888; 10 C. C. A. 146 847 
 
 Affg. 57 Fed. 1021, except as to terms of decree. 
 First; Colt, Nelson, Webb, Per Curiam. 
 
 Am. Brake Beam v. Pungs, 141 Fed. 923; 73 C. C. A. 157 160, 744 
 
 Seventh; Grosscup. 
 Am. Can v. Hickmott, 142 Fed. 141; 73 C. C. A. 359. . . .380, 435, 936, 937 
 Revg. 137 Fed. 86. 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Am. Can v. Morris, 142 Fed. 166; 73 C. C. A. 384 103, 666 
 
 Seventh; Baker, Seaman, Anderson. 
 Am. Car & Foundry v. Morton Trust, 175 Fed. 568; 99 C. C. A. 190.. App. 
 
 594 
 Revg. 161 Fed. 546. 
 Third; Buffington, McPherson. 
 
 Am. Caramel v. Mills, 162 Fed. 147; 89 C. C. A. 171 338, 777 
 
 Modfg. 149 Fed. 743. 
 Third; Dallas, Grav, Archbald. 
 
 Am. Caramel v. Mills, 149' Fed. 743; 79 C. C. A. 449 61, 456, 624, 851 
 
 Revg. 138 Fed. 142; see 162 Fed. 147. 
 Third; Dallas, Grav, Archbald. 
 
 Am. Carriage v. Wyeth. 139 Fed. 389; 71 C. C. A. 485 452, 563, 665 
 
 Sixth; Lurton, Severens, Richards.
 
 CASES EXCERPTED, WITH ANNOTATIONS XVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Am. Chocolate v. Helmstetter, 142 Fed. 978; 74 C. C. A. 240. . . .603, 637, 
 
 754 
 Affg. in part 129 Fed. 919. 
 
 Second; Wallace, Lacombe, Townsend. 
 Am. Coat Pad v. Phoenix, 113 Fed. 629; 51 C. C. A. 339 .. . .118, 271, 305, 
 
 386, 546, 572, 929 
 Fourth; Simonton, Purnell, Waddill. 
 Am. Cotton Tie v. Simmons, 106 U. S. 89; 27 L. Ed. 79; IS. Ct. 52. . .523, 
 
 524 
 Blatchford. 
 
 Am. Crayon v. Sexton, 139 Fed. 564; 71 C. C. A. 548 196, 459, 468 
 
 Sixth; Lurton, Severens, Richards. 
 Am. Dehnter v. American, 128 Fed. 709; 63 C. C. A. 307. .398, 447, 674 
 
 Fifth; McCormick, Shelby, Parlange. 
 Am. Disappearing Bed v. Arnaelsteen, 182 Fed. 324; 105 C. C. A. 40 
 
 ....App. 207, 325, 679 
 Ninth; Gilbert, Ross, Wolverton. 
 
 Am. Electric Novelty v. Newgold, 113 Fed. 877; 51 C. C. A. 501 332 
 
 Affg. 108 Fed. 957; see 99 Fed. 567. 
 Second; Wallace, Townsend. 
 
 Am. Featherbone v. Warren, 141 Fed. 655; 72 C. C. A. 649 59 
 
 Revg. 133 Fed. 304. 
 
 Sevaith; Grosscup, Baker, Seaman. 
 Am. Fibre-Chamois v. Buckskin, 72 Fed. 508; 18 C. C. A. 662. . .111, 324, 
 
 325, 327 
 Revg. 69 Fed. 247; distinguishing Locomotive v. Medart, 158 U. S. 
 68, from Cochrane v. Deener, 94 U. S. 780. 
 Sixth; Taft, Lurton, Hammond. 
 Am. Fibre-Chamois v. Port Huron, 72 Fed. 516; 18 C. C. A. 670. .411, 627 
 
 Sixth; Taft, Lurton, Hammond. 
 Am. Fur Refining v. Cimiotti, 123 Fed. 869; 59 C. C. A. 357. .232, 473, 
 
 502 
 Revg. 120 Fed. 672. 
 Third; Acheson, Dallas, Buffington. 
 
 Am. Fur Refining v. Cimiotti, 118 Fed. 838; 55 C. C. A. 513 543, 546 
 
 Affg. 117 Fed. 623. 
 Third; Acheson, Dallas, Gray. 
 Am. Graphophone v. Leeds, 170 Fed. 327; 95 C. C. A. 511. . .App. 97, 862 
 
 Second; Coxe, Ward, Noyes. 
 Am. Graphophone v. Talking Machine, 98 Fed. 729; 39 C. C. A. 245. .569 
 
 Seventh; Woods, Bunn, Seaman. 
 Am. Graphophone v. Universal, 151 Fed. 595; 81 C. C. A. 139. .626, 648 
 Revg. 145 Fed. 636, 643. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Am. Graphophone v. Victor, 183 Fed. 580; 106 C. C. A. 348 App. 510 
 
 Revg. 178 Fed. 577; see 140 Fed. 860; 145 Fed. 350; 151 Fed. 595; 
 170 Fed. 327; 150 Fed. 147; 154 Fed. 58. 
 Second; Coxe, Ward, Noyes. 
 
 Am. Graphophone v. Victor, 188 Fed. 428; 110 C. C. A. 308 App. 714 
 
 Affg. 188 Fed. 431. 
 
 Third; Buffington, Lanning, Young. 
 
 Am. Grass Twine v. Choate, 159 Fed. 140; 86 C. C. A. 330 626, 667 
 
 Seventh; Grosscup, IBaker, Kohlsaat. 
 
 Am. Grass Twine v. Choate, 159 Fed. 429; 86 C. C. A. 409 490 
 
 Seventh; Grosscup, Baker, Kohlsaat.
 
 Xviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix I 
 
 Am. Heat Ins. v. Johnston, 52 Fed. 228; 3 C. C. A. 53 871 
 
 Revg. 48 Fed. 446. 
 
 Third; Dallas, Butler, Green. 
 Am. Lava v. Steward, 155 Fed. 731; 84 C. C. A. 157. .56, 309, 780, 817, 904 
 Affd. 215 U. S. 161; refusing to follow decision of C. C. A. '2d Circ. 
 on same pat.; see 128 Fed. 599. 
 Sixth; Lurton, Severens, Richards. 
 
 Am. Laundry Mach. v. Troy, 174 Fed. 415; 98 C. C. A. 612 Add 631 
 
 Affg. 171 Fed. 878; see 161 Fed. 556; 151 Fed. 59. 
 Second; Lacombe, Coxe, Ward, Per Curiam. 
 
 Am. Mattress v. Springfield, 165 Fed. 191; 91 C. C. A. 225 496 
 
 Seventh; Grosscup, Baker, Landis. 
 Am. Ordnance v. Driggs-Seabury, 109 Fed. 83; 48 C. C. A. 241 665 
 
 Affg. 99 Fed. 982. 
 
 Second; Lacombe, Shipman. 
 Am. Ordnance v. Driggs-Seabury, 114 Fed. 936; 52 C. C. A. 556 602 
 
 Affg. 99 Fed. 996. 
 
 Second; Wallace, Lacombe, Shipman. 
 Am. Paper Bag v. Van Northwick, 52 Fed. 752; 3 C. C. A. 274 752, 
 
 , r 753, 764 
 
 Seventh; Harlan, Woods, Jenkins. 
 Am. Paper Pail v. National, 51 Fed. 229; 2 C. C. A. 165. . . 118 541 
 
 Affg. 48 Fed. 913; appro\ing 41 Fed. 139. ' 
 
 Second; Wallace, Shipman. 
 Am. Pneumatic v. Snyder, 180 Fed. 712; 104 C. C. A. 78.... App. 68, 
 
 Revg. 174 Fed. 152. 
 Third; Buflfington, Bradford,- McPherson. 
 Am. Road Mach. v. Pennock, 164 U. S. 26; 41 L. Ed. 337; 17 S Ct 1 
 Aff,.45Fed.252. ....207,592 
 
 Fuller. 
 Am. Roll Paper v. Weston, 59 Fed. 147; 8 C. C. A. 56. . 74 103 380 
 
 Affg. 51 Fed. 237. 
 
 Sixth; Taft, Lurton, Severens. 
 Am. Sales Book v. Bullivant, 117 Fed. 255; 54 C. C, A. 287 131, 404, 
 
 Ninth; Gilbert, Hawley, De Haven. 
 Am. Sales Book v. Carter-Grume, 150 Fed. 333; 80 C. C. A. 339 107 
 
 Revg. 145 Fed. 939. 
 Second; Lacombe, Townsend, Coxe. 
 
 Am. School Furniture v. Vaught, 108 Fed. 571; 47 C. C. A. 496 542 
 
 Seventh; Woods, Jenkins, Grosscup, Per Curiam. 
 Am.. Soda Fountain v. Sample, 136 Fed. 857; 70 C. C. A. 415 138 
 
 Revg. 1.34 Fed. 402; see 126 Fed. 760; 130 Fed. 145. 
 Third; Acheson, Dalla.s, Gray. 
 
 Am. Soda Fountain v. Sample, 130 Fed. 145; 64 C. C. A. 497 630 
 
 Revg. 126 Fed. 760. 
 Third; Acheson, Gray, Kirkpatrick. 
 Am. Soda Fountain v. Sweitusch, 85 Fed. 968; 29 C. C. A. 506. . . .876, 889 
 Affg. 75 Fed. .573; dist. Gaskill v. Mvers, 81 Fed. 854. 
 Seventh; Woods, .Jenkins, Showalter, Per Curiam. 
 Am. Specialty v. New England, 176 Fed. 557; 100 C. C. A. 193. .App. 214, 
 o , r 387,487,787 
 
 second; Lacombe, Ward, Noyes.
 
 CASES EXCERPTED, WITH ANNOTATIONS XIX 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Am. Steel & Wire v. New Jersey, 194 Fed. 117; 114 C. C. A. 195. . .App. 
 
 458, 490 
 See 176 Fed. 564; 169 Fed. 793; 160 Fed. 108; 160 Fed. 125. 
 Eighth; Adams, Smith, Amidon. 
 Am. Stoker v. Underfeed, 188 Fed. 314; 110 C. C. A. 292. . . .App. 212, 807 
 Affg. 182 Fed. 642. 
 
 Third; Buffington, Lanning, McPherson. 
 
 Am. Stove v. Cleveland, 158 Fed. 978; 86 C. C. A. 182 32, 195, 207, 
 
 208, 398, 515, 903 
 Revg. 157 Fed. 562. 
 
 Sixth; Lurton, Severens, Richards. 
 
 Am. Street Car v. Jones, 142 Fed. 974; 74 C. C. A. 236 % 764 
 
 Revg. 122 Fed. 803. 
 
 Second; Wallace, Townsend, Coxe. 
 Am. Street Flushing Mach. v. St. Louis, 192 Fed. 121; 112 C. C. A. 582 
 
 App. 843 
 
 Eighth; Hook, Smith, Marshall. 
 Am. Sulphite v. De Grasse, 157 Fed. 660; 87 C. C. A. 260. . . .411, 447, 629, 
 
 706, 807 
 Revg. 151 Fed. 47. 
 
 Second; Lacombe, Coxe. Noyes. 
 Am. Sulphite v. Rowland, 80 Fed. 395; 25 C. C. A. 500. . . .223, 380, 689, 
 
 865, 915, 938 
 Revg. 70 Fed. 986. 
 First; Colt, Webb, Aldrich. 
 Am. Sulphite Pulp Co. v. De Grasse, 193 Fed. 653; 113 C. C. A. 521. . .App. 
 
 292 
 Revg. 190 Fed. 39; see 157 Fed. 660. 
 Second; Lacombe, Ward, Noyes. 
 Am. Tobacco v. Streat, 83 Fed. 700; 28 C. C. A. 18. . . .234, 473, 525, 674, 771 
 Fourth; Goff, Simonton, Brawley. 
 
 Am. Wood Paper v. Fiber, 90 U. S. 566; 23 L. Ed. 31 78, 204, 380, 
 
 818, 822, 871 
 Strong. 
 Am. Writing Mach. v. Wagner, 151 Fed. 576; 81 C. C. A. 120 .. . 72, 226, 413 
 Affg. 138 Fed. 108. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Anderson v. CoUins, 122 Fed. 451; 58 C. C. A. 669 96, 223, 349, 409, 
 
 441, 468, 609 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Anderson v. Filer, 50 Fed. 775; 1 C. C. A. 659 .754, 756 
 
 Affg. 46 Fed. 777. 
 
 Third; Acheson, Butler, Green. 
 
 Anderson v. Miller, 129 U. S. 70; 32 L. Ed. 635; 9 S. Ct. 224 103, 795 
 
 Lamar. 
 
 Anderson v. Potts, 108 Fed. 379; 47 C. C. A. 409 31, 190, 220 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Andrews v. Hovey, 123 U. S. 267; 31 L. Ed. 160; 8 S. Ct. 101 857 
 
 Affg. 5 McCrary, 181; rehearing 124 U. S. 694; Fames v. Andrews, 
 122 U. S. 40; Beedle v. Bennett, id. 71. 
 Blatchford. 
 Andrews v. Hovey, 124 U. S. 694; 31 L. Ed. 557; 8 S. Ct. 676. . . .30, 770, 
 
 857, 895, 923 
 Rehearing and affg. 123 U. S. 267; 8 Ct. 101. 
 Blatchford.
 
 XX CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Andrews v. Thum, 67 Fed. 911; 15 C. C. A. 67 137, 636, 775 
 
 Revg. 53 Fed. 84. 
 
 First; Colt, Webb, Aldrich. 
 
 Andrews v. Thum, 72 Fed. 290; 18 C. C. A. 566 138 
 
 See 64 Fed. 149; 67 Fed. 911; 70 Fed. 65; 71 Fed. 763. 
 First; Colt, Webb, Aldrich, Per Curiam. 
 Ansonia v. Electrical, 144 U. S. 11; 36 L. Ed. 327; 12 S. Ct. 601 . . .63, 654, 
 
 660, 666, 671 
 Affg.32Fed.81; 35 Fed. 68. 
 Brown; dissenting, Field. 
 
 Anthony v. Gennert, 108 Fed. 396; 47 C. C. A. 426 938 
 
 Affg. 99 Fed. 95. 
 Third; Acheson, Dallas, Buffington. 
 Antisdel v. Chicago, 89 Fed. 308; 32 C. C. A. 216. . .46, 381, 385, 387, 567 
 Seventh; Woods, Showalter, Baker. 
 
 Anton V. Grier, 185 Fed. 796; 108 C. C. A. 173 App. 597 
 
 Third; Gray, Lanning, Holland. 
 
 Appleton V. Bacon, 67 U. S. 699; 17 L. Ed. 338 25, 151, 884 
 
 Nelson. 
 
 Appleton V. Star, 60 Fed. 411; 9 C. C. A. 42 670, 817 
 
 Affg. 51 Fed. 284. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Aquarama v. Old MiU, 115 Fed. 806; 53 C. C. A. 376 563, 564 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Arey v. DeLoriea, 55 Fed. 323; 5 C. C. A. 116 736 
 
 Revg. (at law) See same pat. in suit McDonald v. Whitney, 24 Fed. 600. 
 First; Colt, Putnam, Nelson. 
 
 Arlington v. Celluloid, 97 Fed. 91; 318 C. C. A. 60 685 
 
 Revg. 85 Fed. 449. 
 Third; Dallas, Buffington, Bradford. 
 
 Armat v. Edison, 125 Fed. 939; 60 C. C. A. 380 544, 571 
 
 Revg. 121 Fed. 559. 
 Second; Wallace, Townsend, Coxe. 
 
 Armstrong v. Belding, 174 Fed. 410; 98 C. C. A. 361 App. 387 
 
 Affg. in part 172 Fed. 234. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Arnold v. Tyden, 193 Fed. 410; 113 C. C. A. 344 App. 196 
 
 Seventh; Grosscup, Baker, Sanborn. 
 Aron V. Manhattan, 132 U. S. 84; 33 L. Ed. 272; 10 S. Ct. 24 . . . 671, 672, 673 
 Affg. 26 Fed. 314. 
 Blatchford. 
 
 Ashcroft V. Boston, 97 U. S. 189; 24 L. Ed. 982 216, 344 
 
 Cufford. , 
 
 Ashley v. Tatum, 186 Fed. 339; 108 C. C. A. 539 App. 331 
 
 Revg. 181 Fed. 840. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Ashley v. Tatum, 180 Fed. 357; 111 C. C. A. 279 App. 203 
 
 See 181 Fed. 840; 186 Fed. 339. 
 Second; Lacombe, Ward, Noyes. 
 
 Ashton V. Coale, 52 Fed. 314; 3 C. C. A. 98 Ill, 202, 203, 612, 809 
 
 Affg. 50 Fed. 100. 
 
 Fourth; Goff, Hughes, Simonton. 
 Atherton v. Atwood-Morrison, 102 Fed. 949; 43 C. C. A. 72 . . 721, 801, 806, 807 
 Revg. 99 Fed. 113. 
 Third; Acheson, Dallas, Gray.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXI 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Atkins V. Moore, 212 U. S. 285; 53 L. Ed. 515; 29 S. Ct. 390. . .App. 143 
 See 29 App. D. C. 385. 
 Fuller. 
 
 Atkins V. Parke, 61 Fed. 953; 10 C. C. A. 189 176, 449, 450, 765 
 
 Sixth; Taft, Lurton, Ricks. 
 Atlantic v. Brady, 107 U. S. 192; 27 L. Ed. 438; 2 S. Ct. 225. .96, 638, 679 
 Bradley. 
 
 Atlas V. Simonds, 102 Fed. 643; 42 C. C. A. 398 420, 421, 424, 743 
 
 Affg. 102 Fed. 338. 
 
 Third; Acheson, Dallas, Gray. 
 
 Austin V. American, 121 Fed. 76; 57 C. C. A. 330 136, 230, 459, 544, 
 
 561, 634 
 Affg. 98 Fed. 992. 
 
 Seventh; Jenkins, Baker, Seaman. 
 Automatic Switch v. Cutler-Hammer, 147 Fed. 250; 77 C. C. A. 176. . . .21, 
 
 170 
 Revg. 139 Fed. 870. 
 
 Second; Wallace, Lacombe, Coxe, Per Curiam. 
 Automatic Weighing Mach. v. Pneumatic, 166 Fed. 288; 92 C. C. A.. . .206, 
 
 613, 811, 860 
 Revg. 158 Fed. 415. 
 
 First; Colt, Lowell, Aldrich. 
 
 Avery v. Case, 148 Fed. 214; 78 C. C. A. 110 247, 673 
 
 Revg. 139 Fed. 878. 
 Seventh; Baker, Seaman, Kohlsaat. 
 
 Avery v. Case, 174 Fed. 147; 98 C. C. A. 181 App. 299 
 
 Affg. 163 Fed. 842. 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 
 Babcock v. Clarkson, 63 Fed. 607; 11 C. C. A. 351 384 
 
 Affg. 58 Fed. 581. 
 
 First; Colt, Putnam, Nelson. 
 
 Babcock v. Toledo, 170 Fed. 81; 95 C. C. A. 363 App. 381 
 
 Sixth; Lurton, Severens, Warrington. 
 
 Badische v. Kalle, 104 Fed. 802; 44 C. C. A. 201 79, 105, 106 
 
 Affg. 94 Fed. 163. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Bagley v. Empire, 58 Fed. 212; 7 C. C. A. 191 596, 615, 674 
 
 Second; Lacombe, Shipman. 
 
 Baker v. Crane, 138 Fed. 60; 70 C. C. A. 486 843, 892 
 
 See 125 Fed. 1. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Baker i;. Buncombe, 146 Fed. 744; 77 C. C. A. 234 616, 646, 706 
 
 Eighth; Sanborn, Hook, Adams. 
 
 Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 593 389, 600, 636, 646, 656 
 
 Seventh; Woods, Jenkins, Seaman. 
 
 Ball V. Langles, 102 U. S. 128; 26 L. Ed. 104 871, 880 
 
 Strong. 
 
 Ball & Socket Fastener v. Ball, 58 Fed. 818; 7 C. C. A. 498 207, 311, 
 
 507, 719, 915 
 Revg. 36 Fed. 309, 39 Fed. 790, and 53 Fed. 245; rehearing 60 Fed. 
 399. 
 First; Putnam, Nelson, Webb. 
 Ball & Socket Fastener v. Edgarton, 96 Fed. 489; 37 C. C. A. 523. . . .635, 
 
 637, 919 
 First; Colt, Putnam, Webb,
 
 XXii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Ball & Socket Fastener v. Kraetzer, 150 U. S. Ill; 37 L. Ed. 1019; 14 S. Ct. 
 
 48 48, 135, 275, 532 
 
 Affg. 39 Fed. 700. 
 Brown. 
 
 Ballard v. Searles, 130 U. S. 50; 32 L. Ed. 846; 9 S. Ct. 418. .' 790 
 
 Bradley. 
 
 Baltimore & O. v. McCune, 174 Fed. 991 ; 98 C. C. A. 561 App. 103, 131 
 
 Third; Gray, Buffington, Lanning. 
 
 Bannerman v. Sanford, 99 Fed. 294; 39 C. C. A. 534 88, 704 
 
 Affg. 85 Fed. 448. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Bantz V. Frantz, 105 U. S. 160; 26 L. Ed. 1013 871 
 
 Woods. 
 Barbed Wire Patent — see Washburn v. Beat 'Em All, 143 U. S. 275. 
 
 Barber v. National, 129 Fed. 370; 64 C. C. A. 40 756, 800 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Barnard v. Gibson, 7 How. 650; 12 L. Ed. 857 892, App. 117 
 
 McLean. 
 
 Barnes v. Walworth, 60 Fed. 605; 9 C. C. A. 154 59, 532, 646 
 
 Affg. 51 Fed. 88. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Barr v. Chicago, 110 Fed. 972; 49 C. C. A. 194 20, 629 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Bartholomew v. Union, 113 Fed. 289; 51 .C. C. A. 250 543 
 
 Seventh; Jenkins, Grosscup, Bunn, Per Curiam. 
 
 Bate V. Hammond, 129 U. S. 151; 32 L. Ed. 645; 9 S. Ct. 225 420, 421 
 
 Construed in Pohl v. Anchor, 134 U. S. 381. 
 Bl.\tchford. 
 
 Bate V. Sulzberger, 157 U. S. 1; 39 L. Ed. 601; 15 S. Ct. 508 420, 421, 
 
 923 
 
 Affg. Edison v. U. S. 35 Fed. 134; Bate v. Hammond, 35 Fed. 151; 
 
 Bate V. Gillett, 31 Fed. 809; Accumulator v. Julien, 57 Fed. 838; 
 
 Gramme v. Arnoux, 17 Fed. 838; approving Andrews v. Hovev, 
 
 124 U. S. 694. 
 
 Harlan. 
 
 Bates V. Coe, 98 U. S. 31; 25 L. Ed. 68. .. .67, 111, 187, 201, 320, 322, 383, 
 
 498, 604, 629, 795, 804, 855, 883, 905 
 Clifford. 
 
 Bates V. Excelsior, 89 Fed. 498; 32 C. C. A. 267 593 
 
 Revg. 89 Fed. 88. 
 Seventh; Woods, Showalter, Bunn. 
 
 Bates V. Force, 149 Fed. 220; 79 C. C. A. 178 598 
 
 Revg. 145 Fed. 529. 
 Second; Wallace, Townsend, Coxe, Per Curiam. 
 
 Battin v. Taggart, 58 U. S. 77; 15 L. Ed. 37 874 
 
 McLe.\n. 
 
 Beach v. Hobbs, 92 Fed. 146; 34 C. C. A. 248 254, 378, 380, 605, 880 
 
 Revg. 82 Fed. 916. 
 
 First; Colt, Brown, Lowell. 
 Beccher v. Atwater, 114 U. S. 523; 29 L. Ed. 232; 5 S. Ct. 1007. .594, 871 
 
 Gu.\Y. 
 Beedle v. Bennett, 122 U. S. 71; 30 L. Ed. 1074; 7 S. Ct. 1090. .20, 532, 717 
 Affg. Patent heUl void substantiallv reversing this case and Fames v. 
 .Andrews, 122 U. S. 40 in Andrews v. Hovey, 123 U. S. 267. 
 ^LvTTHEws; dissenting, Bradley, Field, Gray.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXlll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Beer v. Walbridge, 100 Fed. 465; 40 C. C. A. 496. . . . 326, 443, 626, 629, 709 
 
 Second; Wallace, Lacombe, Shipman. 
 Balding v. Challenge, 152 U. S. 100; 38 L. Ed. 370; 14 S. Ct. 492. . . .601, 655 
 
 Shiras. 
 Belknap v. SchUd, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. . . .429, 498, 
 
 515, 553, 837 
 Gray; Dissenting, Harlan. 
 
 Bell V. MacKinnon, 149 Fed. 205; 79 C. C. A. 163 390 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Bement v. National, 186 U. S. 70; 46 L. Ed. 1058; 22 S. Ct. 747 744 
 
 Peckham. 
 
 Benbow-Brammer v. Straus, 166 Fed. 114; 92 C. C. A. 98 378 
 
 Affg. 158 Fed. 627; see 98 Fed. 880; 106 Fed. 918; 132 Fed. 614; 144 
 Fed. 429; 149 Fed. 430; 157 Fed. 559; 159 Fed. 161. 
 Second; Lacombe, Coxe, Ward. 
 Bene v. Jeantet, 129 U. S. 683; 32 L. Ed. 803; 9 S. Ct. 428. . . 197, 398, 494 
 Lamar. 
 
 Benjamin v. Chambers, 59 Fed. 151; 8 C. C. A. 61 225, 601 
 
 See 51 Fed. 902. 
 Tliird; Dallas, Butler, Green. 
 
 Benjamin v. Dale, 158 Fed. 617; 85 C. C. A. 439 348, 350, 506 
 
 Revg. 141 Fed. 989. 
 
 Second; Lacombe, Coxe, Ward, Per Curiam. 
 
 Bennett v. Fowler, 75 U. S. 445; 19 L. Ed. 431 348 
 
 Nelson. 
 
 Berliner v. Seaman, 113 Fed. 750; 51 C. C. A. 440 137, 542, 576, 789 
 
 See 108 Fed. 714; See 110 Fed. 30. 
 Fourth; Simonton, Jackson, Puruell. 
 
 Berliner v. Seaman, 110 Fed. 30; 49 C. C. A. 99 App. 540, 722 
 
 Revg. 108 Fed. 714; see 113 Fed. 750. 
 Fourth; Simonton, Brawley, Waddill. 
 
 Bernard v. Frank, 179 Fed. 516; 101 C. C. A. 459 App. 577 
 
 See 131 Fed. 269; 135 Fed. 102; 146 Fed. 137; 171 Fed. 117. 
 Second; Coxe, Ward, Noyes. 
 
 Berry v. Wynkoop, 84 Fed. 646; 28 C. C. A. 505 698 
 
 Affg. 77 Fed. 833. 
 
 Second; Wallace, Lacombe, Shipivl\n. 
 
 Bettendorf v. Little, 123 Fed. 433; 59 C. C. A. 473 74, 646 
 
 Seventh; Jenkins, Grosgcup, Baker. 
 
 Bibb V. Bowers, 142 Fed. 137; 73 C. C. A. 355 198 
 
 Fifth; Pardee, Shelby, Maxey. 
 Birdsall v. Coolidge, 93 U. S. 64; 23 L. Ed. 802 282, 285, 292, 294 
 
 Birdsall v. ShaUol, 112 U. S. 485; 28 L. Ed. 768; 5 S. Ct. 244. . . .299, 338, 
 
 764, 767, 796, 79^8 
 Gray. 
 Birmingham v. Gates, 78 Fed. 350; 24 C. C. A. 132. . . .359, 601, 610, 615, 657 
 Following Gates v. Eraser, 153 U. S. 332. See 42 Fed. 49. 
 Fifth; Pardee, McCormick, Boardman. 
 Bissell V. Goshen, 72 Fed. 545; 19 C. C. A. 25. . . .116, 119, 120, 128, 142, 
 
 539, 544, 545, 549 
 See 72 Fed. 67. Following Richmond v. Atwood, 52 Fed. 10; Marden 
 V. Mfg. Co. 67 Fed. 809. Overruling Watch Co. v. Robbins, 52 
 Fed. 337 on question of appeal. 
 Sixth; Taft, Lurton, Hammond.
 
 XXIV CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Black V. Thome, 111 U. S. 122; 28 L. Ed. 372; 4 S. Ct. 326. . .292, 293 298 
 Aifg. 12 Blatch. 20. 
 Field. 
 Black Diamond v. Excelsior, 156 U. S. 611; 39 L. Ed. 553; 15 S. Ct. 482 
 
 ....404, 664, 707 
 Brown. 
 
 Blackledge v. Weir, 108 Fed. 71; 47 C. C. A. 212 927 
 
 Affg. 105 Fed. 1006. 
 
 Seventh; Woods, Jenkins. 
 
 Blair v. Eastman, 64 Fed. 491; 12 C. C. A. 603 305 
 
 Affg. 62 Fed. 400. 
 
 First; Putnam, Nelson, Webb, Per Curiam. 
 Blake v. San Francisco, 113 U. S. 679; 28 L. Ed. 1070: 5 S. Ct. 692. .198, 
 
 473, 671, 858 
 Woods. 
 
 Blakey v. National, 95 Fed. 136; 37 C. C. A. 27 567 
 
 Third; Acheson, Dallas, Bradford. 
 Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433 . . 311, 320, 411, 494. 629. 795 
 Revg. 2 Bond. 84. 
 Clifford; dissenting opinion, Swayne, also Grier and Miller. 
 
 Blauvelt v. Interior, SO Fed. 906; 26 C. C. A. 243 366 
 
 Second; Lacombe, Shipman. 
 
 Bliss V. Reed, 106 Fed. 314; 45 C. C. A. 304 164, 674. 805 
 
 Affg. 102 Fed. 903. 
 Third; Dallas, Gray, Buffington. 
 
 Bloomer v. McQuewan, 14 How. 539; 14 L. Ed. 532 418 
 
 Taney, Nelson. Dissenting opinion McLean. 
 
 Bloomer v. MiUinger, 68 U. S. 340; 17 L. Ed. 581 769 
 
 Clifford. 
 Blount V. Societe, 53 Fed. 98; 3 C. C. A. 455. . .544, 554, 555, 560, 561, 562 
 See same patent 52 Fed. 146; 51 Fed. 610. 
 Sixth; Jackson, Taft. 
 
 Blumenthal v. Burrill, 53 Fed. 105; 3 C. C. A. 462 649 
 
 Affg. 43 Fed. 667. 
 
 Second; Shipman, Lacombe. 
 Boesch V. Graff, 133 U. S. 697; 33 L. Ed. 787; 10 S. Ct. 378. . . . 138, 153, 
 
 288, 505, 836 
 Revg. 33 Fed. 279; see 50 Fed. 660. 
 Fuller. 
 
 Boldt v. Novison, 194 Fed. 871; 114 C. C. A. 617 App. 323, 335, 636 
 
 Sixth; Warrington, Knappen, Sater. 
 
 Bolte V. Knight, 180 Fed. 412; 103 C. C. A. 558 App. 331 
 
 Affg. 180 Fed. 414. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Bonnell v. Stoll, 61 Fed. 767; 10 C. C. A. 48 667 
 
 Affg. 57 Fed. 396. 
 Third; Dallas, Wales, Green. 
 
 Bonnctte v. Kochler, 82 Fed. 428; 27 C. C. A. 200 221, 443, 486 
 
 Sixth; Taft, Lurton, Severens. 
 
 Bonsack v. Elliott, 69 Fed. 335; 16 C. C. A. 250 63, 411, 608 
 
 Revg. in part 63 Fed. 835; affd. on rehearing, 73 Fed. 834. 
 Second; Brown, Lacombe, Shipman. 
 
 Bonsack v. HuLse, 65 Fed. 864; 13 C. C. A. 180 365 
 
 Affg. 57 Fed. 519. 
 
 Fourth; Simonton, Morris, Brawley.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXV 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Boss V. Thomas, 182 Fed. 811; 105 C. C. A. 243. . . .App. 207, 636, 652, 696 
 Affg. 182 Fed. 815. 
 
 Eighth; Hook, Adams, Reed. 
 
 Bossert v. Pratt, 179 Fed. 385; 103 C. C. A. 45 App. 201, 656, 741 
 
 Second; Lacombe, Ward, Noyes, Per Curiam. 
 
 Boston V. Allen, 91 Fed. 248; 33 C. C. A. 485 293, 756, 903 
 
 First; Putnam, Webb, Brown. 
 
 Boston & Revere v. Bemis, 80 Fed. 287; 25 C. C. A. 420 378, 527 
 
 Affg. 75 Fed. 403; see 98 Fed. 121. 
 First; Putnam, Webb, Aldrich. 
 
 Boston & Revere v. Bemis, 98 Fed. 121; 38 C. C. A. 661 790 
 
 See 80 Fed. 287. 
 
 First; Putnam, Aldrich, Brown. 
 Boston Lasting Mach. v. Woodward, 82 Fed. 97; 27 C. C. A. 69. .198, 380, 
 
 384 
 Affg. 75 Fed. 272. 
 First; Colt, Putnam, Webb. 
 Boston Woven Hose v. Pennsylvania, 164 Fed. 557; 90 C. C. A. 84. . . .229, 
 
 620 
 Affg. 156 Fed. 787. 
 
 First; Putnam, Lowell, Aldrich. 
 
 Bothe v. Paddock, 50 Fed. 536; 1 C. C. A. 575 592 
 
 Eighth; Caldwell, Sanborn, Shiras. 
 
 Bowers v. Lake Superior, 149 Fed. 983; 79 C. C. A. 493 40, 751, 759 
 
 Eighth; Sanborn, Hook, Adams. 
 Boyd V. Janesville, 158 U. S. 260; 39 L. Ed. 973; 15 S. Ct. 837. . . .217, 
 
 629, 680 
 Affg. 37 Fed. 887. 
 Shiras. 
 Boyden v. Burke, 14 How. 575; 14 L. Ed. 548 181, 262, 410 
 
 Boyden v. Westinghouse, 70 Fed. 816; 17 C. C. A. 430 197, 229, 257, 
 
 377, 380, 426, 785, 893 
 Revg. 66 Fed. 997. 
 
 Fourth; Goff, Simonton, Hughes, 
 
 Boyer v. Cleveland, 185 Fed. 808; 108 C. C. A. 40 App. 528 
 
 See 171 Fed. 105. 
 
 Sixth; Knappen, Cochran, Sater. 
 
 Boyer v. Keller, 127 Fed. 130; 62 C. C. A. 244 180, 214, 612 
 
 Revg. 110 Fed. 217. 
 Third; Acheson, Gray, Archbald. 
 Boynton v. Morris, 87 Fed. 225; 30 C. C. A. 617. . .50, 222, 223, 240, 606, 
 
 706, 937 
 Affg. 82 Fed. 440. 
 
 Third; Acheson, Dallas, Bradford. 
 
 Braddock v. Macbeth, 64 Fed. 118; 12 C. C. A. 70 334, 548 
 
 Affg. 54 Fed. 173. See same patent 54 Fed. 167; 54 Fed. 169; 54 
 Fed. 171. 
 Third; Dallas, Wales. 
 
 Bradford v. Belknap, 115 Fed. 711 ; 53 C. C. A. 293 696 
 
 Affg. 105 Fed. 63. 
 
 First; Colt, Aldrich, Brown. 
 
 Bradford v. Expanded, 146 Fed. 984; 77 C. C. A. 230 682 
 
 Revd. 214 U. S. 366, making good 136 Fed. 870. 
 Third; Dallas, Gray, McPherson.
 
 XXvi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sectionis. " App." refers to Appendix ] 
 
 Bradford v. Kisinger-Ison, 113 Fed. 811; 51 C. C. A. 483 327, 385, 764 
 
 Sixth; Lurton, Severens, Wanty. 
 
 Bradley v. Eagle, 57 Fed. 980; 6 C. C. A. 661 411, 807, 894 
 
 Affg. 50 Fed. 193. 
 
 Seventh; Gresham, Woods, Jenkins. 
 
 Bradley v. Eagle, 58 Fed. 721; 7 C. C. A. 442 315, 803 
 
 Rehearing 57 Fed. 980. 
 Seventh; Jenkins. 
 
 Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669 124, 335, 442, 600 
 
 Affg. 122 Fed. 867; revg. 122 Fed. 871. 
 Second; Lacombe, Townsend, Coxe. 
 
 Bradley v. Eccles, 139 Fed. 447; 71 C. C. A. 291 706 
 
 Revg. 133 Fed. 308. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Bradley v. Eccles, 143 Fed. 521; 74 C. C. A. 478 661 
 
 Revg. 138 Fed. 916. 
 Second; Wallace, Lacombe, Townsend, Per Curiam, 
 
 Bradv v. Ajax, 160 Fed. 84; 87 C. C. A. 240 823 
 
 Revg. 155 Fed. 409. 
 Third; Gray, McPherson, Cross. 
 
 Bragg V. Fitch, 121 U. S. 478; 30 L. Ed. 1008; 7 S. Ct. 978 198 
 
 Revg. 16 Fed. 243. 
 Bradley. 
 Brammer v. Schroeder, 106 Fed. 918; 46 C. C. A. 41. . . .203, 223, 232, 374, 
 
 464, 468, 472, 495 
 Affg. 98 Fed. 880 and 886, 
 
 Eighth; Caldwell, Sanborn, Adams. 
 
 Brammer v. Witte, 159 Fed. 726; 86 C. C. A. 207 226, 457, 473 
 
 Eighth; Sanborn, Adams, Philips. 
 
 Brennan v. Dowagiac, 162 Fed. 472; 89 C. C. A. 392 837, 841, 845 
 
 See 127 Fed. 143; 101 Fed. 716; 162 Fed. 479. 
 Sixth; Lurton, Severens, Richards. 
 
 Bresnahan v. Tripp, 72 Fed. 920; 19 C. C. A. 237 34, 229, 375, 541, 
 
 545, 561 
 
 Affg. 70 Fed. 982. Following Electric v. Edison, 60 Fed. 276; See 
 
 National v. American, 53 Fed. 367; approving Cutcheon v. Herrick, 
 
 52 Fed. 147; applving Davis v. Edison, 60 Fed. 276; approving 
 
 Herrick v. Tripp, 60 Fed. 80. 
 
 First; Putnam, Nelson, Webb. 
 
 Bresnahan v. Tripp, 99 Fed. 280; 39 C. C. A. 508 35, 37, 386, 891 
 
 Affg. 92 Fcfl. 301 
 
 First; Putnam, Webb, Aldrich. 
 
 Bresnahan v. Tripp, 102 Fed. 899; 43 C. C. A. 48 189 
 
 First; Putnam, Webb, AUlrich. 
 
 Brickill v. Mayor, 60 Fed. 98; 8 C. C. A. 500 287 
 
 See opinion on demurrer, etc., 50 Fed. 274; 52 Fed. 737. 
 Fourth; Goff, Seymour, Simonton. 
 
 Brickill V. Mayor, 112 Fed. 65; .50 C. C. A. 1 220, 635, 674, 756, 846 
 
 Rovg. as to profits, 98 Fed. 113. 
 Second; Wallace, Brown, Thomas. 
 
 Bridge r. Excelsior, 105 U. S. 618; 26 L. Ed. 1190 507 
 
 Field. 
 
 Briggs V. Central, 60 Fed. 87; 8 C. C. A. 480 672 
 
 Affg. 54 Fo<l. 376. 
 Second; Wallace, Lacombe, Shipman.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Briggs V. Duell, 93 Fed. 972; 36 C. C. A. 38 672 
 
 Affg. 87 Fed. 479. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Brigham v. Coffin, 149 U. S. 557; 37 L. Ed. 845; 13 S. Ct. 939 775 
 
 Affg. 37 Fed. 688. 
 Brown. 
 
 Brill V. Peckham, 108 Fed. 267; 47 C. C. A. 315 216, 226, 540 
 
 See Brill v. R. R. 103 Fed. 289; Rev. in 189 U. S. 57. 
 Second; Wallace, Wheeler, Thomas. 
 
 Brill V. Peckham, 189 U. S. 57; 47 L. Ed. 706; 23 S. Ct. 562 122, 251 
 
 Affg. 103 Fed. 289; 105 Fed. 626. Revg. 108 Fed. 267; 110 Fed. 377. 
 Fuller. 
 
 Brill V. St. Louis, 90 Fed. 666; 33 C. C. A. 213 207, 214 
 
 See 80 Fed. 909. 
 
 Eighth; Sanborn, Thayer, Shiras. 
 Brill V. Washington, 215 U. S. 527; 54 L. Ed. 311; 30 S. Ct. 177. .App. 31 
 Affg. 30 App. D. C. 255; see 134 Fed. 580; 125 Fed. 526; 135 Fed. 784. 
 Holmes, dissenting: McKenna. 
 Brinkerhoff v. Aloe, 146 U. S. 515; 36 L. Ed. 1068; 13 S. Ct. 221. . .47, 607 
 Affg. 37 Fed. 92. 
 Fuller. 
 
 Brinton v. Paxton, 134 Fed. 78; 67 C. C. A. 204 843, 845 
 
 Affg. 107 Fed. 137. 
 
 Third; Acheson, Gray, Holland. 
 
 Brookfield v. Elmer, 154 Fed. 197; 83 C. C. A. 180 219 
 
 Affg. 144 Fed. 418. 
 Third; Dallas, Gray, Buffington. 
 
 Brookfield v. Novelty, 170 Fed. 960; 96 C. C. A. 127 App. 299, 805 
 
 Affg. 170 Fed. 830. 
 
 Third; Gray, Buffington, Archbald. 
 
 Brooks V. Fiske, 15 How. 212; 14 L. Ed. 665 223, 473 
 
 Catron. Dissent. Wayne, Nelson, McLean. 
 
 Brooks V. Sacks, 81 Fed. 403; 26 C. C. A. 456 71, 74, 349, 587 
 
 Revg. 74 Fed. 935. 
 First; Colt, Putnam, Webb. 
 
 Brown v. Crane, 133 Fed. 235; 66 C. C. A. 676 614 
 
 Affg. 125 Fed. 34. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Brown v. Davis, 116 U. S. 237; 29 L. Ed. 659; 6 S. Ct. 379. .380, 876, 937 
 Revg. 19 Blatchf. 263. 
 Bl.\tchford. 
 Brown v. District of Columbia, 130 U. S. 87; 32 L. Ed. 863; 9 S. Ct. 437 
 
 ....652,696 
 Affg. 3 Mackey, 502. 
 Fuller. 
 
 Brown v. Drohen, 175 Fed. 576; 99 C. C. A. 192 App. 283, 292, 836, 
 
 840 
 Affg. 171 Fed. 438; see 140 Fed. 97; 148 Fed. 985; practically revg. 
 165 Fed. 442, as to increasing damages. 
 Second; Lacombe, Coxe, Noyes. 
 
 Brown v. Duchesne, 60 U. S. 183; 15 L. Ed. 595 532 
 
 Taney. 
 Brown v. Guild, 90 U. S. 181; 23 L. Ed. 161. . . .62, 66, 216, 222, 223, 225, 
 
 391, 473, 674, 690, 880, 913, 937 
 Bradley. Dissent, opinion Clifford; also Miller and Davis.
 
 XXVlll CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Brown v. Huntington, 134 Fed. 735; 67 C. C. A. 639 694 
 
 Affg. 131 Fed. 273. 
 
 Second; La combe, Townsend, Coxe. 
 Brown v. King, 107 Fed. 498; 46 C. C. A. 432 380, 442, 657, 675 
 
 Sixth; Lurton, Day, Severens. 
 Brown v. Lanyon, 148 Fed. 838; 78 C. C. A. 528 285 
 
 Eighth; Van Devanter, Adams, PhiHps. 
 
 Brown v. Lanyon, 179 Fed. 309; 102 C. C. A. 497 App. 129, 845, 893 
 
 See 115 Fed. 150; 119 Fed. 918; 104 Fed. 345; 110 Fed. 665. 
 
 Eighth; Sanborn, Van Devanter, Munger. 
 Brown v. Piper, 91 U. S. 37; 23 L. Ed. 200. . . .389, 687, 706, 712, 746, 795 
 
 SWAYNE. 
 
 Brown v. Stilwell, 57 Fed. 731; 6 C. C. A. 528 245, 377, 473 
 
 Affg. 49 Fed. 738. 
 
 Sixth; Jackson, Taft, Hammond. 
 
 Brown v. Stonemetz, 58 Fed. 571; 7 C. C. A. 374 812 
 
 Affg. 57 Fed. 601. 
 Third; Dallas, Butler, Green. 
 
 Browning v. Colorado, 61 Fed. 845; 10 C. C. A. 112 637, 672 
 
 Eighth; Caldwell, Sanborn, Thayer, 
 
 Brunswick v. Klumpp, 131 Fed. 255; 65 C. C. A. 447 326, 341 
 
 Affg. 126 Fed. 765. See 111 Fed. 904. 
 Second; Lacombe, Townsend, Coxe. 
 
 Brunswick v. Phelan, 79 Fed. 85; 24 C. C. A. 451 655 
 
 Affg. 76 Fed. 978. 
 Second; Wallace, Shipman, Lacombe. 
 
 Brunswick v. Thum, 111 Fed. 904; 50 C. C. A. 61 626 
 
 See this case reversed subsequently on new evidence in Brunswick v. 
 Klumpp, 131 Fed. 255. 
 Second; Wallace, Lacombe. 
 
 Brusie v. Peck, 54 Fed. 820; 4 C. C. A. 597 760, 893 
 
 Second; Lacombe, Shipman. 
 
 Brush V. CaUfornia, 51 Fed. 557; 2 C. C. A. 373 116 
 
 Affg. 49 Fed. 73. 
 
 Ninth; McKenna, Ross, Knowles. 
 
 Brush V. California, 52 Fed. 945; 3 C. C. A. 368 152, 277, 761, 763, 
 
 764, 765, 766, 927 
 Affg. 49 Fed. 73; App. 48 Fed. 224. See 51 Fed. 557. 
 Ninth; McKenna, Gilbert, Knowles. 
 
 Brush V. Condit, 132 U. S. 39; 33 L. Ed. 251; 10 S. Ct. 1 89, 104, 854 
 
 Affg. 20 Fed. 826. 
 
 Brush V. Western, 76 Fed. 761; 22 C. C. A. 543 . . .' 207, 504, 690, 893 
 
 Affg. 69 Fed. 240. 
 See same patent, 40 Fed. 826; 44 Fed. 284; 43 Fed. 533; 46 Fed. 79; 
 
 52 Fed. 965. 
 Seventh; Woods, Jenkins, Bunn. 
 
 Bryce v. National, 116 Fed. 186; 53 C. C. A. 611 468 
 
 Third; Acheson, Dallas, Gray. 
 
 Buchanan v. Perkin.s, 135 Fed. 90; 67 C. C. A. 564 614, 632, 693 
 
 Affg. 129 Fed. 134. 
 
 Third; Dallas, Gray, Bradford. 
 
 Buffingtoii's V. Eustis, 65 Fed. 804; 13 C. C. A. 143 222, 597 
 
 Affg. 0.=> Fed. 92. 
 Eighth; Caldwell, Sanborn, Thayer.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXIX 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 BuUock V. General, 149 Fed. 409; 79 C. C. A. 229 599, 654, 908 
 
 Revg. 146 Fed. 549. 
 
 Sixth; Lurton, Severens, Richards. 
 
 Bullock V. General, 162 Fed. 28; 89 C. C. A. 68 63, 672 
 
 Revg. in part 155 Fed. 740. 
 
 Third; Dallas, Gray, Buffington. 
 
 Bullock V. Westinghouse, 129 Fed. 105; 63 C. C. A. 607 477, 505, 536, 
 
 537, 538, 576, 577 
 
 Sixth; Lurton, Severens, Richards. 
 
 Bundy v. Columbian, 64 Fed. 851; 12 C. C. A. 442 222, 375, 532 
 
 Affg. 59 Fed. 293. 
 
 Second; Wallace, Laeombe, Shipman. 
 
 Bundy v. Detroit, 94 Fed. 524; 36 C. C. A. 375 208, 376, 380, 459, 485, 
 
 529 
 
 Sixth; Taft, Lurton, Clark. 
 Burden v. Denig, 92 U. S. 716; 23 L. Ed. 764 285, 289, 290, 404, 753 
 
 Miller. 
 Burnham v. Union, 110 Fed. 765; 49 C. C. A. 163 45 
 
 Sixth; Lurton, Day, Severens. 
 Burns v. Meyer, 100 U. S. 671; 25 L. Ed. 738 195 
 
 Bradley. 
 Burns v. Mills, 143 Fed. 325; 74 C. C. A. 525 627 
 
 Seventh; Grosscup, Baker, Seaman. 
 Burr V. Duryee, 68 U. S. 531; 17 L. Ed. 750 347, 380, 432, 500, 683, 
 
 Grier. . 768, 874 
 Burr V. Duryee, 68 U. S. 579; 17 L. Ed. 660 871 
 
 Burt V. Evory, 133 U. S. 349; 33 L. Ed. 647; 10 S. Ct. 349 440, 647, 671 
 
 Revg. 15 Fed. 112; 2 Fed. 542. 
 Lamar. 
 
 Busch V. Jones, 184 U. S. 598; 46 L. Ed. 707; 22 S. Ct. 511 71, 77, 
 
 Revg. in part 16 App. D. C. 23. 91, 688, 717 
 
 McKenna. 
 
 Busell V. Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 150 437, 593, 
 
 596, 612, 618 
 Affg. 28 Fed. 575. 
 Lamar. 
 
 Buser v. Novelty, 151 Fed. 478; 81 C. C. A. 16 10, 20, 74, 312 
 
 Sixth; Lurton, Severens, Cochran. 
 
 Bussey v. Excelsior, 110 U. S. 131; 28 L. Ed. 95; 4 S. Ct. 38 661 
 
 Revg. 1 Fed. 640. 
 Bl.\tchford. 
 
 Butler V. Steckel, 137 U. S. 21; 34 L. Ed. 582; 11 S. Ct. 25 591, 627, 668 
 
 Affg. 27 Fed. 219. 
 
 Butte City v. Pacific, 60 Fed. 90; 8 C. C. A. 484 603 
 
 Affg. 52 Fed. 863. 
 
 Ninth; McKenna, Gilbert, Ross. 
 
 Butte City v. Pacific, 60 Fed. 410; 9 C. C. A. 41 652 
 
 Revg. 55 Fed. 760. 
 
 Ninth; McKenna, Gilbert, Ross. 
 Butterworth v. HiU, 114 U. S. 128; 29 L. Ed. 119; 5 S. Ct. 796 25, 723 
 
 Waite. 
 Butterworth v. Hoe, 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25 . . .25, 114, 261, 
 
 Matthews. . 741
 
 XXX CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Byerly v. Sun, 184 Fed. 455; 106 C. C. A. 537 App. 347, 819 
 
 Mg. 181 Fed. 138. 
 
 Third; Buffington, Lanning, Cross. 
 
 Byram v. Friedberger, 100 Fed. 963; 41 C. C. A. 121 330 
 
 Affg. 87 Fed. 559. 
 
 Third; Acheson, Gray, Kirkpa trick. 
 
 Calculagraph v. Automatic, 187 Fed. 276; 109 C. C. A. 618 App. 253 
 
 See 132 Fed. 20; 136 Fed. 196; 144 Fed. 91; 153 Fed. 961; 154 Fed. 166. 
 Second; Coxe, Ward, Noyes, Per Curiam. 
 
 Caldwell v. Powell, 73 Fed. 488; 19 C. C. A. 592 327, 335 
 
 Revg. 71 Fed. 970. 
 Third; Acheson, Wales, Green. 
 
 California v. Molitor, 113 U. S. 609; 28 L. Ed. 1106; 5 S. Ct. 618 113, 
 
 Dismissing certification from Circuit Court. 496, 577 
 
 Bradley. 
 
 California v. Schalicke, 119 U. S. 401; 30 L. Ed. 471 ; 7 S. Ct. 391 456 
 
 Vide same pat. Schillinger t;. Gunther, 14 Blatchf. 152; Schillinger v. 
 Gunther, 17 Blatchf. 66; California v. Monitor, 7 Sawy. 190; 
 California v. Freeborn, 8 Sawy. 443; Schillinger v. Greenway, 21 
 Blatchf. 383; Kuhl v. Mueller, 21 Fed. 510. 
 Bl.\tchford. 
 
 Cambria v. Carnegie, 96 Fed. 850; 37 C. C. A. 593 344 
 
 Revd. 185 U. S. 403, making good 96 Fed. 850. 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 Cameron v. Saratoga, 159 Fed. 453; 86 C. C. A. 483 105, 639, 819 
 
 Revg. in part 151 Fed. 242. 
 Second; Lacombe, Coxe, Ward. 
 
 Campbell v. Bayley, 63 Fed. 463; 11 C. C. A. 284 774, 775 
 
 Affg. 45 Fed. 564. 
 Seventh; Woods, Bunn, Seaman. 
 Campbell v. Am. Shipbuilding, 179 Fed. 498; 103 C. C. A. 122. . . .App. 207 
 Sixth; Severens, Warrington, Knappen. . 
 
 Campbell v. Duplex, 101 Fed. 282; 41 C. C. A. 351 207, 637, 675 
 
 Affg. 86 Fed. 315; see 69 Fed. 250. 
 Sixth; Taft, Lurton, Severens. 
 
 Campbell v. Miehle, 102 Fed. 159; 42 C. C. A. 235 684 
 
 Affg. and rev. in part 96 Fed. 226. 
 Seventh; Woods, Jenkins, Bunn, 
 
 Campbell v. Richardson, 76 Fed. 976; 22 C. C. A. 669 214 
 
 Revg. 72 Fed. 525. 
 Third; Dallas, Butler, Wales. 
 
 Cammeyer v. Newton, 94 U. S. 225; 24 L. Ed. 72 399, 498, 746 
 
 Cufford. 
 
 Campbell v. Haverhill, 155 U. S. 610; 39 L. Ed. 280; 15 S. Ct. 217 127, 
 
 Brown. 921 
 
 Canda v. Michigan, 124 Fed. 486; 61 C. C. A. 194 97, 155, 195, 223, 
 
 476, 494, 598, 630, 782, 926 
 Sixth; Lurton, Severens, Wanty. 
 
 Canda r. Michigan, 1.52 Fed. 178; 81 C. C. A. 420 298, 827, 829, 843 
 
 Sixth; Lurton, Severens, Richards. 
 
 Cantrell v. Wallick, 117 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970 71, 320, 
 
 Woods. 322, 440, 647 
 
 Capital V. Kinnear, 87 Fed. 333; 31 C. C. A. 3 656 
 
 Revg. 81 Fed. 491. 
 Sixth; Taft, Lurton, Severens.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXXI 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Capital V. National, 70 Fed. 709; 17 C. C. A. 355 .485 
 
 Approving 53 Fed. 367. 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 
 Card V. Colby, 64 Fed. 594; 12 C. C. A. 319 212 
 
 Revg. 63 Fed. 462. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Carlton v. Bokee, 84 U. S. 463; 21 L. Ed. 517 186, 248, 871 
 
 Bradley. 
 
 Carmichael v. Jackson, 192 Fed. 937; 113 C. C. A. 327 App. 676 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 
 Carnegie v. Brislin, 124 Fed. 213; 59 C. C. A. 651 207, 214 
 
 Revg. 118 Fed. 579. 
 
 Third; Acheson, Dallas, Gray. 
 
 Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698 100, 
 
 Revg. 96 Fed. 850. 105, 343, 344, 411, 508, 520, 631, 693, 822, 903 
 
 Brown. 
 
 Carnegie v. Colorado, 165 Fed. 195; 91 C. C. A. 229 561, 717 
 
 Eighth; Van Devanter, Adams, Phihps. 
 
 Carpenter v. Searle, 60 Fed. 82; 8 C. C. A. 476 871 
 
 Affg. 52 Fed. 809. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Carroll v. Goldschmidt, 83 Fed. 508; 27 C. C. A. 566 36, 927 
 
 Revg. 80 Fed. 520. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Carter v. Hanes, 78 Fed. 346; 24 C. C. A. 128 473, 605 
 
 Affg. 70 Fed. 859. 
 
 Fourth; Goff, Simonton, Morris. 
 
 Carver v. Hyde, 16 Pet. 513; 10 L. Ed. 1051 531, 589 
 
 Taney. 
 
 Gary v. Acme, 108 Fed. 873; 48 C. C. A. 118 577, 578 
 
 • Affg. 101 Fed. 269; see 99 Fed. 500. 
 
 Second; Wallace, Shipman. Per Curiam. 
 
 Gary v. DeHaven, 139 Fed. 262; 71 C. C. A. 388 846 
 
 Affg. 88 Fed. 698. 
 Second; Wallace, Lacombe, Townsend. 
 
 Gary v. Neal, 98 Fed. 617; 39 C. C. A. 189 332 
 
 Affg. 90 Fed. 725. 
 Second ; Shipman. 
 
 Case V. Brown, 69 U. S. 320; 17 L. Ed. 817 469, 871 
 
 Grier. 
 
 Casein v. Collins, 174 Fed. 341 ; 98 C. C. A. 213' App. 871 
 
 Affg. 172 Fed. 237. 
 
 Third; Gray, Buffington, Lanning. 
 
 Caverly v. Deere, 66 Fed. 305; 13 C. C. A. 452 App. 601 
 
 Affg. 52 Fed. 758. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Cayuta v. Kennedy, 135 Fed. 537; 68 C. C. A. 563 277 
 
 Revg. in part 127 Fed. 355. 
 Second; Wallace, Lacombe, Townsend. 
 
 Gazier v. Mackie-Lovejoy, 138 Fed. 654; 71 C. C. A. 104 314, 458, 
 
 481 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Gazier v. Mackie-Lovejoy, 168 Fed. 701; 94 C. C. A. 215 App. 543, 57S 
 
 Seventh; Grosscup, Baker, Seaman. 
 Gawood Patent — See Railroad and Turrill, 94 U. S. 695.
 
 XXXll CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Celluloid V. Arlington, 52 Fed. 740; 3 C. C. A. 269 245 
 
 Affg. 44Fed. 81; 31 Fed. 904. 
 Third; Acheson, Dallas, Wales. 
 
 Centaur v. Heinsfurter, 84 Fed. 955; 28 C. C. A. 581 , 928 
 
 Eighth; Brewer, Sanborn, Riner. 
 
 Central v. Coughlin, 141 Fed. 91; 72 C. C. A. 93 373, 473 
 
 Fifth; Pardee, Shelby, Maxey. 
 Century Electric v. Westinghouse, 191 Fed. 350; 112 C. C. A. 8 . .App. 129, 
 
 212, 348, 349, 354, 358, 497, 500, 520, 741, 770 
 Eighth; Sanborn, Van Devanter, Reed. 
 
 Cereahne v. Bates, 101 Fed. 272; 41 C. C. A. 341 242, 649, 914 
 
 Affg. 77 Fed. 970. 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Chaffee v. Boston, 63 U. S. 217; 16 L. Ed. 240 769 
 
 Clifford. 
 
 Chapin v. Friedberger, 158 Fed. 409; 85 C. C. A. 519 550 
 
 Dismissing appeal 151 Fed. 264. 
 Third; Dallas, Buffington, Cross. 
 
 Chauche v. Fare, 75 Fed. 283; 21 C. C. A. 329 171, 765 
 
 Ninth; Gilbert, Ross, Morrow. 
 
 Chemical v. Raymond, 71 Fed. 179; 18 C. C. A. 31 243, 814 
 
 Affg. 68 Fed. 570. 
 Third; Acheson, Butler, Green. 
 
 Chester v. Tindel-Morris, 165 Fed. 899; 91 C. C. A. 577 562 
 
 Affg. 163 Fed. 304. 
 
 Third; Dallas, Lanning. 
 Chicago Grain Door v. National, 173 Fed. 918; 97 C. C. A. 324. . .App. 373, 
 
 L 658 
 Sixth; Lurton, Severens, Warrington, 
 
 Chicago & Northwestern v. Sayles, 97 U. S. 554^ 24 L. Ed. 1053 199, 640 
 
 Bradley. 
 Chicago Pneumatic Tool v. Cleveland, 159 Fed. 143; 86 C. C. A. 51 . . .507 
 Affg. 154 Fed. 953. 
 
 Third; Gray, Holland, Cross. 
 
 Chicago Sugar Ref., In re, 87 Fed. 750; 31 C. C. A. 221 App. 545 
 
 See 84 Fed. 977. 
 Seventh; Woods, Showalter, Baker. 
 
 Chicago Sugar Ref. v. Pope, 84 Fed. 977; 28 C. C. A. 594 819 
 
 Revg. 79 Fed. 957. 
 
 Seventh; Woods, Jenkins, Showalter. 
 Chicago Wooden Ware v. Miller, 133 Fed. 541 ; 66 C. C. A. 517 ... . 303, 435 
 Seventh; Jenkins, Gro-sscup, Baker. 
 
 Childs V. LeBrocq, 178 Fed. 719; 102 C. C. A. 211 App. 761 
 
 Second; Lacombe, Coxe, Ward. 
 
 Chinnock v. Patenson, 112 Fed. 531; 50 C. C. A. 384 325, 550 
 
 Revg. 110 Fed. 199. 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 Christensen, In re, 194 U. S. 458; 48 L. Ed. 1072; 24 S. Ct. 729 538 
 
 Fuller. 
 
 Ctristcn.sen v. Westinghouse, 129 Fed. 96; 63 C. C. A. 598 537 
 
 See 123 Fed. 6.32; 126 Fed. 764. 
 Second; Walu.\ce, Town.send, Coxe. 
 Christensen v. Westinghouse, 135 Fed. 774; 68 C. C. A. 476. .537, 577, 578 
 See 121 Fed. 562; 128 Fed. 749. 
 Second; Wallace, Townsend, Coxe.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXXIll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Christie y. Seybold, 55 Fed. 69; 5 C. C. A. 33 584, 811, 861, 867 
 
 See interference proceeding, s. c. 54 O. G. 957. 
 Sixth; Jackson, Taft, Hammond. 
 
 Christy v. Hygea, 93 Fed. 965; 36 C. C. A. 31 635 
 
 Affg. 87 Fed. 902. 
 
 Fourth; Goff, Brawley, Waddill. 
 
 Chuse V. Ide, 89 Fed. 491; 32 C. C. A. 260 195, 233, 398 
 
 Seventh; Woods, Showalter, Bunn. 
 Cimiotti v. American, 198 U. S. 399; 49 L. Ed. 1100; 25 S. Ct. 697. .204, 375, 
 Affg. 123 Fed. 869. 456, 526, 699 
 
 Record of Cimiotti cases: 95 Fed. 474, affd. 115 Fed. 498; 98 Fed. 297, 
 affd. 115 Fed. 498; 108 Fed. 82, affd. 115 Fed. 498; 113 Fed. 588, 
 affd. 115 Fed. 507; 113 Fed. 698 and 699, affd. 143 Fed. 508; 115 
 Fed. 498, affg. 95 Fed. 474 and 108 Fed. 82; 115 Fed. 507, affg. 
 113 Fed. 588; 115 Fed. 510; 117 Fed. 623, affd. 118 Fed. 838; 
 118 Fed. 838, affg. 117 Fed. 623; 118 Fed. 1021, affd. 123 Fed. 
 479; 120 Fed. 672, reved. 123 Fed. 869, but affd. 198 U. S. 399; 
 123 Fed. 479, affg. 118 Fed. 1021; 123 Fed. 869, affd. 198 U. S. 
 399; 143 Fed. 508, affg. 113 Fed. 698 and 113 Fed. 699; 168 Fed. 
 529, affg. 158 Fed. 171. 
 Day. 
 Cimiotti v. American, 115 Fed. 498; 53 C. C. A. 230. . . . 78, 230, 453, 607, 608 
 Affg. 98 Fed. 297. 
 
 Second; Wallace, Coxe, Hazel. 
 
 Cimiotti v. American, 168 Fed. 529; 93 C. C. A. 546 App. 546, 836 
 
 Affg. 158 Fed. 171. 
 
 Third; Dallas, Gray, Buffington. 
 
 Cimiotti v. Bowsky, 143 Fed. 508; 74 C. C. A. 617 508, 831 
 
 See 113 Fed. 698; 95 Fed. 474; 108 Fed. 82; 198 U. S. 399. 
 Second; Wallace, Coxe, Thomas. 
 
 Cincinnati v. American, 143 Fed. 322; 74 C. C. A. 522 219 
 
 Sixth; Lurton, Severens, Richards. 
 
 Clancey v. Troy, 157 Fed. 554; 85 C. C. A. 314 277, 721, 754 
 
 Revg. 152 Fed. 188. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Clark V. Bonsfield, 77 U. S. 133; 19 L. Ed. 862 231, 337 
 
 Nelson. 
 
 Clark V. Deere, 80 Fed. 534; 25 C. C, A. 619 HI 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Clark V. Ferguson, 119 U. S. 335; 30 L. Ed. 406; 7 S. Ct. 382 662, 667 
 
 Affg. 21 Blatchf. 376. 
 
 Clark V. Wilhmantic, 140 U. S. 481; 35 L. Ed. 521; 11 S. Ct. 846 65, 
 
 96, 217, 397, 411, 483, 809, 862 
 Revg. 27 Fed. 865. 
 Bradley. 
 Clark V. Wooster, 119 U. S. 322; 30 L. Ed. 392; 7 S. Ct. 217 . . 292, 717, 725 
 Bradley. 
 
 Clark Blade v. Gillette, 194 Fed. 421; 114 C. C. A. 383 App. 9, 247 
 
 Affg. 187 Fed. 149. 
 Third; Gray, Buffington, Lanning. 
 Clements v. Odorless, 109 U. S. 641; 27 L. Ed. 1060; 3 S. Ct. 525 871 
 
 Clerk V. Tannage, 84 Fed. 643; 28 C. C. A. 501 518, 532 
 
 Third; Acheson, Butler, Kirkpatrick.
 
 XXxiv CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Cleveland v. Chicago, 135 Fed. 783; 68 C. C. A. 485 525 
 
 See 127 Fed. 130. 
 
 Third; Acheson, Dallas, Gray. 
 
 Cleveland v. Detroit, 131 Fed. 853; 68 C. C. A. 233 54, 277, 349, 916 
 
 Revg. 131 Fed. 740. 
 Sixth; Lurton, Severens, Richards. 
 
 Cleveland v. Kauffman, 135 Fed. 360; 68 C. C. A. 658 638, 673 
 
 Revg. 126 Fed. 658. 
 
 Third; Acheson, Dallas, Gray. 
 
 Clifford V. Capell, 165 Fed. 193; 91 C. C. A. 227 897 
 
 Third; Grav, Buffington, Archbald. 
 
 Clinton v. Hendrick, 86 Fed. 137; 29 C. C. A. 612 456, 635 
 
 Revg. 78 Fed. 632. 
 Third; Acheson, Dallas, Bradford. 
 
 Clisby V. Reese, 88 Fed. 645; 32 C. C. A. 80 48, 60 
 
 Seventh ; Woods, Sho waiter, Bunn. 
 
 Clough V. Gilbert, 106 U. S. 178; 27 L. Ed. 138; 1 S. Ct. 198 71, 89, 
 
 Blatchford. 375, 468, 635 
 
 Coates V. Boker, 119 Fed. 358; 56 C. C. A. 94 675 
 
 Revg. 115 Fed. 637. 
 Second; Lacombe, Townsend, Coxe. 
 
 Coburn v. Chandler, 97 Fed. 333; 38 C. C. A. 201 208 
 
 Affg. 91 Fed. 260. 
 
 First; Colt, Putnam, Webb. 
 
 Cochrane v. Badische, 111 U. S. 293; 28 L. Ed. 433; 4 S. Ct. 455 77, 
 
 519, 823, 871, 914 
 Revg. 3 B. & A. 235; 15 Blatchf. 290; 16 Blatchf. 155. 
 Blatchford. 
 
 Cochrane v. Deener, 94 U. S. 780; 24 L. Ed. 139 423, 436, 468, 815 
 
 Bradley. Dissenting, Clifford, Strong. 
 
 Codman v. Amia, 74 Fed. 634; 20 C. C. A. 566 626 
 
 Affg. 70 Fed. 710. 
 
 First; Colt, Putnam. Webb. 
 
 Coffield V. Fletcher, 167 Fed. 321 ; 93 C. C. A. 25 887 
 
 Sixth; Lurton, Severens, Richards. 
 Coffin V. Ogden, 85 U. S. 120; 21 L. Ed. 821 71, 391 
 
 SWAYNE. 
 
 Cohn V. Stephenson, 142 Fed. 467; 73 C. C. A. 583 561 , 
 
 Third; Acheson, Dallas, Gray. 
 
 Cohn V. United States, 93 U. S. 366; 23 L. Ed. 907 105 
 
 Strong. Dissenting opinion, Clifford. 
 Collar Button Case — See Krementz v. Cottle, 148 U. S. 556. 
 
 Collins V. Goes, 130 U. S. 56; 32 L. Ed. 858: 9 S. Ct. 514 344 
 
 Revg. 3 Fed. 225; Affg. 21 Fed. 38. 
 Fuller. 
 
 Colt V. Wesson, 127 Fed. 333; 62 C. C. A. 167 85 
 
 Affg. 122 Fed. 90. 
 
 First; Putnam, Aldrich, Lowell. 
 Colt's Co. V. N. Y. Sporting Goods, 186 Fed. 625; 108 C. C. A. 489. . App. 273 
 See ISO Fed. 777. 
 
 Seconfl; Lacombe, Coxe, Ward, Per Curiam. 
 Columbia v. Duerr, rSelden Pat.) 184 Fed. 893; 107 C. C. A. 215. . .App. 63, 
 103, 186, 194, 203, 241, 273, 363, 374, 414, 456, 604, 672, 727, 905 
 Revg. 172 Fed. 923. 
 
 Second; Lacombe, Ward, Noyes.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXXV 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Columbia v. Duff, 184 Fed. 876; 107 C. C. A. 200 App. 128 
 
 See 168 Fed. 57. 
 
 Third; Buffington, Lanning, Bradford. 
 
 Columbia v. Kokomo, 143 Fed. 116; 74 C. C. A. 310 434, 435, 453, 
 
 Revg. 139 Fed. 578. 456, 506, 528 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Columbia Wire v. Kokomo, 194 Fed. 108; 114 C. C. A. 186 App. 837 
 
 See 143 Fed. 116. 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 Columbus V. Robbins, 148 U. S. 266; 37 L. Ed. 445; 13 S. Ct. 594. . . 113, 143 
 See 52 Fed. 337. 
 Fuller. 
 
 Columbus V. Robbins, 52 Fed. 337; 3 C. C. A. 103 130 
 
 Overruled in Bissell v. Goshen, 72 Fed. 545. See 148 U. S. 266. 
 Sixth; Jackson, Taft, Hammond. 
 Columbus V. Robbins, 64 Fed. 384; 12 C. C. A. 174. . . .229, 608, 626, 674 
 Affg. 50 Fed. 545; see 52 Fed. 337; 148 U. S. 266; 52 Fed. 215. 
 Sixth; Taft, Lurton, Ricks. 
 
 Columbus V. Standard, 148 Fed. 622; 78 C. C. A. 394 80, 81, 90 
 
 Affg. 145 Fed. 186. 
 
 Sixth; Lurton, Severens, Cochran. 
 
 Commercial v. Avery, 159 Fed. 935; 87 C. C. A. 206 702 
 
 Affg. 152 Fed. 642. 
 
 Seventh; Baker, Seaman, Sanborn. Per Curiam. 
 Commercial v. Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 S. Ct. 972. . . .398, 
 Affg. 27 Fed. 78. 420, 531, 687, 889 
 
 Blatchford. 
 
 Comptograph v. Burroughs, 183 Fed. 321; 105 C. C. A. 533 App. 385 
 
 Affg. 175 Fed. 787; see 146 Fed. 981. 
 Seventh; Grosscup, Baker, Seaman. 
 
 Comptograph v. Mechanical, 145 Fed. 331; 76 C. C. A. 205 448, 452, 
 
 Revg. 140 Fed. 136. 651, 673 
 
 First: Colt, Putnam, Lowell. 
 Computing v. Automatic, 204 U. S. 609; 51 L. Ed. 645; 27 S. Ct. 307. . . .207, 
 Affg. 26 App. D. C. 238. 633, 675 
 
 Day. 
 
 Confectioner's v. Panouahas, 134 Fed. 393; 67 C. C. A. 391 897 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Conley v. King Bridge, 187 Fed. 137; 109 C. C. A. 412 App. 63, 460 
 
 Affg. as to pat. 735, 469 and revg. as to pat. 701, 544, 175 Fed. 79. 
 Third; Gray, Buffington, Young. 
 Consolidated Bunging v. Metropolitan, 60 Fed. 93; 8 C. C. A. 485. . 192, 235 
 Revg. 46 Fed. 288; disapproving 29 Fed. 449. 
 Second; Wallace, Lacombe, Shipman. 
 Consolidated Car Heating v. West End, 85 Fed. 662; 29 C. C. A. 386. . .85, 
 Modfg. 82 Fed. 993. 133, 189, 241, 635 
 
 First; Colt, Webb, Aldrich. 
 
 Consolidated Electric v. Holtzer, 67 Fed. 907; 15 C. C. A. 63 444, 
 
 627, 667, 672 
 Revg. 60 Fed. 748. 
 
 First; Putnam, Nelson, Webb. 
 Consolidated Electric Storage v. Accumulator, 55 Fed. 485; 5 C. C. A. 202 
 
 ....561 
 Affg. 53 Fed. 796; see same pat. 38 Fed. 117; 39 Fed. 490; 40 Fed. 328. 
 Third; Acheson, Butler, Wales,
 
 XXXVl CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Consolidated Engine v. Landers, 160 Fed. 79; 87 C. C. A. 235 456 
 
 Affg. 151 Fed. 775. 
 
 Second; Lacombe, Ward, Notes. 
 
 Consolidated Fastener v. Hays, 100 Fed, 984; 41 C. C. A. 142- 35 391 
 
 Affg. 95 Fed. 168. ' 457, 539, 561 
 
 Second; Lacombe, Shipman. 
 
 Consolidated Fastener v. Littauer, 84 Fed. 164; 28 C. C. A. 133 192, 541 
 
 Affg. 79 Fed. 795. 
 Second; Wallace, Lacombe, Shipman. 
 Consolidated Fruit Jar v. Wright, 94 U. S. 92; 24 L. Ed. 68 6, 856 
 
 SWAYNE. 
 
 Consolidated Piedmont v. Pacific, 58 Fed. 226; 7 C. C. A. 195 118 
 
 See 53 Fed. 385; 53 Fed. 382. 
 Ninth; McKenna, Gilbert. 
 Consolidated Piedmont v. Pacific, 53 Fed. 385; 3 C. C. A. 570. . 118, 465, 468 
 
 Ninth; McKenna, Ross, Knowles. 
 Consohdated Ry. Elect, v. Adams, 161 Fed. 343; 88 C. C. A. 355 . . .65, 71, 
 Revg. 153 Fed. 193. 867 
 
 Seventh; Grosscup, Baker, Seaman. 
 Consolidated Roller Mill v. Barnard, 156 U. S. 261; 39 L. Ed. 417; 15 S. Ct. 
 
 333 230, 640 
 
 Brown. 
 Consolidated Roller Mill v. Walker, 138 U. S. 124; 34 L. Ed. 920; 11 S. Ct. 
 
 292 224, 646, 654, 671 
 
 Affg. 43 Fed. 575. 
 Blatchford. 
 Consolidated Rubber Tire v. Diamond, 162 Fed. 892; 89 C. C. A. 582 
 
 ....573, 625, 893 
 Affd. 220 U. S. 428; see 151 Fed. 237; 157 Fed. 677. 
 Second; Lacombe, Coxe, Noyes. 
 Consolidated Rubber Tire v. Diamond, 157 Fed. 677; 85 C. C. A. 349 
 
 ....31, 561, 564 
 Affd. 220 U. S. 428. 
 
 Second; Lacombe, Ward, Noyes. 
 Consolidated Rubber Tire v. Ferguson, 183 Fed. 756; 106 C. C. A. 330 
 
 ....App. 723 
 See 169 Fed. 888. 
 Second; Coxe, Ward, Martin. 
 Consolidated Rubber Tire v. Firestone, 151 Fed. 237; 80 C. C. A. 589. .622 
 Affd. 220 U. S. 428; affg. 147 Fed. 739. 
 Second; Lacombe, Townsend, Coxe. 
 Consolidated Safety Valve v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 
 
 513 626, 635, 690, 862, 905 
 
 Revg. 7 Fed. 768; see Ashcroft v. R. R. 5 0. G. 725, affd. in 97 U. S. 189. 
 
 Bu\TCHFORD. 
 
 Consolidated Safety Valve v. Crosby, 141 U. S. 441; 35 L. Ed. 809; 12 S. Ct. 
 
 49 284, 828, 835, 837, 842 
 
 Affg. 44 Fed. 66; see 113 U. S. 157; 7 Fed. 768. 
 Blatchford. 
 Consolidated Store Service v. Seybold, 105 Fed. 978; 45 C. C. A. 152. .195 
 Affg. 100 Fed. 299. 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Consumers Gas Co. v. Danville, 50 Fed. 778; 1 C. C. A. 663 311, 322 
 
 Affg. 47 Fed. 43. 
 Third; Acheson, Butler, Green.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXXVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Continental Paper Bag v. Eastern, 210 U. S. 405; 52 L. Ed. 1122; 28 S. Ct. 
 
 748 129, 212, 223, 378, 427, 453, 594, 745 
 
 Aifg. 150 Fed. 741. 
 McKenna. 
 Continental Paper Bag v. Eastern, 150 Fed. 741; 80 C. C. A. 407. .548, 552 
 Affd. 210 U. S. 405; affg. 142 Fed. 479. 
 
 First; Colt, Lowell, Aldrich; dissenting, Aldrich. 
 Continental Rubber v. Single Tube, 178 Fed. 452; 101 C. C. A. 436 
 
 ....App. 861 
 Affg. 174 Fed. 50; see same pat. 98 Fed. 624; 112 Fed. 423. 
 Third; Gray, Lanning, McPherson. 
 
 Continuous v. Schmertz, 153 Fed. 577; 82 C. C. A. 587 543 
 
 Third; Gray, Holland, Lanning. 
 
 Cook V. Sandusky, 28 L. Ed. 124 103, 525 
 
 Waite. 
 
 Cook V. Sterling, 150 Fed. 766; 80 C. C. A. 502 168, 759 
 
 Affg. 118 Fed. 45. 
 
 Seventh; Grosscup, Seaman, Kohlsaat. 
 
 Coon V. Wilson, 113 U. S. 268; 28 L. Ed. 963; 5 S. Ct. 537 871 
 
 Revg. 18 Blatchf. 532. 
 
 Co-Operating v. Hallock, 128 Fed. 596; 64 C. C. A. 104 118, 546 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Corbin v. Eagle, 150 U. S. 38; 37 L. Ed. 989; 14 S. Ct. 28 207, 661, 
 
 Affg. 37 Fed. 338. 871, 873 
 
 Jackson. 
 Corn Planter Patent — see Brown v. Guild, 90 U. S. 181. 
 Cornell v. Weidner, 127 U. S. 261; 32 L. Ed. 148; 8 S. Ct. 1152 872 
 
 Gray. 
 Corning v. Burden, 15 How. 252; 14 L. Ed. 683 245, 398, 411, 426, 
 
 Grier. 484, 629, 690, 768, 815, 819 
 Corning v. Troy, 15 How. 451; 14 L. Ed. 768 115, 116, 134, 140 
 
 Cornley v. Marckwold, 131 U. S. 159; 33 L. Ed. 117; 9 S. Ct. 744 842 
 
 Affg. 23 Blatchf. 163. 
 
 Corrington v. Westinghouse, 178 Fed. 711; 103 C. C. A. 479 App. 2, 74, 
 
 Revg. 173 Fed. 69. 206, 803, 812, 862- 
 
 Second; Lacombe, CoxE, Ward. 
 
 Cortelyou v. Johnson, 207 U. S. 196; 52 L. Ed. 167; 28 S. Ct. 105 478 
 
 Affg. 145 Fed. 933. 
 
 Cortelyou v. Johnson, 145 Fed. 933; 76 C. C. A. 455 257, 477, 478 
 
 Revg. 138 Fed. 110. 
 
 Second; Coxe, Townsend, Holt. Dissenting in part, Townsend. 
 Cotto-Waxo V. Perohn, 185 Fed. 267; 107 C. C. A. 373. . . .App. 194, 207, 
 
 208, 213, 434 
 Eighth; Sanborn, Hook, Reed; dissenting, Sanborn. 
 
 Coupe V. Royer, 155 U. S. 565; 39 L. Ed. 263; 15 S. Ct. 199 226, 285, 
 
 Shtras. 404, 777, 837 
 
 Covel V. Rich, 142 Fed. 468; 73 C. C. A. 584 616 
 
 Seventh; Grosscup, Baker, Seaman. 
 Cowles V. Lowrey, 79 Fed. 331; 24 C. C. A. 616. .519, 639, 640, 691, 753, 816 
 Revg. 68 Fed. 354. 
 Sixth; Lurton, Severens, Hammond.
 
 XXXVlll CASES EXCERPTED, WITH ANNOTATIONS 
 
 f References are to sections. " App." refers to Appendix ] 
 
 Craig V. Michigan, 81 Fed. 870; 26 C. C. A. 659 207 
 
 Affg. 72 Fed. 173. 
 
 Sixth; Taft, Lurton, Sage. 
 Cramer v. Singer, 93 Fed. 636; 35 C. C. A. 508 386 
 
 Ninth; Gilbert, Ross, Hawley. 
 Cramer v. Singer, 147 Fed. 917; 78 C. C. A. 53 37 
 
 Ninth; Gilbert, Ross, Morrow. 
 Crawford v. Heysinger, 123 U. S. 589; 31 L. Ed. 269; 8 S. Ct. 399 889 
 
 Crier v. Innes, 170 Fed. 324; 95 C. C. A. 508. . . .App. 31, 277, 332, 335, 
 Affg. 160 Fed. 103, except as to costs. 548, 579, 777 
 
 Second; Lacombe, Ward, Noyes. 
 
 Crosby v. Ashton, 94 Fed. 516; 36 C. C. A. 335 118 
 
 First; Colt, Putnam, Webb. 
 
 Crouch V. Roemer, 103 U. S. 797; 26 L. Ed. 426 592 
 
 Waite. 
 Crown V. Alluminum, 108 Fed. 845; 48 C. C. A. 72. . . .3, 7, 10, 30, 57, 219, 
 314, 363, 371, 434, 444, 453, 532, 626, 631, 636, 702, 848, 871, 873, 
 875, 878 
 Revg. 100 Fed. 849. 
 
 Fourth; Goff, Simonton, Brawley. 
 
 Crown V. Baltimore, 136 Fed. 184; 69 C. C. A. 519 133 
 
 See 136 Fed. 199. 
 
 Second; Wallace, Coxe. Per Curiam. 
 
 Crown V. Standard, 136 Fed. 841; 69 C. C. A. 200 359, 626, 906, 919 
 
 See Imperial v. Crown, 139 Fed. 312. 
 Third Circuit holding this patent good. 
 
 Second; Wallace, Lacombe, Coxe. Dissenting in part, Coxe. 
 Crozier v. Krupp, 224 U. S. 290; 56 L. Ed. 771; 32 S. Ct. 488. . . .App. 498 
 
 Revg. 32 App. D. C. 1. White. 
 
 Cummer v. Atlas, 193 Fed. 993; 113 C. C. A. 611. . .App. 274, 344, 387, 655 
 Sixth; Warrington, Knappen, Denison. 
 
 Gumming v. Baker, 144 Fed. 395; 75 C. C. A. 373 198 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Curtis V. Overman, 58 Fed. 784; 7 C. C. A. 493 541 
 
 Revg. 53 Fed. 247. 
 Also revg. Mfg. Co. v. Clark, 46 Fed. 789. 
 Second; Wallace, Lacombe, Shipman. 
 Cushman v. Goddard, 95 Fed. 664; 37 C. C. A. 221. .222, 385, 436, 616, 711 
 Affg. 90 Fed. 727. 
 First; Putnam, Webb, Aldrich. 
 
 Cutler-Hammer v. Automatic, 159 Fed. 447; 86 C. C. A. 477 591 
 
 Affg. 153 Fed. 197. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Dable v. Flint, 137 U. S. 41; 34 L. Ed. 618; 11 S. Ct. 8 366, 532, 933 
 
 Affg. 42 Fed. 686. 
 Gray. 
 
 Daimler v. Conklin, 170 Fed. 70; 95 C. C. A. 346 App. 175, 505 
 
 Revg. 160 Fed. 679. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Dalton V. Jennings, 93 U. S. 271 ; 23 L. Ed. 925 601 
 
 Miller. 
 
 Dalzell V. Dueber, 149 U. S. 315; 37 L. Ed. 749; 13 S. Ct. 886 168, 
 
 Revg. 38 Fed. 597. 174, 368, 800 
 
 Gray. Dissenting, Brewer.
 
 CASES EXCERPTED, WITH ANNOTATIONS XXXix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Dane v. Chicago, 131 U. S. cxxvi app.; 23 L. Ed. 82 103, 608, 669 
 
 Bradley. 
 
 D'Arcy v. Staples, 161 Fed. 733; 88 C. C. A. 606 31, 496, 615 
 
 See 148 Fed. 19. 
 
 Sixth; Lurton, Severens, Richards. 
 
 Dashiell v. Grosvenor, 162 U. S. 425; 40 L. Ed. 1025; 16 S. Ct. 805 782 
 
 Revg. 62 Fed. 584; Affg. 66 Fed. 334. 
 Brown. 
 Dashiell v. Grosvenor, 66 Fed. 334; 13 C. C. A. 593. . . .372, 425, 498, 553 
 Revg. 62 Fed. 584. 
 
 Fourth; Goff, Simonton, Brawley. 
 
 Davey v. Prouty, 107 Fed. 505; 46 C. C. A. 439 458, 486, 506 
 
 Affg. 96 Fed. 336. 
 
 First; Putnam, Webb, Aldrich. 
 
 Davis V. Edison, 60 Fed. 276; 8 C. C. A. 615 523, 524, 539 
 
 Affg. 58 Fed. 878. 
 
 Distinguished in Thomson v. Kelsey, 75 Fed. i005. 
 First; Putnam, Nelson, Webb. 
 
 Davis t;. Morris, 81 Fed. 407; 26 C. C. A. 460 95 
 
 Revg. 78 Fed. 129. 
 Third; Acheson, Dallas, Buffington. 
 Davis V. Parkman, 71 Fed. 961 ; 18 C. C. A. 398. . .44, 229, 273, 601, 626, 630 
 Affg. 45 Fed. 693. 
 First; Putnam, Nelson, Webb. 
 
 Davis V. Perry, 120 Fed. 941; 57 C. C. A. 231 527 
 
 Revg. 115 Fed. 333. 
 Second; Wallace, Townsend, Coxe. 
 
 Davis V. Tagliabue, 159 Fed. 712; 86 C. C. A. 466 162 166 
 
 Revg. 148 Fed. 705; 150 Fed. 372. 
 Second; Lacombe, Ward, Noyes. 
 Day V. Fair Haven, 132 U. S. 98; 33 L. Ed. 265; 10 S. Ct. 11 . . .207, 220, 661 
 Affg. 23 Fed. 189. 
 Fuller. 
 Daylight v. American, 142 Fed. 454; 73 C. C. A. 570. . .93, 224, 623, 686 
 Revg. 140 Fed. 174. 
 Third; Dallas, Gray, Buffington. 
 
 Dayton v. Westinghouse, 118 Fed. 562; 55 C. C. A. 390 351, 353, 631, 
 
 667, 688, 817 
 Affg. 106 Fed. 724. 
 
 Sixth; Lurton, Day, Severens. 
 
 Dean v. Mason, 61 U. S. 198; 15 L. Ed. 876 299, 789, 839 
 
 McLean. 
 
 DeBeaumont v. Williames, 80 Fed. 995; 26 C. C. A. 298 217 
 
 Affg. 71 Fed. 812. 
 
 Third; Acheson, Butler, Buffington. 
 
 Dececo v, Gilchrist, 125 Fed. 293; 60 C. C. A. 207 92, 98, 193, 398, 
 
 626, 692 
 First; Colt, Putnam, Aldrich. 
 
 Dederick v. Seigmund, 51 Fed. 233; 2 C. C. A. 169 641 
 
 Affg. 42 Fed. 842. 
 
 Second; Lacombe, Shipman. 
 
 Deere v. Case, 56 Fed. 841; 6 C. C. A. 157 612 
 
 Seventh; Gresham, Woods, Bunn. 
 
 Deere v. Dowagiac, 153 Fed. 177; 82 C. C. A. 351 312, 548 
 
 Eighth; Sanborn, Hook, Adams.
 
 Xl CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Deere v. Rock Island, 84 Fed. 171; 28 C. C. A. 308 674 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Deering v. Kelly, 103 Fed. 261; 43 C. C. A. 225 836, 927 
 
 Sixth; Lurton, Day, Severens. 
 Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. . . .12, 61, 
 
 95, 201, 224, 230, 408, 493, 590, 651 
 Revg. 40 Fed. 236. 
 Brown. 
 
 DeLamar v. DeLamar, 117 Fed. 240; 54 C. C. A. 272 198, 676, 904 
 
 Affg. 110 Fed. 538. 
 
 Ninth; Gilbert, Ross, Morrow. 
 
 DeLamater v. Heath, 58 Fed. 414; 7 C. C. A. 279. . . 212, 853, 856 
 
 Second; Lacombe, Shipman. 
 
 DeLaval v. Iowa, 194 Fed. 423; 114 C. C. A. 385 App. 74, 129 
 
 Eighth; Sanborn, Hook, Adams. 
 
 DeLaval v. Vermont, 135 Fed. 772; 68 C. C. A. 474 80, 411, 704 
 
 Affg. 126 Fed. 536. 
 Second- Wallace, Lacombe, Townsend. 
 DeLaVergne v. Featherstone, 147 U. S. 209; 37 L. Ed. 138; 13 S. Ct. 283 
 
 ....39,300 
 Revg. 49 Fed. 916. 
 Fuller. 
 
 DeLaVergne v. Valentine, 66 Fed. 765; 14 C. C. A. 77 239 
 
 Seventh; Woods, Baker, Grosscup. 
 
 Delaware v. Shelby, 160 Fed. 928; 88 C. C. A. 110 154, 208, 459 
 
 Affg. 151 Fed. 64. 
 
 Third; Dall.\s, Gray, Buffington. 
 
 Delaware & A. Tel. v. Delaware, 50 Fed. 677; 2 C. C. A. 1 479 
 
 See 47 Fed. 633. 
 Third; Acheson, Butler, Green. 
 
 DeLong v. Francis, 168 Fed. 900; 94 C. C. A. 240 App. 627, 666 
 
 Affg. 150 Fed. 597. 
 
 Second; Lacombe, Coxe, No yes. 
 
 •DeLoriea v. Whitney, 63 Fed. 611; 11 C. C. A. 355 403, 468, 623, 734, 
 
 737 
 First; Putnam, Nelson, Webb. 
 
 Denning v. Bray, 61 Fed. 651; 10 C. C. A. 6 155, 270, 764 
 
 Affg. 56 Fed. 1019. 
 Second; Wallace, Lacombe, Shipman. 
 Densmore v. Scofield, 102 U. S. 375; 26 L. Ed. 214 746 
 
 SWAYNE. 
 
 Derby v. Thompson, 146 U. S. 476; 36 L. Ed. 1051; 13 S. Ct. 181 . .246, 456 
 Revg. 32 Fed. 830 
 Brown. 
 
 Devlin v. Paynter, 64 Fed. 398; 12 C. C. A. 188 457 
 
 Affg. 63 Fed. 122. 
 Third; Acheson, Dallas, Wales, 
 
 Dey V. Bundy, 178 Fed. 812; 102 C. C. A. 260 App. 585, 795 
 
 Affg. 169 Fed. 807. 
 Second; Lacombe, Coxe, Noyes. 
 
 Dey V. Syracuse, 161 Fed. Ill, 88 C. C. A. 275 202, 206 
 
 Affg. 152 Fed. 440. 
 Second; Lacombe, Coxe, Ward. 
 
 Diamond Meter v. Westinghouse, 152 Fed. 704; 81 C. C. A. 630 679 
 
 Seventh; Grosscup, Baker, Seaman.
 
 CASES EXCERPTED, WITH ANNOTATIONS xH 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Diamond Rubber v. Consolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444 
 . . . .App. 440, 564, 598, 602, 625, 626, 634, 667, 674, 691, 692, 693, 916 
 Affg. 157 Fed. 677 and 162 Fed. 892; affg. also Rubber Tire v. Colum- 
 bia, 91 Fed. 978, Consolidated v. Finley, 116 Fed. 629, Con- 
 solidated V. Firestone, 151 Fed. 237 and 147 Fed. 739, Rubber Tire 
 V. Milwaukee, 154 Fed. 358. Revg. as to pat. Goodyear v. Rubber 
 Tire, 116 Fed. 363, Rubber Tire v. Victor, 123 Fed. 85; see 191 Fed. 
 832. 
 McKenna. 
 Diamond State v. Goldie, 84 Fed. 972; 28 C. C. A. 589. . . .89, 380, 486, 
 Affg. 81 Fed. 173. 635, 643 
 
 Third; Dallas, Butler, Kirkpatrick. 
 
 Diamond Stone Sawing v. Brown, 166 Fed. 306; 92 C. C. A. 224 834, 
 
 836, 842 
 Affg. 155 Fed. 753; see 130 Fed. 896; 137 Fed. 910; HI Fed. 380. 
 Second; Lacombe, Coxe, Ward. 
 
 Dickerson v. Matheson, 57 Fed. 524; 6 C. C. A. 466 505 
 
 Affg. 50 Fed. 73. 
 
 Second; Lacombe, Shipman. 
 
 Dickerson v. Sheldon, 98 Fed. 621 ; 39 C. C. A. 191 505 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Dickerson v. Tinling, 84 Fed. 192; 28 C. C. A. 139 505 
 
 Eighth; Sanborn, Thayer, Riner. 
 
 Dixon- Woods v. Pfeifer, 55 Fed. 390; 5 C. C. A. 148 916 
 
 Affg. 51 Fed. 292. 
 
 Affg. same pat. 28 Fed. 561 ; 37 Fed. 333. 
 Second; Lacombe, Shipman. 
 Dobson V. Cubley, 149 U. S. 117; 37 L. Ed. 671; 13 S. Ct. 796. . .503, 530 
 Affg. 39 Fed. 276. 
 Shiras. 
 
 Dobson V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946 231, 247, 
 
 290, 295, 298, 331, 334, 496 
 See Dobson v. Hartford, 114 U. S. 439. 
 
 Dobson V. Hartfordi 114 U. S. 439; 29 L. Ed. 177; 5 S. Ct. 945 229, 
 
 Revg. 10 Fed. 385. 298,337 
 
 Blatchford. Dissenting Bradley. 
 
 Dobson V. Lees, 137 U. S. 258; 34 L. Ed. 652; 11 S. Ct. 71 178, 871 
 
 Affg. 30 Fed. 625. 
 Fuller. 
 
 Dodge V. Fulton, 92 Fed. 995; 35 C. C. A. 140 570 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Dodge V. Jones, 159 Fed. 715; 86 C. C. A. 191 411, 859 
 
 Affg. 153 Fed. 186. 
 
 Third; Dallas, Gray, Buffington. 
 
 Dodge f. New York, 150 Fed. 738; 80 C. C. A. 404 596 
 
 Affg. 139 Fed. 976. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Doig V. Morgan, 122 Fed. 460; 59 C. C. A. 616 70, 624, 633 
 
 Affg. 117 Fed. 305. 
 
 Second; Wallace, Lacombe, Coxe. 
 
 Donallan v. Tannage, 79 Fed. 385; 24 C. C. A. 647 123 
 
 See 75 Fed. 287. 
 
 Dismissed on appeal but not on merits. 
 First; Putnam, Aldrich, Brown.
 
 xlii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Donner v. American, 165 Fed. 199; 91 C. C. A. 233 702 
 
 Revg. 160 Fed. 971. 
 
 Third; Gray, Buffington, Cross. 
 
 Doten V. City of Boston, 138 Fed. 406; 70 C. C. A. 308 827, 837 
 
 First; Colt, Putnam, Lowell. 
 Double Pointed v. Two Rivers, 109 U. S. 117; 27 L. Ed. 877; 3 S. Ct. 105 
 Blatchford. .... 50, 675 
 
 Dougherty v. Dovle, 63 Fed. 475; 11 C. C. A. 298 207 
 
 Affg. 59 Fed. 470. 
 
 Second; Lacombe, Shipman, Per Curiam. 
 
 Dowagiac v. Brennan, 127 Fed. 143; 62 C. C. A. 257 374 
 
 Revg. 118 Fed. 143; see 101 Fed. 716; 118 Fed. 136; 187 U. S. 644; 
 108 Fed. 67; 121 Fed. 988. 
 Sixth; Lurton, Severens, Richards. 
 
 Dowagiac v. Minnesota, 124 Fed. 735; 61 C. C. A. 57 536 
 
 See 118 Fed. 136. 
 
 Eighth; Sanborn, Van Devanter, Shiras. 
 
 Dowagiac v. Minnesota, 118 Fed. 136; 55 C. C. A. 86 376, 456, 459, 
 
 See 124 Fed. 735. 506, 531, 622, 674 
 
 Eighth; Sanborn, Thayer, Carland. 
 
 Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. 526 App. 277, 
 
 836, 843, 845 
 Affg. 183 Fed. 318; see 101 Fed. 716; 118 Fed. 136; 121 Fed. 988; 
 127 Fed. 143. 
 Eighth; Hook, Adams, McPherson. 
 Dowagiac v. Superior, 115 Fed. 886; 53 C. C. A. 36. . . .207, 459, 461, 598, 
 
 267, 674, 917 
 Sixth; Lurton, Day, Severens. 
 
 Dowagiac v. Superior, 162 Fed. 479; 98 C. C. A. 399 837, 841 
 
 See 115 Fed. 886; 162 Fed. 472. 
 Sixth; Lurton, Severens, Richards. 
 
 Downes v. Teter-Heany, 150 Fed. 122; 80 C. C. A. 76 820, 822 
 
 Affg. 144 Fed. 106. 
 
 Third; Gray, Buffington, Lanning. 
 
 Downton v. Yaeger, 108 U. S. 466; 27 L. Ed. 789; 3 S. Ct. 10 106 
 
 Affg. 1 Fed. 199. 
 Woods. 
 
 Doze V. Smith, 69 Fed. 1002; 16 C. C. A. 581 144, 376 
 
 Affg. 66 Fed. 327. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Drake v. Brownell, 123 Fed. 86; 59 C. C. A. 216 325, 696, 697 
 
 Sixth; Lurton, Severens, Wanty. 
 
 Draper v. American, 161 Fed. 728; 88 C. C. A. 588 94, 481, 484, 550, 
 
 634, 937 
 First; Colt, Putnam, Aldrich. 
 
 Drewson v. Hartje, 131 Fed. 734; 65 C. C. A. 548 396, 613 
 
 Sixth; Lurton, Severens, Richards. 
 
 Dreyfus v. Searle, 124 U. S. 60; 31 L. Ed. 352; 8 S. Ct. 390 669, 819 
 
 Blatchford. 
 
 Dryfoos v. Wiese, 124 U. S. 32; 31 L. Ed. 362; 8 S. Ct. 354 217, 376, 
 
 Affg. 22 Blatchf. 19. 426, 871 
 
 Blatchford. 
 
 DuBois V. Kirk, 1.58 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729 273, 277, 
 
 Affg. 33 Fed. 2,52; 46 Fed. 486. 348, 495, 531, 562, 585 
 
 Brown. Dissenting, Field.
 
 CASES EXCERPTED, WITH ANNOTATIONS xHii 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Dueber v. Rabbins, 75 Fed. 17; 21 C. C. A. 198 285, 598, 626 
 
 Revg. 71 Fed. 186; see 64 Fed. 384. 
 Sixth; Taft, Lurton, Hammond. 
 Duer V. Corbin, 149 U. S. 216; 37 L. Ed. 707; 13 S. Ct. 850. . .88, 224, 636 
 Affg. 37 Fed. 338. 
 
 Brown. „„ ^^^ 
 
 Duff V. Forgie, 59 Fed. 772; 8 C. C. A. 261 204, 373, 504 
 
 Affg. 57 Fed. 748. 
 Third; Dallas, Butler, Green. 
 
 Duff V. Gilliland, 139 Fed. 16; 71 C. C. A. 428 176 
 
 Revg. 135 Fed. 581. 
 Third; Acheson, Dallas, Gray. 
 Duff V. SterHng, 107 U. S. 636; 27 L. Ed. 517; 2 S. Ct. 487 224, 507 
 
 Dunbar v. Eastern, 81 Fed. 201 ; 26 C. C. A. 330 48, 768 
 
 Revg. 75 Fed. 567. 
 Second; Wallace, Lacombe, Shipman. 
 Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 34. . . .341, 343, 389, 400, 473, 
 
 599, 667, 676, 679, 696, 706 
 
 Duncan v. Cincinnati, 171 Fed. 656; 96 C. C. A. 400. . . .App. 222, 441, 500, 
 
 656 
 
 Sixth; Lurton, Severens, Warrington. 
 
 Duner v. Grand Rapids, 171 Fed. 863; 96 C. C. A. 531 App. 223, 701 
 
 Affg. 171 Fed. 867. 
 
 Sixth; Lurton, Severens, Warrington. 
 
 Dunham v. Dennison, 154 U. S. 103; 38 L. Ed. 924; 14 S. Ct. 986 871 
 
 Affg. 40 Fed. 667. 
 
 Dunlap t!!^Schofield, 152 U. S. 244; 38 L. Ed. 426; 14 S. Ct. 576. . .281, 337, 
 
 516 
 
 Revg. 42 Fed. 323. 
 Gray. 
 
 Dunlap V. Willbrandt, 151 Fed. 223; 80 C. C. A. 575 245, 485 
 
 Eighth; Sanborn, Van Devanter, Hook. Dissentmg, Sanborn. 
 
 Dunn V. Standard, 163 Fed. 521; 90 C. C. A. 331 208 
 
 Sixth; Lurton, Severens, Richards. 
 Duplex V. Campbell, 69 Fed. 250; 16 C. C. A. 220. . . .252, 534, 543, 546, 561 
 See 64 Fed. 782. 
 
 Sixth; Taft, Lurton, Severens. 
 
 Durand v. Schulze, 61 Fed. 819; 10 C. C. A. 97 222, 244, 820, 821 
 
 Affg. 60 Fed. 392. 
 Third; Acheson, Butler, Wales. 
 
 Durham v. Seymour, 161 U. S. 235; 40 L. Ed. 682; 16 S. Ct. 452 143 
 
 Affg. 23 Wash. L. Rep. 273. 
 Fuller. 
 Eachus V. Broomall, 115 U. S. 429; 28 L. Ed. 419; 6 S. Ct. 229. . .322, 389, 
 
 881 
 
 Matthews. ^^^ 
 
 Eagle V. Corbin, 64 Fed. 789; 12 C. C. A. 418 225 
 
 Revg. 52 Fed. 980. 
 Second; Wallace, Lacombe, Shipman. 
 Eagleton v. West, 111 U. S. 490; 28 L. Ed. 493; 4 S. Ct. 593. . . .56, 181, 300 
 Affg. 18 Blatchf. 218. Distinguished 147 U. S. 209. 
 Blatchford.
 
 xliv CASES EXCERPTED, WITH ANNOTATIONS 
 
 ( References are to sections. " App." refers to Appendix ) 
 
 Eames v. Andrews, 122 U. S. 40; 30 L. Ed. 1064; 7 S. Ct. 1073 320, 
 
 Affg. 15 Fed. 109. . 625, 873, 916 
 
 See Andrews v. Hovey, 123 U. S. 267; Andrews w. Carrman, 13 
 Blatchf. 307; Andrews v. Wright, 13 O. G. 969; Andrews?;. Cross, 19 
 Blatchf. 294; Green v. French, 11 Fed. 591; Andrews v. Creegan, 
 19 Blatchf. 113; Andrews v. Long, 2 McCrary, 577; Andrews v. 
 Cone, Andrews v. Hovey, 5 McCrary, 181. 
 Matthews. Dissenting Bradley, Field, Gray. 
 
 Eames v. Godfrey, 68 U. S. 78; 17 L. Ed. 547 456, 473 
 
 Davis. 
 
 Eames v. Worcester, 123 Fed. 67; 60 C. C. A. 37 86, 431, 501, 600, 
 
 601, 612 
 Ninth; Gilbert, Ross, Hawley. Dissenting Hawley. 
 
 Eastman v. Getz, 84 Fed. 458; 28 C. C. A. 459 411, 672, 676 
 
 Affg. 77 Fed. 412. 
 
 Second; Wallace, Lacombe, Shipman. 
 Eastman v. Mayor, 134 Fed. 844; 69 C. C. A. 628. . . . 178, 412, 415, 853, 858 
 Revg. 81 Fed. 182; see 9 Fed. 500; 35 Fed. 504; 36 Fed. 261; 45 
 Fed. 243; 47 Fed. 515; 105 Fed. 631. 
 Second; Wallace, Townsend, Coxe, 
 
 Eby V. King, 158 U. S. 366; 39 L. Ed. 1018; 15 S. Ct. 972 532, 871, 
 
 Brown. 874, 880, 885, 887 
 
 Ecaubert v. Appleton, 67 Fed. 917; 15 C. C. A. 73 21, 170, 275, 389, 
 
 396, 411, 811, 895 
 Modifying 62 Fed. 742; see 52 0. G. 2107. 
 Second; Wallace, Lacombe, Shipman. 
 
 Eccles V. Bradley, 158 Fed. 98; 85 C. C. A. 566 459 
 
 Second; Coxe, Ward, Noyes. Per Curiam. 
 
 Eclipse V. Farrow, 199 U. S. 581; 50 L. Ed. 317; 26 S. Ct. 150 760, 
 
 Revg. 24 App. D. C. 311. 761, 897 
 
 Holmes. 
 
 Economy v. Lamprey, 65 Fed. 1000; 13 C. C. A. 271 787 
 
 Affg. 62 Fed. 590. 
 
 Finst; Colt, Putnam, Nelson. Per Curiam. 
 
 Eddy V. Dennis, 95 U. S. 560; 24 L. Ed. 363 635 
 
 Hunt. 
 
 Edison v. American, 114 Fed. 926; 52 C. C. A. 546 87, 640, 823 
 
 Revg. 110 P^ed. 660, 664. 
 Second; Wallace, Lacombe, Townsend. 
 
 Edison v. Grouse, 152 Fed. 437; 81 C. C. A. 579 225, 903 
 
 Revg. 146 Fed. 539. 
 Second; Lacombe, Townsend, Coxe. 
 
 Edison v. Electric, 66 Fed. 309; 13 C. C. A. 487 89 
 
 Affg. 60 Fed. 401. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Edison v. Mt. Morris, 58 Fed. 572; 7 C. C. A. 375 565, 573 
 
 Modifying as to injunction order, 57 Fed. 642. 
 See 47 Fed. 454; 52 Fed. 300. 
 Second; Wallace, Shipman. 
 
 Edison V. Novelty, 167 Fed. 977; 93 C. C. A. 387 App. 602, 631 
 
 Revg. 161 Fed. 549. 
 Third; Dallas, Gray, Archbald. 
 
 Edison r. Peninsular, 101 Fed. 831; 43 C. C. A. 479 477, 756 
 
 Affg. 0.") Fed. 669. 
 
 . Sixth; LuRTON, Day, Clark.
 
 CASES EXCERPTED, WITH ANNOTATIONS xlv 
 
 [References are to sections. " App." refers to Appendix] 
 
 Edison v. Sawyer-Man, 53 Fed. 592; 3 C. C. A. 605. ... . .381, 573, 579, 729 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 Edison v. United States, 52 Fed. 300; 3 C. C. A. 83. . . .23, 230, 421, 635, 
 
 Affg. 47 Fed. 454. 697, 742, 914 
 
 Second; Lacombe, Shipman. 
 
 Edison v. United States, 59 Fed. 501; 8 C. C. A. 200 573 
 
 See 52 Fed. 300. 
 
 Second; Lacombe, Shipman. Per Curiam. 
 
 Egbert v. Lippmann, 104 U. S. 333; 26 L. Ed. 755 854, 856 
 
 Woods. Dissenting opinion Miller. 
 
 Eldred v. Kirkland, 130 Fed. 342; 64 C. C. A. 588 633, 647 
 
 See 106 Fed. 509. 
 
 Second; Wallace, Lacombe, Coxe. 
 
 Electric Accumulator v. Brush, 52 Fed. 130; 2 C. C. A. 682 9, 17, 19, 
 
 84, 105, 222, 344, 358, 361, 812 
 Modfg. and affg. 47 Fed. 48; see same pat. 38 Fed. 117; 41 Fed. 679. 
 Second; Lacombe, Shipman. 
 Electric Controller v. Westinghouse, 171 Fed. 83; 96 C. C. A. 187 
 
 ....App. 621, 673, 812 
 Sixth; Lurton, Warrington, Knappen. 
 Electric Gas Lighting v. Boston, 139 U. S. 481; 35 L. Ed. 250; 11 S. Ct. 586 
 
 ....12, 203, 871, 876, 885, 889 
 Affg. 29 Fed. 455; approving 21 Fed. 568, and 23 Fed. 195. 
 
 Electric Gas Lighting v. Fuller, 59 Fed. 1003- 8 C. C. A. 442 502 
 
 Affg. 55 Fed. 64. 
 
 First; Colt, Putnam, Nelson. 
 Electric Mfg. Co. v. Edison, 61 Fed. 834; 10 C. C. A. 106. . . .29, 77, 544, 
 
 561, 570 
 Affg. 57 Fed. 616. 
 
 Seventh; Woods, Jenkins, Bunn. 
 Electric Protection v. American, 184 Fed. 916; 107 C. C. A. 238. . .App. 68, 
 117, 118, 202, 212, 374, 376, 456, 459, 503, 608 
 Revg. in part 181 Fed. 350. 
 
 Eighth; Sanborn, Van Devanter, Reed; dissenting, Sanborn. 
 Electric Signal v. Hall, 114 U. S. 87; 29 L. Ed. 96; 5 S. Ct. 1069. .503, 612 
 
 Matthews. 
 Electric Smelting v. Carborundum, 102 Fed. 618; 42 C. C. A. 537. . . .223, 
 Revg. 83 Fed. 492. 584, 914 
 
 Third; Dallas, Gray, Bradford. 
 Electric Smelting v. Pittsburg, 125 Fed. 926; 60 C. C. A. 636. . . . 197, 441, 
 
 782, 905 
 Affg. in part 111 Fed. 742. 
 
 Second; Wallace, Lacombe, Coxe. 
 
 Electric Storage v. Gould, 158 Fed. 610; 85 C. C. A. 432 226 
 
 Affg. 148 Fed. 695. 
 
 Second; Lacombe, Townsend, Coxe, Per Curiam. 
 
 Elgin V. Creamery, 80 Fed. 293; 25 C. C. A. 426 363, 385 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Elgin V. Nichols, 65 Fed. 215; 12 C. C. A. 578 722, 764 
 
 Seventh; Harlan, Woods, Bunn. 
 
 Elgin V. Nichols, 105 Fed. 780; 45 C. C. A. 49 298, 299 
 
 Seventh; Woods, Grosscup, Bunn. 
 
 EUte V. Dececo, 150 Fed. 581 ; 80 C. C. A. 567 546 
 
 Third; Gray, Buffington.
 
 xlvi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Elizabeth v. American, 97 U. S. 126; 24 L. Ed. 1000 3, 6, 7, 83, 296, 
 
 413, 414, 669, 833, 837, 838, 842, 847, 851, 853 
 Bradley. 
 Elliott V. Youngstown, 181 Fed. 345; 104 C. C. A. 175. . . . . .App. 441, 
 
 584, 616, 620, 631 
 Revg. 173 Fed. 315. 
 Third; Buffington, Lanning, Archbald. 
 
 Emerson v. Nimocks, 99 Fed. 737; 40 C. C. A. 87 691, 912 
 
 Revg. 88 Fed. 280. 
 Fourth; Goff, Morris, Waddill. 
 
 Empire Circuit v. Cliannon, 168 Fed. 705; 94 C. C. A. 211 App. 228 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Empire Cream Separator v. Sears, 160 Fed. 668; 87 C. C. A. 556 487 
 
 Modfg. 157 Fed. 238. 
 Second; Lacombe, Coxe, Noyes. 
 
 Empire State Nail v. American, 74 Fed. 864; 21 C. C. A. 152 894 
 
 Revg. 71 Fed. 588. 
 First; Putnam, Nelson. 
 
 Empire Target v. Cleveland, 102 Fed. 354; 42 C. C. A. 393. . . ; 77 
 
 Revg. in part 97 Fed. 44. 
 Third; Acheson, Dallas, McPherson. 
 
 Eppler V. Campbell, 86 Fed. 141; 29 C. C. A. 616 90, 207, 490 
 
 Revg. 83 Fed. 208. 
 First; Putnam, Aldrich, Lowell. 
 
 Erie v. American, 70 Fed. 58; 16 C. C. A. 632 195, 207, 374, 468 
 
 Revg. 66 Fed. 558. 
 Third; Acheson, Dallas, Wales. 
 
 Ertel V. Stahl, 65 Fed. 517; 13 C. C. A. 29 567 
 
 Revg. 62 Fed. 920. 
 Seventh; Woods, Jenkins, Baker. 
 
 Ertel V. Stahl, 65 Fed. 519; 13 C. C. A. 31 563, 572 
 
 Seventh; Woods, Jenkins, Baker. 
 
 Estey V. Burdett, 109 U. S. 633; 27 L. Ed. 1058; 3 S. Ct. 531 601 
 
 Blatchford. 
 
 Eunson v. Dodge, 85 U. S. 414; 21 L. Ed. 766 311, 418, 484 
 
 Hunt. 
 
 Eureka v. Bailey, 78 U. S. 488; 20 L. Ed. 209 310, 484, 795 
 
 Miller. 
 
 Evans v. Eaton, 3 Wheat. 454; 4 L. Ed. 433 58, 440, 441, 908, 918 
 
 See S. C. 7 Wheat. 356. 
 Marshall. 
 
 Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 472 197, 204, 411, 440, 506, 
 
 See S. C. 3 Wheat. 454; affg. 3 Wash. 443. 600, 915 
 
 Story. Dissenting opinion Livingston. Johnson and Duvall also 
 dissenting. 
 
 Evans v. Hittich, 7 Wheat. 453; 5 L. Ed. 496 393, 395 
 
 See Evans v. Eaton, 7 Wheat. 356. 
 Affg. 3 Wash. 408. 
 Story. 
 
 Evans v. Rood, 99 Fed. 990; 40 C. C. A. 209 105 
 
 Revg. 92 Fed. 371. 
 
 Third; Acheson, Gray, Kirkpatrick. 
 
 Evans v. Suess, 83 Fed. 706; 28 C. C. A. 24 Ill 
 
 Affg. 81 Fed. 198. 
 Seventh; Woods, Jenkins, She waiter.
 
 CASES EXCERPTED, WITH ANNOTATIONS xlvii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Evans v. Suess, 86 Fed. 779; 30 C. C. A. 367 685 
 
 Affg. 83 Fed. 706. 
 
 Seventh; Woods, Jenkins, Showalter. Dissenting Showalter. 
 
 Excelsior Elevator v. Foote, 79 Fed. 442; 24 C. C. A. 673 659 
 
 Affg. 74 Fed. 792. 
 
 Second; Lacombe, Shipman. 
 Excelsior Needle v. Morse-Keefer, 101 Fed. 448; 41 C. C. A. 448. .227, 701 
 Affg. 97 Fed. 627. 
 
 Second; Wallace, Lacombe, Shipman. 
 Excelsior Supply v. Weed Chain, 192 Fed. 35; 113 C. C. A. 1. . .App. 691, 
 Alodfg. and affg. 179 Fed. 2-32; see 192 Fed. 41. 698 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 
 Excelsior Wood Pipe v. Allen, 104 Fed. 553; 44 C. C. A. 30 769 
 
 Ninth; Gilbert, Ross, Hawley. 
 Excelsior Wood Pipe v. Pacific, 185 U. S. 282; 46 L. Ed. 910; 22 S. Ct. 681 
 
 ....714,718,722 
 See 109 Fed. 497. 
 Brown. 
 Excelsior Wood Pipe v. Seattle, 117 Fed. 140; 55 C. C. A. 156. . . . 134, 765, 
 
 798, 807 
 Ninth; Gilbert, Ross, Hawlev. 
 
 Expanded v. Board, 111 Fed. 395; 49 C. C. A. 406 212 
 
 Affg. 103 Fed. 287. 
 
 Eighth; Sanborn, Thayer, Lochren. 
 Expanded v. Bradford, 214 U. S. 366; 53 L. Ed. 1034; 29 S. Ct. 652 
 
 ....App. 426, 608, 631, 817,819 
 Revg. 146 Fed. 984, making good 136 Fed. 870; affg. 164 Fed 849, and 
 thus revg. 157 Fed. 564. 
 Day. 
 
 Expanded v. General, 164 Fed. 849; 90 C. C. A. 611 817 
 
 Affd. 214 U. S. 366; revg. 157 Fed. 564; see 146 Fed. 984. 
 Sixth; Lurton, Severens, Richards. 
 
 Fairbanks v. Sticknev. 123 Fed. 79; 59 C. C. A. 209 274, 608, 630 
 
 Revg. 115 Fed. 720. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Falk V. Missouri, 103 Fed. 295; 43 C. C. A. 240 635 
 
 Affg. 91 Fed. 155. 
 
 Eighth; Caldwell, Thayer, Rogers. 
 
 Faries v. Brown, 102 Fed. 508; 42 C. C. A. 483 326 
 
 Seventh; Woods, Grosscup, Seaman. Per Curiam. 
 
 Faries v. Brown. 121 Fed. 547; 57 C. C. A. 609 635 
 
 See 102 Fed. 508. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Farmer's i-. Challenge, 128 U. S. 506; 32 L. Ed. 529; 9 S. Ct. 146 871 
 
 Affg. 23 Fed. 42. 
 Gr.\y. 
 Farmer's v. Spruks, 127 Fed. 691; 62 C. C. A. 447. . . .78, 506, 635, 673, 
 Revg. 1 19 Fed. 594. 692, 693, 699 
 
 Fourth; Goff, Simonton, Brawley. 
 
 Farquhar v. National, 102 Fed. 714; 42 C. C. A. 600 924 
 
 Revg. 99 Fed. 160. 
 Third; Acheson, Dallas, Bradford. 
 
 Fassett v. Ewart, 62 Fed. 404; 10 C. C. A. 441 356, 383 
 
 Affg. 58 Fed. 360. 
 
 Seventh; Jenkins, Baker.
 
 xlviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [References are to sections. " App." refers to Appendix] 
 
 Faulkner v. Empire, 67 Fed. 913; 15 C. C. A. 69 166 
 
 Affg. 55 Fed. 819. 
 
 Second; Wallace, Lacombe, Shipman. 
 Fay V. Cordesman, 109 U. S. 408; 27 L. Ed. 979; 3 S. Ct. 236 187, 466 
 
 Fay V. Mason, 127 Fed. 325; 62 C. C. A. 159 398, 628 
 
 Revg. 120 Fed. 506. 
 
 Second; Lacombe, Townsend. 
 
 Featherstone v. Bidwell, 57 Fed. 631; 6 C. C. A. 487 871, 885 
 
 Revg. 53 Fed. 113. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Fellows V. Borden's, 187 Fed. 1005; 109 C. C. A. 535 App. 340, 790 
 
 Affg. 180 Fed. 421. 
 
 Second; Coxe, Ward, Noyes, Per Curiam. 
 
 Ferguson v. Roos, 71 Fed. 416; 18 C. C. A. 162 503, 600 
 
 Seventh; Woods, Jenkins, Showalter. 
 Ferry-Hallock v. Herman, 178 Fed. 550; 101 C. C. A. 230. . . .App. 118, 566 
 Revg. 171 Fed. 437; see 129 Fed. 389. 
 Second; Coxe, Ward, Holt. 
 
 Fidelity v. Expanded, 183 Fed. 568; 106 C. C. A. 114 App. 273 
 
 Affg. 177 Fed. 604. 
 
 Third; Buffington, Lanning, Cross. 
 
 Fielding v. Crouse, 154 Fed. 377; 83 C. C. A. 331 623 
 
 Second; Wallace, Lacombe, Townsend. Per Curiam. 
 
 Fisher v. American, 71 Fed. 523; 18 C. C. A. 235 671 
 
 Affg. 69 Fed. 331. 
 Second; Wallace, Lacombe, Shipman. 
 Florsheim v. Schilling, 137 U. S. 64; 34 L. Ed. 574; 11 S. Ct. 20. . . .591, 
 
 609, 624, 696 
 Affg. 26 Fed. 256. 
 Lamar. 
 
 Flower v. Detroit, 127 U. S. 563; 32 L. Ed. 175; 8 S. Ct. 1291 888 
 
 Affg. 22 Fed. 292. 
 Blatchford. 
 Fond Du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 11 S. Ct. 98. . . .612, 
 
 617, 669, 684, 734 
 Revg. 27 Fed. 691. 
 Blatchford. 
 
 Foos V. Springfield. 49 Fed. 641; 1 C. C. A. 410 49 
 
 Affg. 44 Fed. 595. 
 Sixth; Brown, Jackson. 
 
 Force v. Sawver-Bo.ss, 143 Fed. 894; 75 C. C. A. 102 288, 843, 845 
 
 See 131 Fed. 884. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Ford V. Bancroft, 98 Fed. 309; 39 C. C. A. 91 497 
 
 Affg. 85 Fed. 457. 
 
 First; Colt, Webb, Aldrich. 
 
 Ford ?'. Tannage, 84 Fed. 644; 28 C. C. A. 503 518, 561 
 
 Seo .same patent 70 Fed. 1003; 77 Fed. 191; 81 Fed. 178. 
 Tliird; Ache.son, Butler, Kiukp.\trick. 
 
 Forest C'ity v. Barnard, 176 Fed. 561; 100 C. C. A. 197 App. 598 
 
 Sixth; Tyurton, Severens, Warrington. 
 
 Forgie v. Oil Well, .58 Fed. 871 ; 7 C. C. A. 551 392, 409, 638, 682, 684 
 
 Affg. 57 Fed. 742. 
 Third; Dallas, Butler, Green.
 
 CASES EXCERPTED, WITH ANNOTATIONS xlix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Fomcrook v. Root, 127 U. S. 176; 32 L. Ed. 97; 8 S. Ct. 1247. . . .217, 468 
 Affg. 21 Fed. 328. 
 Blatchford. 
 
 Forsyth v. Garlock, 142 Fed. 461; 73 C. C. A. 577 390, 410 
 
 First; Colt, Putnam, Aldrich. 
 
 Foster v. Taylor, 191 Fed. 1003; 111 C. C. A. 667 App. 755 
 
 Affg. 189 Fed. 407. 
 Second; Lacombe, Ward, Noyes, Per Curiam. 
 
 Foster v. Taylor, 184 Fed. 71; 106 C. C. A. 467 App. 775 
 
 Affg. 180 Fed. 994. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Fowler v. City of N. Y. 121 Fed. 747; 58 C. C. A. 113 327, 698 
 
 Affg. 110 Fed. 749. 
 
 Second; Wallace, Coxe. 
 
 Fowler v. National, 172 Fed. 661; 97 C. C. A. 187 App. 223 
 
 Third; Gray, Lanning, Young. 
 
 Fox V. Knickerbocker, 165 Fed. 442; 91 C. C. A. 386 283, 322 
 
 Affg. 158 Fed. 422. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Fox V. Perkins, 52 Fed. 205; 3 C. C. A. 32 198, 214, 216, 440, 636, 886 
 
 Sixth; Brown, Jackson, Taft. 
 
 Frank v. Barnard, 185 Fed. 810; 108 C. C. A. 42 App. 137 
 
 See 185 Fed. 812. 
 
 Second; Coxe, Ward, Noyes. 
 
 Franklin v. Illinois, 138 Fed. 58; 70 C. C. A. 484 880 
 
 AfTg. 128 Fed. 48. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Frasch v. Moore, 211 U. S. 1; 53 L. Ed. 65; 29 S. Ct. 6 143 
 
 Affg. 27 App. D. C. 25. 
 
 Fuller; dissenting. White, McKenna. 
 
 Frazer v. Gates, 85 Fed. 441 ; 29 C. C. A. 261 229, 592, 593 
 
 Revg. 79 Fed. 75. 
 
 See same subject 153 U. S. 332; 78 Fed. 350. 
 Seventh; Woods, Jenkins, Bunn. 
 
 Freeman v. Asmus, 145 U. S. 226; 36 L. Ed. 685; 12 S. Ct. 821 871 
 
 Revg. 27 Fed. 684. 
 Blatchford. 
 Freeman Co. v. Gen. Electric, 191 Fed. 168; 111 C. C. A. 646. . . .App. 189, 
 Affg. 190 Fed. 34. 608 
 
 Third; Gray, Buffington, Lanning. 
 
 Fresno v. Fruit, 101 Fed. 826; 42 C. C. A. 43 927 
 
 Modifying 94 Fed. 845. 
 
 Ninth; Gilbert, Hawley, DeHaven. 
 
 Frick V. Geiser, 100 Fed. 94; 40 C. C. A. 291 162 
 
 Revg. 92 Fed. 189. 
 
 Third; Acheson, Gray, Kirkpatrick. 
 
 Frost V. Cohn, 119 Fed. 505; 56 C. C. A. 185 108, 656, 697 
 
 Affg. 112 Fed. 1009. 
 
 Second; Wallace, Townsend. 
 
 Frost V. Samstag, 180 Fed. 739; 105 C. C. A. 37 App. 697 
 
 Revg. 173 Fed. 793. 
 
 Second; Ward, Noyes, Hand. 
 
 Fry V. Rookwood, 101 Fed. 723; 41 C. C. A. 634 616 
 
 Affg. 90 Fed. 494. 
 
 Sixth; LuRTON, Day, Severens.
 
 1 CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 FuUer v. Berger, 120 Fed. 274; 56 C. C. A. 588 645, 747 
 
 Seventh; Jenkins, Grosscup, Baker. Dissenting Grosscup. 
 
 FuUer v. Yentzer, 94 U. S. 288; 24 L. Ed. 103 223, 472, 473, 683, 771 
 
 Clifford. Dissenting Strong, Waite, Miller, Bradley. 
 
 Fuller V. Yentzer, 94 U. S. 299; 24 L. Ed. 107 440, 468, 607 
 
 Clifford. Dissenting Waite, Strong, Miller, Bradley. 
 
 Fuller-Warren v. Michigan, 86 Fed. 463; 30 C. C. A. 193 590 
 
 Revg. 81 Fed. 376. 
 
 Seventh; Woods, Jenkins, Showalter. 
 Fullerton v. Anderson-Barngrover, 166 Fed. 443; 92 C. C. A. 295. .836, 842 
 
 Ninth; Gilbert, Ross, Morrow; dissenting, Ross. 
 Gage V. Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. . . .202, 340, 
 Gray. 466, 499, 872, 889 
 
 Gait V. Parlin, 60 Fed. 417; 9 C. C. A. 49 672 
 
 Affg. 52 Fed. 749. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Galvin v. City, 115 Fed. 511; 53 C. C. A. 165 599, 699 
 
 Sixth; Lurton, Day, Cochran. 
 
 Gamewell, In re, 73 Fed. 908; 20 C. C. A. Ill . . 128, 805 
 
 Petition for supplemental bill in review of 52 Fed. 464; 61 Fed. 948. 
 First; Putnam, Nelson, Webb. 
 
 Gamewell v. Municipal, 61 Fed. 208; 9 C. C. A. 450 Ill, 544, 550 
 
 Explaining Richmond v. Atwood, 52 Fed. 10; see Lockwood v. Wicks, 
 75 Fed. 118. 
 First; Putnam, Nelson, Webb. Per Curiam. 
 
 Gamewell v. Municipal, 61 Fed. 949; 10 C. C. A. 184 61, 355, 618 
 
 Affg. 52 Fed. 464. 
 First; Putnam, Nelson, Webb. Dissenting on second patent, 
 Putnam. 
 
 Gamewell v. Municipal, 77 Fed. 490; 23 C. C. A. 250 273, 274, 410 
 
 See s. c. 52 Fed. 464; 61 Fed. 208. 
 First; Putnam, Nelson, Webb. 
 
 Gandy v. Main, 143 U. S. 587; 36 L. Ed. 272; 12 S. Ct. 598 59, 104, 
 
 Revg. 28 Fed. 570. 487, 629, 634, 668 
 Brown. 
 Gandy v. Marble, 122 U. S. 432; 30 L. Ed. 1223; 7 S. Ct. 1290 13 
 
 Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158; 6 S. Ct. 1027. . . .322, 636, 
 Affg. 20 Blatchf. 538. 667, 672, 675, 871 
 
 Blatchford. 
 
 Garratt v. Seibert, 131 U. S. cxxvi App.; 21 L. Ed. 956 473 
 
 Strong. 
 
 Garratt v. Seibert, 98 U. S. 75; 25 L. Ed. 84 315, 411, 629, 895 
 
 See Garratt v. Seibert, 21 L. Ed. 956. 
 Strong. 
 
 Garretson v. Clark, 111 U. S. 120; 28 L. Ed. 371; 4 S. Ct. 291 845 
 
 Affg. 15 Blatchf. 70. 
 Field. 
 
 Gaskill V. Myers, 81 Fed. 854; 26 C. C. A. 642 337, 873 
 
 Ninth; Gilbert, Ross, Hawley. Dissenting Gilbert. 
 
 Gates V. Frascr, 153 U. S. 332; 38 L. Ed. 734; 14 S. Ct. 883 463 
 
 Affg. 42 Fed. 49. 
 Shiras. 
 
 Gates V. Eraser, 55 Fed. 409; 5 C. C. A. 154 216 
 
 Seventh; Woods, Jenkins, Bunn.
 
 CASES EXCERPTED, WITH ANNOTATIONS li 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Gates V. Overland, 147 Fed. 700; 78 C. C. A. 88 658 
 
 See Gates v. Fraser, 153 U. S. 332; Birmingham v. Gates, 78 Fed. 350. 
 Eighth; Sanborn, Van Devanter, Philips. 
 
 Gay V. Camp, 68 Fed. 67; 15 C. C. A. 226 836 
 
 Rehearing of 65 Fed. 794. 
 Fourth; Fuller, Goff, Simonton. 
 Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504.... 61, 85, 151, 152, 164, 
 
 169, 175, 590, 765, 926, 934 
 Taney; dissenting McLean, Daniel, Grier. 
 Gen. Electric v. Allis-Chalmers, 194 Fed. 413; 114 C. C. A. 375. . .App. 133 
 See 190 Fed. 145; 194 Fed. 414. 
 
 Third; Gray, Buffington, Lanning, Per Curiam. 
 Gen. Electric v. Allis-Chalmers, 178 Fed. 273; 101 C. C. A. 537. . .App. 491 
 Affg. 171 Fed. 666. 
 Third; Graj', Buffington, Lanning. 
 
 Gen. Electric v. Bullock, 152 Fed. 427; 81 C. C. A. 569 673, 919 
 
 Revg. 146 Fed. 552. 
 Sixth; Lurton, Severens, Richards. 
 
 Gen. Electric v. Corliss, 160 Fed. 672; 87 C. C. A. 560 86 
 
 Revg. 154 Fed. 671. 
 Second; Lacombe, Coxe, Noyes. 
 Gen. Electric v. Hartman, 187 Fed. 131; 109 C. C. A. 49. . . .App. 635, 693 
 
 First; Colt, Putnam, Aldrich. 
 Gen. Electric v. Hill-Wright, 174 Fed. 996; 98 C. C. A. 566. . .App. 457, 632 
 Revg. 170 Fed. 189; see 137 Fed. 600. 
 Second; Lacombe, Coxe, Noyes; dissenting. Notes. 
 
 Gen. Electric v. International, 126 Fed. 755; 61 C. C. A. 329 223, 937 
 
 Sixth; Lurton, Severens, Rich.ards. 
 Gen. Electric v. Morgan-Gardner, 168 Fed. 52; 93 C. C. A. 474. . . .App. 
 
 386, 780 
 Revg. 159 Fed. 951. 
 Seventh; Grosscup, Baker, Seaman. 
 Gen. Electric v. New England, 128 Fed. 738; 63 C. C. A. 448. . . .548, 800 
 Revg. 123 Fed. 310. 
 Second; Lacombe, Townsend, Coxe. 
 Gen. Electric v. Richmond, 178 Fed. 84; 102 C. C. A. 138. . . .App. 871, 
 
 880, 884, 887 
 Seventh; Grosscup, Baker, Kohlsaat. 
 Gen. Electric v. Sangamo, 174 Fed. 246; 98 C. C. A. 154. . . .App. 430, 585 
 Seventh; Grosscup, Baker, Anderson. 
 
 Gen. Electric v. Wagner, 130 Fed. 772; 66 C. C. A. 82 631 
 
 Affg. 123 Fed. 101. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Gen. Electric v. Webster, 113 Fed. 756; 51 C. C. A. 446 195, 229 
 
 First; Colt, Putnam, Aldrich. 
 
 Gen. Electric v. Winona, 183 Fed. 418; 105 C. C. A. 652 App. 628, 744 
 
 Seventh; Baker, Seaal^n, Kohlsaat. 
 
 Gen. Electric v. Winona, 188 Fed. 77; 110 C. C. A. 147 App. 654 
 
 Seventh; Grosscup, Kohlsaat, Carpenter. 
 
 Gen. Electric v. Yost, 139 Fed. 568; 71 C. C. A. 552 427, 658 
 
 Affg. 131 Fed. 874. 
 
 Second; Wallace, Townsend, Coxe. 
 
 Gen. Fire Extinguisher v. Mailers, 110 Fed. 529; 49 C. C. A. 138 223 
 
 Affg. 110 Fed. 528. 
 
 Seventh; Woods, Jenkins, Grosscup.
 
 lii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sectionB. " App." refers to Appendix ] 
 
 Gen. Knit Fabric v. Steber, 194 Fed. 99; 114 C, C. A. 177. .App. 87, 494, 634 
 See 190 Fed. 47. 
 
 Second; Lacorabe, CoxE, Ward. 
 
 Gerard v. Diebold, 54 Fed. 889; 4 C. C. A. 644 ' 195 
 
 Affg. 48 Fed. 380; re-affirmed Ql Fed. 209. 
 Fifth; McCormick, Locke, Billings. 
 
 Gerard v. Diebold, 61 Fed. 209; 9 C. C. A. 451 247 598 
 
 Affg. 48 Fed. 380; 54 Fed. 889.. 
 Fifth; McCormick, Locke. 
 
 Germain v. Wilgus, 67 Fed. 597; 14 C. C. A. 561 567, 718, 720, 801 
 
 Ninth; Gilbert, Knowles, Bellinger. 
 
 Germer v. Art, 150 Fed. 141; 80 C. C. A. 9 49, 904 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Gibbon v. Loewer, 79 Fed. 325; 24 C. C. A. 612 599, 662 
 
 Revg. 74 Fed. 555; 55 Fed. 62. 
 Third; Acheson, Butler, Wales. 
 Gill V. United States, 160 U. S. 426; 40 L. Ed. 488; 16 S. Ct. 322. . . 366, 
 Affg. 25 Ct. CI. 415. 387, 429 
 
 Brown, 
 Gill V. Wells, 89 U. S. 1; 22 L. Ed. 699. . . .374, 377, 468, 604, 605, 612, 
 Clifford. 674, 888, 889 
 
 Gillette v. Sendelbach, 146 Fed. 758; 77 C. C. A. 55 25 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 
 Gimbel v. Hogg, 97 Fed. 791; 38 C. C. A. 419 336 
 
 Revg. 94 Fed. 518. 
 
 Third; Acheson, Dallas, Gray. 
 
 Glendale v. Smith, 100 U. S. 110; 25 L. Ed. 547 141 
 
 Waite. 
 
 Globe- Wernicke v. Brown, 121 Fed. 90; 57 C. C. A. 344 721 
 
 Seventh; Jenkins, Baker, Seaman. 
 Globe- Wernicke v. Macey, 119 Fed. 696; 56 C. C. A. 304. .43, 508, 636, 929 
 Sixth; Lurton, Day, Severens. 
 
 Godfrey v. Fames, 68 U. S. 317; 17 L. Ed. 684 5, 902 
 
 SwAYNE. Dissenting, Clifford. 
 
 Gold V. Gold, 187 Fed. 273; 109 C. C. A. 615 App. 25, 277, 358 
 
 Affg. 181 Fed. 544. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Good Form v. White, 160 Fed. 661 . 1 630 631 
 
 Revg. 153 Fed. 759. 
 Second; Coxe, Ward, Noyes. Per Curiam. 
 
 Goodyear v. Dancel, 119 Fed. 692; 56 Fed. 300 App. 897 
 
 Revg. 106 Fed. 551; 109 Fed. 336. 
 Second; Wallace, Townsend, Coxe. 
 Goodyear v. Davis, 102 U. S. 222; 26 L. Ed. 149. . . .208, 378, 520, 821, 870 
 See Smith v. Goodyear, 93 U. S. 486. 
 Strong. 
 
 Goodyear v. Jackson, 112 Fed. 146; 50 C. C. A. 159 477, 523, 524 
 
 First; Colt, Putnam, Webb. 
 Goodyear v. Rubber, 116 Fed. 363; 53 C. C. A. 583. . . .49, 195, 597, 598, 
 
 , 623, 908 
 Revd. as to validity of pat. 220 U. S. 428. 
 Sixth; Lurton, Day, Severens. 
 
 Goodyear v. Spaulding, 110 Fed. 393; 49 C. C. A. 88 224, 487 
 
 Affg. 101 Fed. 990. 
 
 First; Colt, Putnam, Webb.
 
 CASES EXCERPTED, WITH ANNOTATIONS HH 
 
 [ References are to sections. " App " refers to Appendix ] 
 
 Gordon v. Warder, 150 U. S. 47; 37 L. Ed. 992; 14 S. Ct. 32 96,217, 
 
 Affg. 38 Fed. 592. 484, 532 
 
 Shiras. 
 
 Gorham v. White, 81 U. S. 511; 20 L. Ed. 731 329, 331, 335 
 
 Modified 148 U. S. 511. 
 Strong, Dissenting Miller, Field, Bradley. 
 
 Gormully v. Western, 84 Fed. 968; 28 C. C. A. 586 652 
 
 Seventh; Woods, Jenkins, Bunn. 
 Gormley & Jeffery v. U. S. Agency, 177 Fed. 691; 101 C. C. A. 479 
 
 Affg. 169 Fed. 831. ... .App. 253 
 
 Second; Lacombe, Coxe, Noyes, Per Curiam. 
 Goshen v. Bissell, 72 Fed. 67; 19 C. C. A. 13. . . .188, 247, 426, 427, 432, 
 
 486, 545, 679 
 Sixth; Taft, Lurton, Hammond. 
 
 Goshen v. Single Tube, 166 Fed. 431; 92 C. C. A. 183 513, 755 
 
 See 142 Fed. 531; 157 Fed. 678. 
 Seventh; Baker, Seaman, Sanborn. 
 Gosling V. Roberts, 106 U. S. 39; 27 L. Ed. 61; 1 S. Ct. 26 230, 871 
 
 Goss V. Scott, 108 Fed. 253; 47 C. C. A. 302. . . .45, 67, 156, 634, 635, 926 
 Revg. 103 Fed. 650; see 89 Fed. 818. 
 Third; Dallas, Grav, Buffington. 
 
 Goss V. Scott, 110 Fed. 402; 49 C. C. A. 97 85, 135 
 
 On rehearing affg. 108 Fed. 253. 
 Third; Dallas, Gray, Buffington. 
 
 Gottfried v. Miller, 104 U. S. 521; 26 L. Ed. 851 156, 159, 761 
 
 Woods. 
 
 Gould V. Cincinnati, 194 Fed. 680; — C. C. A. — App. 615, 636 
 
 Affg. 194 Fed. 681. 
 
 Sixth; Warrington, Knappen, Denison. 
 
 Gould V. Sessions, 67 Fed. 163; 14 C. C. A. 366 537, 578 
 
 See 49 Fed. 855; 63 Fed. 1001; 60 Fed. 753. 
 Second; Wallace, Shipman, Brown. 
 
 Gould V. Trojan, 74 Fed. 794; 21 C. C. A. 97 230 
 
 Reversing 70 Fed. 622. 
 
 Second; Wallace, Lacombe, Shipman. 
 Gould Storage Battery v. Electric, 192 Fed. 28; 112 C. C. A. 416. . . .App. 
 
 151, 164, 680 
 Affg. 192 Fed. 29. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Goulds V. Cowing, 105 U. S. 253; 26 L. Ed. 987 290, 298, 438 
 
 Waite. 
 
 Graham v. Earl, 92 Fed. 155; 34 C. C. A. 267 344, 406, 481 
 
 Ninth; Gilbert, Hawley, DeHaven. 
 
 Grant v. Raymond, 6 Pet. 218; 8 L. Ed. 376 312, 889 
 
 Marshall. 
 
 Grant v. Walter, 148 U. S. 547; 37 L. Ed. 552; 13 S. Ct. 699 244, 344, 
 
 Affg. 38 Fed. 594. 616, 636, 903 
 
 Jackson. 
 
 Gray v. Grinberg, 159 Fed. 138; 86 C. C. A. 328 331, 494, 721 
 
 Affg. 147 Fed. 732. 
 Third; Dallas, Buffington, Cross. 
 
 Gray Tel. v. Baird, 174 Fed. 417; 98 C. C. A. 353 App. 97, 682 
 
 Revg. as to pat. 593,720; affg. as to pat. 598,610. 
 Seventh; Grosscup, Baker, Kohls aat.
 
 liv CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Green v. American, 78 Fed. 119; 24 C. C. A. 41 608 
 
 Revg. 75 Fed. 680; see 69 Fed. 333. 
 Third; Dallas, Butler, Wales. 
 
 Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70 72, 201, 207, 398, 432, 
 
 469, 507 
 Revg. 120 Fed. 952, 955. 
 Second; Wallace, Lacombe, Townsend. 
 
 Greene v. United, 124 Fed. 961; 60 C. C. A. 93 124, 890 
 
 First; Putnam, Aldrich, Brown. 
 
 Greene v. United, 132 Fed. 973; 66 C. C. A. 43 216 
 
 Revg. 115 Fed. 155. 
 First; Putnam, Aldrich, Brown. 
 Greenwald v. Enochs, 183 Fed. 583; 106 C. C. A. 351. . . .App. 389, 614, 631 
 Revg. 180 Fed. 478. 
 
 Third; Buffington, Lanning, Cross. 
 
 Greenwood v. Dover, 194 Fed. 91; 114 C. C. A. 169 App. 25 
 
 Revg. 177 Fed. 946; see 23 App. D. C. 251. 
 First; Colt, Putnam, Aldrich. 
 
 Greist v. Parsons, 125 Fed. 116; 60 C. C. A. 34 672 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Grier v. Wilt, 120 U. S. 412; 30 L. Ed. 712; 7 S. Ct. 718. . . .224, 380, 390, 
 
 485, 491, 502 
 Revg. 5 Fed. 450. 
 Blatchford. 
 
 Grimes v. Allen, 102 Fed. 606; 42 C. C. A. 559 443 
 
 Affg. 89 Fed. 869. 
 
 Seventh; Woods, Jenkins, Grosscup. 
 Griswold v. Marker, 62 Fed. 389; 10 C. C. A. 435. . . .213, 487, 517, 608, 624 
 Revg. 55 Fed. 991. See same pat. held void 68 Fed. 494. 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Griswold v. Wagner, 68 Fed. 494; 15 C. C. A. 525 616 
 
 Affg. 65 Fed. 513; distinguishing Griswold v. Marker, 62 Fed. 389. 
 Sixth; Taft, Lurton, Severens. 
 
 Groth V. International, 61 Fed. 284; 9 C. C. A. 507 201, 222 
 
 Revg. 57 Fed. 658. 
 Second; Wallace, Lacombe, Shipman. 
 
 Grove, In re, 180 Fed. 62; 103 C. C. A. 416 App. Ill, 136, 137, 536, 
 
 538, 577 
 Revg. 176 Fed. 925. 
 Third; Buffington, Lanning, Bradford. 
 
 Grushlaw v. Phoenix, 183 Fed. 222; 105 C. C. A. 484 App. 543, 554 
 
 Affg. 181 Fed. 166; see 181 Fed. 163. 
 Third; Buffington, Lanning, Cross. 
 
 Guggenheim v. Kirchhofer, 66 Fed. 755; 14 C. C. A. 72 760 
 
 Second; Wallace, Lacombe. 
 
 Guidet V. Brooklyn, 105 U. S. 550; 26 L. Ed. 1106 431, 871 
 
 Waite. 
 
 Gunn V. Bridgeport, 152 Fed. 434; 81 C. C. A. 576 591 
 
 Revg. 148 Fed. 239. 
 Second; Lacombe, Townsend, Coxe. 
 Haberman, In re, 147 U. S. 525; 37 L. Ed. 266; 13 S. Ct. 527. .. . 142, 545 
 Blatchford. 
 
 Haffckc V. Clark, 50 Fed. 531; 1 C. C. A. 570 270, 668, 762 
 
 Revg. 40 Fed. 770. 
 Fourth; Goff, Hughes.
 
 CASES EXCERPTED, WITH ANNOTATIONS Iv 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Hailes v. Albany, 123 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 262. .344, 871, 922 
 Bradley. 
 
 HaUes v. Van Wormer, 87 U. S. 353; 22 L. Ed. 247 212, 249 
 
 Strong. 
 Haines v. McLaughlin, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. . . .207, 
 Fuller. 402, 404, 491, 492, 503, 736, 857 
 
 Hale V. World, 127 Fed. 964; 62 C. C. A. 596 207 
 
 Sixth; Lurton, Severens, Richards. 
 
 Hall V. General, 169 Fed. 290; 94 C. C. A. 580 App. 87, 97, 698, 702 
 
 Affg. 168 Fed. 62. 
 
 Second; Lacombe, Coxe, Xoyes. 
 
 Hall V. General, 153 Fed. 907; 82 C. C. A. 653 552, 563, 567 
 
 Second; Wallace, Lacombe, Coxe. 
 Hall V. MacNeale, 107 U. S. 90; 27 L. Ed. 367; 2 S. Ct. 73. . .415, 854, 858 
 Bl.\tchford. 
 
 Hamilton v. Diamond, 137 Fed. 417; 69 C. C. A. 532 578 
 
 Affg. 130 Fed. 893. 
 
 Third; Acheson, Dallas, Gray. Per Cm-iam. 
 
 Hammond v. Goodyear, 58 Fed. 411; 7 C. C. A. 276 217 
 
 Revg. Hammond v. Hathaway, 48 Fed. 305; 48 Fed. 834. See 32 Fed. 
 791; 38 Fed, 602-604; 41 Fed. 519; 47 Fed. 452. See Hammond 
 V. Weld, 72 Fed. 171. 
 Second; Wallace, Lacombe. 
 
 Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767 152, 753, 800, 931 
 
 Miller. 
 
 Hammond v. Stockton, 70 Fed. 716; 17 C. C. A. 356 334 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Hammond v. Weld, 72 Fed. 171; 18 C. C. A. 502 253 
 
 See Hammond v. Goodyear, 58 Fed. 411; Hammond v. Hathaway, 48 
 Fed. 305. 
 First; Putnam, Nelson, Webb. 
 
 Handy Things v. Tucker, 188 Fed. 68; 110 C. C. A. 138 App. 2 
 
 Seventh; Grosscup, Baker, Seaman. 
 Hanifen v. Godshalk, 84 Fed. 649; 28 C. C. A. 507. . . .85, 398, 850, 903 
 Revg. 78 Fed. 811. 
 Third; Shiras, Acheson, Butler. Dissenting Butler. 
 
 Hanifen v. Lupton, 101 Fed. 462; 41 C. C. A. 462 311 
 
 Revg. 95 Fed. 465. 
 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 Hanifen v. Price, 102 Fed. 509; 42 C. C. A. 484 256 
 
 Revg. 96 Fed. 435; see 78 Fed. 811; 84 Fed. 649. 
 Second; Wallace, Lacombe, Shipman. 
 Hanks v. International, 194 U. S. 303; 48 L. Ed. 989; 24 S. Ct. 700. . ..395 
 Fuller. 
 
 Hanks v. International, 122 Fed. 74; 58 C. C. A. 180 896 
 
 See 194 U. S. 303. 
 
 Hapgood V. Hewitt, 119 U.'s.*226; 30 L. Ed. 369; 7 S. Ct. 193. .. . 271, 
 Affg. 11 Biss. 184. 366, 367, 372, 756 
 
 Bl.\tchford. 
 
 Harder v. United States, 160 Fed. 463; 87 C. C. A. 447 203, 601 
 
 Affg. 149 Fed. 434. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Hardison v. Brinkman, 156 Fed. 962; 87 C. C. A. 8 202, 373, 374, 496 
 
 Ninth; Gilbert, Ross, Hunt.
 
 Ivi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Harper v. Wilgus, 56 Fed. 587; 6 C. C. A. 45 131, 141, 638 
 
 Ninth; McKenna, Gilbert, Hawley. 
 
 Hart V. Anchor, 92 Fed. 657; 34 C. C. A. 606 67, 70, 547, 777, 889 
 
 Revg. 82 Fed. 911. 
 
 First; Colt, Brown, Lowell. 
 Kartell v. Tilghman, 99 U. S. 547; 25 L. Ed. 357 714 
 
 Miller. Dissenting opinion Bradley, Swayne. 
 
 Hartford v. Hollander, 163 Fed. 948; 90 C. C. A. 308 144 
 
 Revg. 158 Fed. 103. 
 
 Second; Coxe, Ward, Noyes, Per Curiam. 
 Hartshorn v. Saginaw, 119 U. S. 664; 30 L. Ed. 539; 7 S. Ct. 421 12, 
 
 Matthews. 309, 871, 885, 889 
 Hartz V. Cleveland, 95 Fed. 681; 37 C. C. A. 227 141, 162, 800 
 
 Sixth; Taft, Lurton, Clark. 
 Hatch V. Electric, 100 Fed. 975; 41 C. C. A. 133. . . .67, 230, 305, 561, 566, 
 
 First; Putnam, Aldrich, Brown. 570, 938 
 
 Haughey v. Lee, 151 U. S. 282; 38 L. Ed. 162; 14 S. Ct. 331 387, 437 
 
 Shiras. 
 
 Hay V. Heath, 71 Fed. 411; 18 C. C. A. 157 593, 594, 610 
 
 Revg. 67 Fed. 246. 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Hayes- Young v. St. Louis, 137 Fed. 80; 70 C. C. A. 1 13, 807 
 
 Affg. 130 Fed. 900. 
 
 Eighth; Sanborn, Philips, Riner. 
 Hayward v. Andrews, 106 U. S. 672; 27 L. Ed. 271; 1 S. Ct. 544 720 
 
 Matthews. 
 Hayward v. Ellis, 187 Fed. 128; 109 C. C. A. 46 App. 637 
 
 First; Colt, Putnam, Aldrich. 
 Heald v. Rice, 104 U. S. 737; 26 L. Ed. 910 646, 881, 888 
 
 Matthews. 
 
 Heap V. Greene, 91 Fed. 792; 34 C. C. A. 86 208, 532 
 
 Revg. 75 Fed. 405. 
 
 First; Putnam, Brown, Lowell. 
 Heap V. Tremont, 82 Fed. 449; 27 C. C. A. 316. . 68, 230, 378, 424, 454, 616, 621 
 Revg. 75 Fed. 406; affd. on rehearing 84 Fed. 1017. 
 
 First; Putnam, Webb, Aldrich. 
 Heaton v. Eureka, 77 Fed. 288; 25 C. C. A. 267. . . .476, 532, 720, 746, 899 
 Revg. 65 Fed. 619. 
 
 Sixth; Taft, Lurton, Hammond. 
 
 Heaton v. Schlochtcrmeyer, 72 Fed. 520; 18 C. C. A. 674 324 
 
 Affg. 69 Fed. 592. 
 
 Sixth; Taft, Lurton, Hammond. 
 Hecker v. Fowler, 69 U. S. 123; 17 L. Ed. 759 807 
 
 CUFFORD. 
 
 Hedges v. Seibert, 50 Fed. 643; 1 C. C. A. 594 134 
 
 See 35 Fed. 509. 
 
 Third; Acheson, Butler. 
 Heekin v. Baker, 138 Fed. 63; 70 C. C. A. 559. . . .376, 476, 527, 635, 675 
 Revg. 127 Fed. 828. 
 
 Eighth; Sanborn, Van DeVanter, Araidon. 
 
 Heide v. Panoulias, 188 Fed. 914; 110 C. C. A. 656 App. 131, 735 
 
 See 178 Fed. 101. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Heller v. National; 168 Fed. 249; 93 C. C. A. 551 App. 536 
 
 Second; Lacombe, Ward, Noyes. Per Curiam.
 
 CASES EXCERPTED, WITH ANNOTATIONS IvU 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Hemolin v. Harway, 166 Fed. 434; 92 C. C. A. 186 846 
 
 See 138 Fed. 54. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Hemolin v. Harway, 138 Fed. 54; 70 C. C. A. 480 914 
 
 Affg. 131 Fed. 483. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Hendey v. Prentice, 162 Fed. 481; 89 C. C. A. 401 378 
 
 Affg. 155 Fed. 133. 
 
 First; Colt, Putnam, Lo-\vell. 
 Hendrie v. Sayles, 98 U. S. 546; 25 L. Ed. 176 152, 418 
 
 Hendy v. Golden, 127 U. S. 370; 32 L. Ed. 207; 8 S. Ct. 1275 . . . .202, 313 
 Affg. 8 Sawy. 468. 380, 664, 799 
 
 Blatchford. 
 
 Hennebique v. Myers, 172 Fed. 869; 97 C. C. A. 289 App. 421 
 
 Third; Gray, Buffington, Archbald; dissenting, Buffington. 
 Henry v. Dick, 224 U. S. 1; 56 L. Ed. 645; 32 S. Ct. 364. . . .App. 157, 
 
 477, 510, 714, 718, 721, 722, 899 
 Affg. 149 Fed. 424; petition for rehearing denied. 
 Lurton; dissenting, White, Hughes, Lamar. 
 Herman v. Youngstown, 191 Fed. 579; 112 C. C. A. 185. .. .App. 220, 
 
 246, 344, 400, 491, 507, 584, 745 
 See 181 Fed. 345. 
 
 Sixth; Warrington, Knappen, Denison. 
 
 Herrick v. Giant, 60 Fed. 80; 8 C. C. A. 475 141 
 
 Affg. 52 Fed. 147. 
 
 First; Putnam, Nelson, Webb. Per Curiam. 
 
 Herzog v. N. Y. Telephone, 176 Fed. 349; 99 C. C. A. 623 App. 195 
 
 Affg. 172 Fed. 425. 
 Second; Lacombe, Ward, Noyes. 
 Hestonville v. McDuffee, 185 Fed. 798; 109 C. C. A. 606. . . .App. 199, 915 
 Revg. 181 Fed. 503; see 148 Fed. 1023. 
 Third; Gray, Buffington, Lanning. 
 
 Hickory v. Frazier, 100 Fed. 99; 40 C. C. A. 296 600, 690 
 
 Affg. 89 Fed. 202. 
 
 Seventh; Woods, Bunn, AUen. 
 
 Hicks V. Kelsey, 85 U. S. 670; 21 L. Ed. 852 696 
 
 Bradley. 
 
 Higgin V. Scherer, 100 Fed. 459; 40 C. C. A. 491 326 
 
 Sixth; Taft, Lurton, Day. 
 
 Highland v. Schmertz, 178 Fed.'944; 102 C. C. A.. 316 App. 118, 660 
 
 Revg. 178 Fed. 944; see 168 Fed. 73; 178 Fed. 977; 144 Fed. 117; 97 
 Fed. 950; 178 Fed. 973. 
 Third; Gray, Lanning, McPherson. 
 
 Hildreth v. Norton, 159 Fed. 428; 86 C. C. A. 408 567, 575 
 
 Affg. 154 Fed. 82. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Hilker v. U. S. Mop, 191 Fed. 613; 112 C. C. A. 176 App. 98, 658 
 
 Sixth; Warrington, Knappen, Denison. 
 Hill V. Wooster, 132 U. S. 693; 33 L. Ed. 502; 10 S. Ct. 228 .. . .25, 582, 667 
 Revg. 22 Fed. 830. 
 Blatchford. 
 
 Hillard v. Fisher, 159 Fed. 439; 86 C. C. A. 469 66, 93, 352, 459, 634 
 
 Affg. 151 Fed. 34. 
 
 Second; Lacombe, Coxe, Noyes.
 
 Iviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Hillard v. Remington, 186 Fed. 334; 108 C. C. A. 534. . . .App. 584, 657, 666 
 
 Second; Coxe, Ward, Noyes. 
 HUlborn v. Hale, 69 Fed. 958; 16 C. C. A. 569 ... . 208, 277, 341, 656, 673, 876 
 
 Third; Shiras, Acheson, Dallas. 
 Hobbie v. Jennison, 149 U. S. 355; 37 L. Ed. 766; 13 S. Ct. 879. . . .512, 763 
 Affg. 40 Fed. 887. 
 
 Hobbs V. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 409. . . .255, 422, 
 
 423, 501, 635, 670, 884, 937 
 Affg. 92 Fed. 146; Revg. 82 Fed. 916. 
 Brown. 
 
 Hobbs V. Gooding, 111 Fed. 403; 49 C. C. A. 414 376, 631, 635, 792 
 
 First; Colt, Putnam, Aldrich. 
 
 Hobbs V. Gooding, 113 Fed. 615; 51 C. C. A. 335 578 
 
 First; Colt, Putnam, Aldrich. 
 
 Hobbs V. Gooding, 176 Fed. 259; 100 C. C. A. 83 App. 794 
 
 Revg. 166 Fed. 933. 
 First; Colt, Putnam, Aldrich. 
 
 Hocke V. New York Central, 122 Fed. 467; 58 C. C. A. 627 698 
 
 Affg. 117 Fed. 320. 
 
 Second; Wallace, Lacombe. 
 
 Hoe V. Miehle, 149 Fed. 213; 79 C. C. A. 171 526 
 
 Affg. 141 Fed. 112. 
 Second; Lacombe, Townsend, Coxe. 
 Hoff V. Iron Clad, 139 U. S. 326; 35 L. Ed. 179; 11 S. Gt. 580. . . .483, 696 
 Affg. 31 Fed. 45; revg. 27 Fed. 301. 
 Brown. 
 
 Hogan V. Westmoreland, 154 Fed. 66; 83 C. C. A. 178 326 
 
 Revg. 145 Fed. 199. 
 Third; Gray, Buffington, Lanning. 
 Hogg V. Emerson, 6 How. 437; 12 L. Ed. 505. . .111, 205, 222, 242, 266, 
 
 740, 905, 913, 915 
 Affg. 2 Blatchf. 1. 
 Woodbury. 
 Hogg V. Emerson, 11 How. 587; 13 L. Ed. 824. ... . .285, 289, 291, 918 
 
 Woodbury. Dissenting Taney, Daniel, Grier, Catron. 
 Hohorst V. Hamburg-American, 91 Fed. 655; 34 C. C. A. 39. . .295, 728, 840 
 Affg. 84 Fed. 354. 
 
 Second; Wallace, Lacombe, Shipman. 
 HoUister v. Benedict, 113 U. S. 59; 28 L. Ed. 901; 5 S. Ct. 717. . . .636, 
 
 657, 715, 747 
 Matthews. 
 
 Holloway v. Whiteley, 71 U. S. 522; 18 L. Ed. 335 25, 262, 889, 927 
 
 Swayne. 
 
 Holman v. Jones, 61 Fed. 105; 9 C. C. A. 385 216 
 
 Revg. 58 Fed. 973. 
 
 Third; Acheson, Butler, Green. 
 
 Holmes v. Kirkpatrick, 1.33 Fed. 232; 66 C. C. A. 286 411 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Holmes v. McGill, 108 Fed. 238; 47 C. C. A. 296 764, 897 
 
 Second; Wallace, Shipman. 
 
 Holmes v. Truman, 67 Fed. 542; 14 C. C. A. 517 298, 411, 736 
 
 Ninth; Gilbert, Hawley, Hanford. 
 
 Holt V. Best, 172 Fed. 409; 97 C. C. A. 107 App. 403, 404 
 
 Ninth; Gilbert, Ross, Morrow.
 
 CASES EXCERPTED, WITH ANNOTATIONS lix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Holzapfels v. Rahtjens, 183 U. S. 51; 46 L. Ed. 49; 22 S. Ct. 6. . . .398, 928 
 Revg. 101 Fed. 267. 
 Peckham. 
 
 Hopkins v. Corbin, 103 U. S. 786; 26 L. Ed. 610 871 
 
 Woods. 
 
 Horn V. Pelzer, 91 Fed. 665; 34 C. C. A. 45 254, 878 
 
 Revg. 87 Fed. 869. 
 
 Third; Acheson, Butler, Kirkpatrick, dissenting, Butler. 
 
 Hoskin v. Fisher, 125 U. S. 217; 31 L. Ed. 759; 8 S. Ct. 834 871, 875, 
 
 Blatchford. 877, 879 
 
 Hoskin v. Matthes, 108 Fed. 404; 47 C. C. A. 434 266, 691 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Hotchkiss V. Greenwood, 11 How. 248; 13 L. Ed. 683 592, 652, 696 
 
 Nelson; dissenting opinion Woodbury. 
 
 Hotel V. Lorraine, 160 Fed. 467; 87 C. C. A. 451 148, 698 
 
 Affg. 155 Fed. 298. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Houghton V. Whitin, 153 Fed. 740; 83 C. C. A. 84 624, 648, 697, 873 
 
 First; Colt, Putnam, Aldrich. 
 
 Houston V. Stern, 74 Fed. 636; 20 C. C. A. 568 297, 404 
 
 Fifth; Pardee, McCormick, Speer. 
 
 Howard v. Gibbs, 157 Fed. 676; 85 C. C. A. 348 545 
 
 Revg. and affg. 153 Fed. 291. 
 First; Colt, Putnam, Lowell. 
 Howe V. National, 134 U. S. 388; 33 L. Ed. 963; 10 S. Ct. 570. . .222, 671, 
 Affg. 21 Fed. 630. 672, 903 
 
 Fuller. 
 Hoyt V. Home, 145 U. S. 302; 36 L. Ed. 713; 12 S. Ct. 922. . .453, 487, 626 
 Revg. 35 Fed. 830. 
 Brown. 
 Hubbell V. United States, 171 U. S. 203; 43 L. Ed. 136; 18 S. Ct. 828 
 
 ....387, 894 
 Rehearing denied 179 U. S. 86; affg. 20 Ct. CI. 354. 
 Brown. 
 Hubbell V. United States, 179 U. S. 77; 45 L. Ed. 95; 21 S. Ct. 24. .207, 208 
 Affg. 20 Ct. CI. 354; see 31 Ct. CI. 464; 171 U. S. 203. 
 Shiras. 
 
 Huber v. Mott, 125 Fed. 944; 60 C. C. A. 182 215 
 
 Affg. 113 Fed. .599. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Huber v. Nelson, 148 U. S. 270; 37 L. Ed. 447; 13 S. Ct. 603 6, 420, 
 
 Affg. 38 Fed. 830. 871, 872 
 
 Hunt V. Cassidy, 53 Fed. 257; 3 C. C. A. 252. . .208, 292, 297, 298, 380, 
 
 393, 404, 407, 409, 411 
 
 Ninth; McKenna, Ross, Knowles. 
 Hunt V. Cassidy, 64 Fed. 585; 12 C. C. A. 316 287 
 
 Ninth; Gilbert, Morrow. 
 Hunt V. Milwaukee, 148 Fed. 220; 78 C. C. A. 116 144, 441 
 
 Seventh; Baker, Seaman, Kohlsaat. 
 
 Hurd V. Seim, 191 Fed. 832; 112 C. C. A. 346 App. 31 
 
 Revg. 189 Fed. 591; see 157 Fed. 678; 162 Fed. 892; 220 U. S. 428. 
 
 Second; Lacombe, Ward, Noyes. 
 Hurlbut V. SchiUinger, 130 U. S. 456; 32 L. Ed. 1011; 9 S. Ct. 584. .290, 882 
 
 Blatchford.
 
 Ix CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Hurlbut V. United States, 124 Fed. 66; 59 C. C. A. 626 681 
 
 Affg. 119 Fed. 188. 
 
 Second; Wallace, Lacombe, Coxe. Per Curiam. 
 
 Hutter V. De Q. Bottle, 128 Fed. 283; 62 C. C. A. 652 '.494, 602, 797 
 
 Revg. in part 119 Fed. 190. 
 
 Second; Wallace, Lacombe, Coxe. 
 
 Hygienic v. Provident, 176 Fed. 525; 100 C. C. A. 121 App. 277 
 
 Revg. in part 170 Fed. 523. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Hygienic v. Way, 137 Fed. 592; 70 C. C. A. 553 928 
 
 Revg. 133 Fed. 245. 
 
 Third; Acheson, Dallas, Gray. 
 Hyndman v. Roots, 97 U. S. 224; 24 L. Ed. 975 459 
 
 SWAYNE. 
 
 Ide V. Trorlicht, 115 Fed. 137; 53 C. C. A. 341 2, 12, 273, 350, 441, 
 
 459, 558, 609, 871 
 Eighth; Caldwell, Sanborn, Thayer. 
 Ideal V. Crown, 131 Fed. 244; 65 C. C. A. 436. . .68, 69, 92, 222, 322, 398, 622 
 Affg. 123 Fed. 666; see 108 Fed. 847. 
 Fourth; Goff, Brawley, Purnell. 
 
 lUinois V. Robbins, 52 Fed. 215; 3 C. C. A. 42 473 
 
 Affg. 50 Fed. 542. 
 
 Seventh; Harlan, Woods, Jenkins. 
 
 Imhaeuser v. Buerk, 101 U. S. 647; 25 L. Ed. 945 320, 373, 468, 494 
 
 Affg. 14 Blatchf. 19. 
 Clifford. 
 Imperial v. Crown, 139 Fed. 312; 71 C. C. A. 442. . .67, 213, 253, 503, 631, 
 Revg. 123 Fed. 669. 656 
 
 See C. C. A. 2nd Cir. in disagreement with 4th Cir. 136 Fed. 841. 
 Fourth; Goff, Pritchard, Brawley. Dissenting Goff. 
 
 Imperial v. Stein, 77 Fed. 612; 23 C. C. A. 353. 322, 732 
 
 Revg. 69 Fed. 616. 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 Incandescent Lamp Patent, 159 U. S. 465; 40 L. Ed. 221; 16 S. Ct. 75 
 Affg. 40 Fed. 21. ....245, 915 
 
 Brown. 
 
 Indiana v. Case, 154 Fed. 365; 83 C. C. A. 343 510, 744, 767, 807 
 
 Revg. 148 Fed. 21. 
 Seventh; Grosscup, Baker, Kohlsaat. 
 
 Indiana v. Crocker, 103 Fed. 496; 43 C. C. A. 287 690 
 
 Affg. 90 Fed. 488. 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Industrial v. Wilcox, 112 Fed. 535; 50 C. C. A. 387 355 
 
 Revg. 110 Fed. 210. 
 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 Inman v. Beach, 71 Fed. 420; 18 C. C. A. 165 635, 673, 777 
 
 Affg. 63 Fed. 597. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Insurance Co. v. Eggleston, 96 U. S. 572; 24 L. Ed. 2 841 
 
 Bradley. 
 
 Interior v. Perkins, 80 Fed. 528; 25 C. C. A. 613 672, 696 
 
 Revg. 51 Fed. 286. 
 
 Seventh; Woods, Jenkins, Bunn. 
 International Mfg. Co. v. Brammer, 138 Fed. 396; 71 C. C. A. 633. . .468 
 Eighth; Sanborn, Philips, Riner.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixi 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 International Telephone v. KeUogg, 171 Fed. 651; 96 C. C. A. 395 
 
 ...App. 11, 701, 727, 851 
 
 " . Affg. 158 Fed. 104. 
 
 Seventh; Grosscup, Baker, Seaman. 
 International Time Recording v. Bundy, 159 Fed. 464; 86 C. C. A. 494 . .457, 
 Revg. 152 Fed. 494. 506 
 
 Second; Lacombe, Ward, Noyes. 
 International Time Recording v. Dey, 142 Fed. 736; 74 C. C. A. 68. . . .500, 
 
 603, 674, 700, 909 
 Second; Lacombe, Townsend, Coxe. 
 International Tooth Crown v. Bennett, 77 Fed. 313; 23 C. C. A. 179. . .245 
 Affg. 72 Fed. 169; revg. 30 Fed. 775. 
 
 Second; Lacombe, Townsend. Per Curiam. 
 International Tooth Crown v. Gaylord, 140 U. S. 55; 35 L. Ed. 347; 
 
 11 S. Ct. 716 18, 414, 437, 660 
 
 Brown. 
 Interurban v. Westinghouse, 186 Fed. 166; 108 C. C. A. 298. . . .App. 37, 
 
 62, 74, 544, 546, 561, 579 
 
 See 171 Fed. 83. 
 
 Sixth; Severens, Warrington, Knappen. 
 Ironclad v. Dairyman's, 143 Fed. 512; 74 C. C. A. 372. . . .98, 207, 222, 
 Revg. 138 Fed. 123. 496, 938 
 
 Second; Wallace, Townsend, Coxe. 
 
 IrvingtontJ. UticaDrop Forge, 191 Fed. 169; 111 C. C. A. 647 App. 594 
 
 Revg. 189 Fed. 619. 
 
 Third; Gray, Buffington, Lanning. 
 
 Irwin V. Hasselman, 97 Fed. 964; 38 C. C. A. 587 207, 671 
 
 Affg. 86 Fed. 642. 
 
 Seventh; Jenkins, Grosscup, Seaman. 
 
 Ives V. Hamilton, 92 U. S. 426; 23 L. Ed. 494 379, 380, 919 
 
 Bradley. 
 Ives V. Sargent, 119 U. S. 652; 30 L. Ed. 544; 7 S. Ct. 436. . .871, 876, 877 
 Affg. 21 Blatchf. 417. 
 Matthews. 
 
 Jackes-Evans v. Hemp, 140 Fed. 254; 71 C. C. A. 646 326 
 
 Eighth; Van Devanter, Hook, Lochren. 
 
 Jackson v. Birmingham, 79 Fed. 801; 25 C. C. A. 196 200, 245, 344 
 
 Affg. 72 Fed. 269. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Jacobs V. Almond, 177 Fed. 935; 101 C. C. A. 215 App. 636, 908 
 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 
 Jacobs V. Baker, 74 U. S. 295; 19 L. Ed. 200 , 337, 614, 684 
 
 Grier. 
 James v. Campbell, 104 U. S. 356; 26 L. Ed. 786. . . .356, 429, 715, 721, 
 
 815, 823, 885, 886 
 Bradley. Dissenting opinion Miller. 
 
 Janowitz v. Levison, 82 Fed. 63; 27 C. C. A. 61 616, 646 
 
 Revg. 80 Fed. 731. 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 
 Jefferson v. Westinghouse, 134 Fed. 392; 67 C. C. A. 189 564 
 
 Revg. 128 Fed. 751. 
 Third; Acheson, Dallas, Gray. Per Ciu-iam. 
 
 Jefferson v. Westinghouse, 139 Fed. 385; 71 C. C. A. 481 893 
 
 Affg. 135 Fed. 365. See 121 Fed. 831; 134 Fed. 392. 
 Third; Acheson, Dallas, Gray.
 
 Ixii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Jeffrey v. Independent, 83 Fed. 191; 27 C. C. A. 512 376 
 
 Revg. 76 Fed. 981. 
 Sixth; Taft, Lurton, Severens. 
 
 Jenner v. Bowen, 139 Fed. 556; 71 C. C. A. 540 727, 851, 855 
 
 Sixth; Lurton, Severens. 
 
 Jensen v. Norton, 67 Fed. 236; 14 C. C. A. 383 374 
 
 Ninth; Ross, Hanford, Morrow. 
 
 JeweU V. Jackson, 140 Fed. 340; 72 C. C. A. 304 222, 462, 937 
 
 Eighth; Sanborn, Van Devanter, Hook. 
 
 Johns V. Robertson, 77 Fed. 985; 23 C. C. A. 601 379 
 
 Affg. 60 Fed. 900. 
 
 Second; Lacombe, Shipman. 
 
 Johnson v. Chishohn, 115 Fed. 625; 53 C. C. A. 123 100 
 
 Revg. 84 Fed. 384; 106 Fed. 191. 
 Third; Acheson, Dallas, Gray. Dissenting Gray. 
 
 Johnson V. Flushing, 105 U. S. 539; 26 L. Ed. 1162 638, 731, 871 
 
 Woods. 
 Johnson V. Foos, 141 Fed. 73; 72 C. C. A. 105. . . .101, 273, 277, 342, 476, 
 Sixth; Lurton, Severens, Richards. 548, 569, 686, 817 
 
 Johnson v. McCurdy, 108 Fed. 671; 47 C. C. A. 577 691 
 
 Affg. 102 Fed. 965. 
 
 Seventh; Woods, Jenkins, Grosscup. Dissenting Woods. 
 
 Johnson v. Mueser, 212 U. S. 283; 53 L. Ed. 514; 29 S. Ct. 390 143 
 
 Affg. 29 App. D. C. 61; following 211 U. S. 1. 
 Fuller. 
 
 Johnson v. Powers, 85 Fed. 863; 29 C. C. A. 459 211 
 
 Affg. 81 Fed. 626. 
 
 Seventh; Woods, Jenkins, Bunn. Per Curiam. 
 
 Johnson v. Seaman, 108 Fed. 951; 48 C. C. A. 158 579 
 
 Revg. 106 Fed. 915. 
 Third; Acheson, Dallas, Buffington. 
 
 Johnson v. Toledo, 119 Fed. 885; 56 C. C. A. 415 656, 672 
 
 Affg. 116 Fed. 490. 
 
 Sixth; Lurton, Day, Severens. 
 
 Johnson v. Union, 55 Fed. 487; 5 C. C. A. 204 579 
 
 Revg. 52 Fed. 867. 
 
 Third; Acheson, Butler, Wales. 
 Johnson v. Western, 178 Fed. 819; 102 C. C. A. 267. . . .App. 201, 209, 365, 
 Eighth; Sanborn, Van Devanter, Munger. 381, 384, 490 
 
 Johns-Pratt v. Sachs, 175 Fed. 70; 99 C. C. A. 92 App. 271, 381 
 
 Revg. 168 Fed. 311. 
 
 Second; Lacombe, Coxe, Ward. 
 
 .Jones V. Cyphers, 126 Fed. 753; 62 C. C. A. 21 616, 795 
 
 Affg. 115 Fed. 324. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Jones V. Davis, 138 Fed. 62; 70 C. C. A. 558 219 
 
 Revg. 133 Fed. 5.50. 
 
 Third; Acheson, Dallas, Gray. 
 
 Jones V. Morehead, 68 U. S. 155; 17 L. Ed. 662 532, 789 
 
 Miller. 
 
 Jones V. Munger, 49 Fed. 61; 1 C. C. A. 158 223, 377, 469, 674 
 
 Fifth; Pardee, Locke, Bruce. 
 
 Jones V. Munger, 50 Fed. 785; 1 C. C. A. 668 117 
 
 Rehearing 49 Fed. 61. 
 Fifth; Pardee, liOcke, Bruce.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixiii 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Judd V. Fowler, 61 Fed. 821; 10 C. C. A. 100 499 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Justi V. Clark, 108 Fed. 659; 47 C. C. A. 565 638, 691, 889 
 
 Affg. 100 Fed. 855. 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Kahn v. Starrels, 135 Fed. 532; 68 C. C. A. 82 485 
 
 Revg. 131 Fed. 464. 
 Third; Acheson, Dallas, Gray. 
 
 Kahn v. Starrels, 136 Fed. 597; 69 C. C. A. 371 273 
 
 See 131 Fed. 464. 
 Third; Acheson, Dallas, Gray. Per Curiam. 
 
 Kalamazoo v. Duff, 113 Fed. 264; 51 C. C. A. 221 191, 485, 622 
 
 Sixth; Lurton, Day, Clark. 
 
 Kansas City v. Devol, 81 Fed. 726; 26 C. C. A. 578 72, 804, 926 
 
 Revd. 84 Fed. 463; see 72 Fed. 717. 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Keasby v. American, 143 Fed. 490; 74 C. C. A. 510 400, 644 
 
 Revg. 137 Fed. 602. 
 Third; Acheson, Dallas, Gray. 
 Keeler v. Standard, 157 U. S. 659; 39 L. Ed. 848; 15 S. Ct. 738. . . .450, 
 
 763 927 
 Revg. 37 Fed. 693; 41 Fed. 51. 
 Shiras. Dissenting Brown, Fuller, Field. 
 
 Keene v. Barratt, 100 Fed. 590; 40 C. C. A. 571 131, 735, 752, 927 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 KeUey v. Diamond, 123 Fed. 882; 59 C. C. A. 370 208 
 
 Affg. 120 Fed. 282. 
 
 Third; Acheson, Dallas, Buffington. Dissenting Acheson. 
 
 Kelley v. Diamond, 136 Fed. 855; 69 C. C. A. 599 891 
 
 See 132 Fed. 978; 131 Fed. 89; 130 Fed. 893; 129 Fed. 756; 120 Fed. 
 282; 123 Fed. 882. 
 Third; Acheson, Dallas, Gray. 
 
 Kellogg V. Dean, 182 Fed. 991; 105 C. C. A. 545 App. 376, 490, 598, 
 
 Affg. 168 Fed. 549. 631, 936 
 
 Sixth; Severens, Warrington. 
 
 Kelly V. Clow, 89 Fed. 297; 32 C. C. A. 205 95, 207, 608, 612 
 
 Affg. 84 Fed. 352. 
 
 Seventh; Woods, Showalter, Baker. 
 
 Kelly V. Springfield, 92 Fed. 614; 34 C. C. A. 570 T 87 
 
 Affg. 81 Fed. 617. 
 
 Sixth; Taft, Lurton, Severens. 
 
 Kendall v. Windsor, 62 U. S. 322; 16 L. Ed. 165 2, 6, 11, 934 
 
 Daniel. 
 
 Kenney v. Bent, 97 Fed. 337; 38 C. C. A. 205 627, 694 
 
 Affg. 91 Fed. 259. 
 First; Colt, Putnam, Brown. 
 Kennedy v. Hazelton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. . . 151 
 Affg. 33 Fed. 293. 629, 779, 847, 931 
 
 Gray; dissenting Fuller, Bradley. 
 
 Kennicott v. Bain, 185 Fed. 520; 107 C. C. A. 626 App. 552, 559, 574 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Keplinger v. DeYoung, 10 Wheat. 358; 6 L. Ed. 341 521 
 
 Washington. 
 
 Kessler v. Eldred, 206 U. S. 285; 51 L. Ed. 1065; 27 S. Ct. 611 31, 33 
 
 Moody.
 
 IXIV CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Kessler v. Inks, 108 Fed. 412; 47 C. C. A. 442 601 
 
 Seventh; Woods, Jenkins, Grosscup. 
 
 Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 772 366, 568, 
 
 Affg. 45 Fed. 199. 720, 721, 730, 760 
 
 Fuller. 
 
 Keyes v. Grant, 118 U. S. 25; 30 L. Ed. 54; 6 S. Ct. 974 402, 734 
 
 Matthews. 
 
 Keystone Bridge v. Phoenix, 95 U. S. 274; 24 L. Ed. 344 207, 226, 230, 
 
 Bradley. 392 
 
 Keystone Lantern v. Spear, 136 Fed. 595; 69 C. C. A. 369 473 
 
 Revg. 131 Fed. 879. 
 
 Third; Acheson, Dallas, McPherson. 
 Keystone Mfg. Co. v. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295 
 
 . . . .293, 298, 299, 626, 842, 844 
 Revg. 35 Fed. 579; 41 Fed. 595. 
 Shiras. 
 
 Kibbe v. Jennings, 122 U. S. 640; 30 L. Ed. 861 • 331 
 
 Waite. I 
 
 Kilbourne v. Bingham, 50 Fed. 697; 1 C. C. A. 617 640, 696 
 
 Affg. 47 Fed. 57. 
 
 Sixth; Jackson, Swan. 
 
 Kilburn v. Holmes, 121 Fed. 750; 58 C. C. A. 116 532 
 
 Ninth; Gilbert, Ross, DeHaven. 
 
 Kilmer v. Griswold, 67 Fed. 1017; 15 C. C. A. 161 115 
 
 Revg. 62 Fed. 119. 
 
 Second; Wallace, Lacombe, Shipman. Dissenting Shipman. 
 
 King V. Gallun, 109 U. S. 99; 27 L. Ed. 870; 3 S. Ct. 202 47, 593, 708 
 
 Woods. 
 
 King V. Hubbard, 97 Fed. 795; 38 C. C. A. 423 378, 454 
 
 Affg. 89 Fed. 713. 
 
 Sixth; Taft, Lurton, Severens. 
 Kings County v. U. S. Consolidated, 182 Fed. 59; 104 C. C. A. 499 
 
 ....App. 87, 204, 461, 544, 562 
 See 182 Fed. 1022. 
 
 Ninth; Gilbert, Ross, Wolverton. 
 Kinloch v. Electric, 113 Fed. 652; 51 C. C. A. 362.... 12, 129, 377, 459, 
 Affg. Ill Fed. 175. 468, 499 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Kinloch v. Western, 113 Fed. 659; 51 C. C. A. 369 441, 612, 626, 656 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Kinnear v. Wilson, 142 Fed. 970; 74 C. C. A. 232 207, 349, 634 
 
 Second; Wallace, Townsend, Coxe. 
 Kinsman v. Parkliurst, 59 U. S. 289; 15 L. Ed. 385 125, 270, 847 
 
 Kinzel v. Luttrdl, 67 Fed. 926; 15 C. C. A. 82 473 
 
 Sixth; Taft, Lurton, Severens. 
 Kirchberger v. American, 128 Fed. 599; 64 C. C. A. 107.... 54, 71, 85, 
 
 98, 411, 821 
 
 Revd. on validity of pat. 215 U. S. 161; affg. 155 Fed. 731, 740; see 
 
 124 Fed. 764; 132 Fed. 911; 142 Fed. 169. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Kirk V. United States, 163 U. S. 49; 41 L. Ed. 66; 16 S. Ct. 911. . . .126, 
 
 Brown. ' 532, 756 
 
 Kisinger-Ison v. Bradford, 97 Fed. 502; 38 C. C. A. 300 443, 447, 656 
 
 Sixth; Taft, Lurton, Ricks.
 
 CASES EXCERPTED, WITH ANNOTATIONS IxV 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Kisinger-Ison v. Bradford, 123 Fed. 91; 59 C. C. A. 221 277, 283, 299, 
 
 828, 833, 847, 890, 891 
 Sixth; LuRTON, Severens, Richards. 
 
 Kitchen v. Le^dson, 188 Fed. 658; 110 C. C. A. 424 App. 633, 873, 880 
 
 Ninth; Gilbert, Morrow, Wolverton. 
 
 Kitselman v. Kokomo, 108 Fed. 632; 47 C. C. A. 538 506, 641 
 
 Rev. in 189 U. S. 8. 
 
 Seventh; Woods, Grosscup, Seaman. Dissenting, Woods. 
 
 Klein V. RusseU, 86 U. S. 433; 22 L. Ed. 116 141, 260, 613, 734 
 
 SwAYNE. Dissenting Field, Hunt. 
 
 Klein V. Seattle, 77 Fed. 200; 23 C. C. A. 114 129, 636, 655, 679 
 
 Affg. 63 Fed. 702. 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Kleinart v. Stein, 133 Fed. 228; 66 C. C. A. 282 591 
 
 Affg. 125 Fed. 19. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Knapp V. Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. . . .86, 202, 
 Revg. 37 Fed. 351. 207, 525, 605, 617, 651, 662, 663 
 
 Jackson. Dissenting Brown, Shiras. 
 
 Koenan v. Drake, 101 Fed. 466; 41 C. C. A. 466 334 
 
 First; Colt, Putnam, Webb. 
 Kokomo V. Kitselman, 189 U. S. 8; 47 L. Ed. 689; 23 S. Ct. 521 ... . 197, 
 Revg. 108 Fed. 632. 207, 680 
 
 Fuller. 
 
 Krajeuski v. Pharr, 105 Fed. 514; 44 C. C. A. 572 215, 219, 459, 622 
 
 Fifth; Pardee, Shelby, Maxey. Dissenting Pardee. 
 Krementz v. Cottle, 148 U. S. 556; 37 L. Ed. 558; 13 S. Ct. 719. . .622, 656 
 Revg. 39 Fed. 323. 
 Shiras. 
 Kreplik v. Couch Patents, 190 Fed. 565; 111 C. C. A. 381. . .App. 508, 577 
 First; Aldrich, Brown, Hale. 
 
 Krupp V. Midvale, 191 Fed. 588; 112 C. C. A. 194 App. 129, 398, 
 
 488, 489, 519, 588, 596, 702, 741, 907 
 Third; Buffington, Larming, Young. 
 Kuehmsted v. Farbenfabriken, 179 Fed. 701; 103 C. C. A. 243. . .App. 390, 
 Affg. 171 Fed. 887. 496, 633 
 
 Seventh; Grosscup, Baker, Kohlsaat. 
 Kryptok v. Stead, 190 Fed. 767; 111 C. C. A. 495. . . .App. 371, 549, 579 
 Eighth; Sanborn, IMarshaU, Hunger. 
 
 Kuhlman v. General, 147 Fed. 709; 78 C. C. A. 97 598 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Kuhn V. Lock-Stub, 165 Fed. 445; 91 C. C. A. 389 323, 696 
 
 Affg. 157 Fed. 235. 
 
 Second; Lacombe, CoxE, Ward. 
 
 Kurtz V. Straus, 106 Fed. 414; 45 C. C. A. 366 714 
 
 Affg. 100 Fed. 800. 
 
 Third; Dallas, Gray, Bradford. 
 
 Lackawanna v. Davis-Colby, 131 Fed. 68; 65 C. C. A. 306 937 
 
 Affg. 128 Fed. 453. 
 
 Third; Acheson, Dallas, Gray. 
 
 Lafferty v. Acme, 138 Fed. 729; 71 C. C. A. 285 696 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Lafferty v. Acme, 143 Fed. 321; 74 C. C. A. 521 891 
 
 Affg. 138 Fed. 729. 
 
 Seventh; Grosscup, Baker.
 
 Ixvi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Lake Shore v. National, 110 U. S. 229; 28 L. Ed. 129; 4 S. Ct. 33 . . . . 136, 
 Blatchford. 230, 499 
 
 Lalance v. Haberman, 59 Fed. 143; 8 C. C. A. 53 .^ 224 
 
 Affg. 54 Fed. 517. 
 
 Second; Wallace, Lacombe, Shipman. 
 Lamb V. Lamb, 120 Fed. 267; 56 C. C. A. 247. . . .136, 223, 344, 481, 634, 824 
 Sixth; Lurton, Day, Severens. 
 
 Lambert v. Lidgerwood, 154 Fed. 372; 83 C. C. A. 350 380 
 
 Revg. and modifying 150 Fed. 364. 
 Third; Dallas, Gray, Buffington. 
 
 Lamson v. Godehard, 59 Fed. 776; 8 C. C. A. 265 212, 224 
 
 Eighth; Caldwell, Thayer. 
 
 Lamson v. Hillman, 123 Fed. 416; 59 C. C. A. 510 60, 190, 375, 668 
 
 Seventh; .Jenkins, Grosscup, Baker. 
 Lane v. Lock, 150 U. S. 193; 37 L. Ed. 1049; 14 S. Ct. 78. . . .366, 729, 
 
 732, 751, 758 
 Revg. 35 Fed. 289. 
 Shiras. 
 
 Lane v. Welds, 99 Fed. 286; 39 C. C. A. 528 386, 636 
 
 Sixth; Taft, Lurton, Day. 
 
 Lange v. McGuin, 177 Fed. 219; 101 C. C. A. 389 App. 324, 807 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Lanyon v. Brown, 115 Fed. 150; 53 C. C. A. 354 159, 579 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Lanyon v. Brown, 129 Fed. 912; 64 C. C. A. 344 226 
 
 Eighth; Sanborn, Thayer. 
 
 Lattimore v. Hardsocg, 121 Fed. 986; 58 C. C. A. 287 846 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Lauman v. Urschel, 136 Fed. 190; 69 C. C. A. 206 819 
 
 Sixth; Lurton, Severens, Richards. Per Curiam. 
 
 Lavigne v. McKenna, 194 Fed. 112; 114 C. C. A. 190 App. 91 
 
 Affg. 177 Fed. 709. 
 
 Seventh; Grosscup, Baker, Humphrey. 
 
 Lawther v. Hamilton, 124 U. S. 1; 31 L. Ed. 325; 8 S. Ct. 342 194, 
 
 Revg. 21 Fed. 811. 636, 756, 819 
 
 Bradley. 
 
 Lay V. Indianapolis, 120 Fed. 831; 57 C. C. A. 313 5, 178 
 
 Seventh; Jenkins, Grosscup, Bunn. 
 Leather Grille v. Christopherson, 182 Fed. 817; 105 C. C. A. 249. .App. 384 
 Ninth; Gilbert, Ross, Van Fleet. 
 
 Lee V. Penberthy, 109 Fed. 964; 48 C. C. A. 760 274 
 
 Sixth; Lurton, Severens, Clark. 
 Leeds v. Victor, 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495. . . .App. 248, 
 
 250, 421, 422, 561, 604, 770 
 
 Affg. 148 Fed. 1022, which affd. 146 Fed. 534; see 140 Fed. 860; 145 
 
 Fed. 350. 
 
 McKenna. , .„. .-,^ 
 
 Leeds v. Victor, 213 U. S. 325; 53 L. Ed. 816; 29 S. Ct. 503. . .App. 474, 476 
 
 Affg. 154 Fed. 58 and 150 Fed. 147. 
 
 McKenna. ^^ __ _^„ 
 
 Leeds v. Victor, 154 Fed. 58; 83 C. C. A. 170 476, 477, 523 
 
 Affd. 213 U. S. 325; see 146 Fed. 534; 148 Fed. 1022. 
 Second; Wallace, Coxe, Hough. Dissenting Wallace. 
 
 Leggett V. Avery, 101 U. S. 256; 25 L. Ed. 865 871 
 
 Bradley.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixvii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Leggett V. Standard, 149 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. . . .387, 
 Affg. 38 Fed. 842. 522, 728, 729, 871, 889, 921 
 
 Jackson. 
 
 Lehigh v. Kearney, 158 U. S. 461; 39 L. Ed. 1055; 15 S. Ct. 871 207 
 
 Revg. 32 Fed. 320. 
 Fuller. 
 
 Lehigh v. MeUon, 104 U. S. 112; 26 L. Ed. 639 207, 399, 494 
 
 Woods. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; 26 L. Ed. 939 629 
 
 Woods. 
 
 Leicester v. Macon, 116 Fed. 196; 53 C. C. A. 621 767 
 
 Affg. 113 Fed. 844. 
 
 Third; Acheson, Dallas, Gray. 
 
 Lein v. Myers, 105 Fed. 962; 45 C. C. A. 148 76, 391 
 
 Revg. 97 Fed. 607. 
 
 Second; Lacombe, Shipman. 
 
 Lepper v. Randall, 113 Fed. 627; 51 C. C. A. 337 374 
 
 Revg. 105 Fed. 975. 
 Third; Acheson, Dallas, Gray. 
 LeRoy v. Tatham, 14 How. 156; 14 L. Ed. 367. . . .639, 683, 685, 689, 690 
 McLean. Dissenting Wayne, Grier; opinion Nelson. 
 
 LeRoy v. Tatham, 63 U. S. 132; 16 L. Ed. 366 866 
 
 See s. c. 14 How. 156. 
 McLean. 
 
 Leslie v. Standard, 98 Fed. 827; 39 C. C. A. 314 132, 737 
 
 Seventh; Woods, Bunn, Allen. 
 
 Letson v. Alaska, 130 Fed. 129; 64 C. C. A. 463 448, 642 
 
 Modifying 119 Fed. 599. 
 
 Ninth; Gilbert, Ross, Morrow. 
 
 Lewis V. Pennsylvania, 59 Fed. 129; 8 C. C. A. 41 202, 441 
 
 Affg. 55 Fed. 877. 
 
 Third; Acheson, Butler, Green. 
 
 Lewis V. Premium, 163 Fed. 950; 90 C. C. A. 310 390, 484 
 
 Eighth; Van Devanter, Munger. 
 
 Lewis V. Semple, 177 Fed. 407; 101 C. C. A. 411 App. 672 
 
 Revg. 177 Fed. 411. 
 
 Ninth; Gilbert, Morrow, Hunt. 
 
 Liberman v. Ruwell, 170 Fed. 590; 95 C. C. A. 134 App. 376 
 
 Affg. 165 Fed. 208. 
 
 Third; Gray, Buffington, Bradford. 
 
 Library Bureau v. Macey, 148 Fed. 380; 78 C. C. A. 194 698 
 
 Revg. in part 134 Fed. 886. 
 
 First; Putnam, Lowell, Brown. 
 
 Library Bureau v. Yawman, 147 Fed. 245; 77 C. C. A. 387 120 
 
 First; Colt, Putnam, Aldrich. Per Curiam. 
 
 Lichtenstein v. Phipps, 168 Fed. 61; 93 C. C. A. 483 App. 777 
 
 Revg. 161 Fed. 578. 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 
 Lincoln v. McWhirter, 142 Fed. 967; 74 C. C. A. 229 61, 88, 657 
 
 Affg. 131 Fed. 860. 
 
 Secoid; Wallace, Townsend, Coxe. 
 
 Littlefield 0. Perry, 88 U. S. 205; 22 L. Ed. 577 152, 153, 154, 160, 
 
 Waite. 164, 167, 171. 173, 284, 290, 511, 721, 722, 765, 846 
 
 Lmngston v. Woodworth, 15 How. 546; 14 L. Ed. 809 282, 305, 372, 
 
 Daniel. 798, 837
 
 Ixviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Lobel V. Cossey, 157 Fed. 664; 85 C. C. A. 142 585, 720 
 
 Second; Coxe, Ward, Noyes. 
 
 Lockiin v. Buck, 159 Fed. 434; 86 C. C. A. 414 623 
 
 Affg. 148 Fed. 715. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Lockwood V. Wicks, 75 Fed. 118; 21 C. C. A. 257 116, 120, 550 
 
 See 65 Fed. 610. 
 
 Eighth; Caldwell, Sanborn, Thayek. 
 
 Loew V. German- American, 107 Fed. 949; 47 C. C. A. 94 77, 476, 544, 546 
 
 Affg. 103 Fed. 303. 
 
 Sixth; Lm'ton, Severens, Clark. 
 
 Loew V. German-American, 164 Fed. 855; 90 C. C. A. 637 390, 817 
 
 Affg. in part 155 Fed. 124; see 41 Fed. 132; 53 Fed. 485; 98 Fed. 300. 
 Sixth; LuRTON, Severens, Richards. 
 
 Loew V. Miller, 138 Fed. 886; 71 C. C. A. 266 441, 648 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 London v. Dunbar, 179 Fed. 506; 103 C. C. A. 130 App. 777 
 
 First; Colt, Lowell, Brown. 
 
 Long V. Pope, 75 Fed. 835; 21 C. C. A. 533 212, 222, 601, 626 
 
 Affg. 70 Fed. 855. 
 
 First; Colt, Putnam, Nelson. 
 
 Look V. Smith, 148 Fed. 12; 78 C. C. A. 180 734 
 
 Sixth; Lurton, Severens, Richards. 
 Loom Co. V. Higgins, 105 U. S. 580; 26 L. Ed. 1177 .. . .230, 317, 322, 398, 
 Bradley. 410, 595, 634, 635, 807, 809, 812, 905, 907 
 
 Lorain v. N. Y. Switch, 184 Fed. 301; 106 C. C. A. 443 App. 574, 777 
 
 Affg. 124 Fed. 548; see 153 Fed. 205. 
 Third; Gray, Buffington, Lanning. 
 
 Lorain v. White, 184 Fed, 326; 106 C. C. A. 356 App. 253 
 
 Affg. 158 Fed. 413; see 119 Fed. 885; 170 Fed. 79. 
 Second; Lacombe, Coxe, Noyes. 
 
 Los Alamitos v. Carroll, 173 Fed. 280; 97 C. C. A. 446 App. 91 
 
 Ninth; Gilbert, Ross, Hunt. 
 
 Los Angeles v. AeoUan, 143 Fed. 880; 75 C. C. A. 88 197, 372, 501, 
 
 629, 640 
 Ninth; Gilbert, Morrow, Hawley. 
 
 Lourie v. Lenhart, 130 Fed. 122; 64 C. C. A. 456 373, 453, 459, 531 
 
 Eighth; Sanborn, Thayer, Hook. 
 
 Lovell V. Gary, 147 U. S. 623; 37 L. Ed. 307; 13 S. Ct. 472 617, 635, 
 
 654, 671, 818 
 Revg. 37 Fed. 654. 
 See same matter 24 Fed. 139; 24 Fed. 141; 27 Fed. 38; 31 Fed. 344. 
 Blatchford. 
 
 Lovell V. Johnson, 91 Fed. 160; 33 C. C. A. 426 207 
 
 Affg. 82 Fed. 206. 
 
 First; Colt, Webb, Aldrich. 
 
 Lovell V. Seybold, 169 Fed. 288; 94 C. C. A. 578 App. 195 
 
 Affg. 159 Fed. 736. 
 Second; Coxe, Ward, Noyes. 
 Lowden v. Janesville, 148 Fed. 686; 78 C. C. A. 548. . . .211, 223, 229, 671 
 Affg. 141 Fed. 975. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Lowell V. Saco, 122 Fed. 632; 58 C. C. A. 324 651 
 
 Affg. 114 Fed. 497. 
 
 First; Colt, Putnam, Aldrich.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixix 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Lowry v. Allen, 203 U. S. 476; 51 L. Ed. 281; 27 S. Ct. 141 583 
 
 Affg. 26 App. D. C. 8. 
 
 McKenna. Dissenting Peckham, Day. 
 
 Lubin V. Stewart, 77 Fed. 303; 23 C. C. A. 176 89 
 
 Revg. 75 Fed. 294. 
 
 Third; Dallas, Butler, Wales. 
 
 Ludington v. Leonard, 127 Fed. 155; 62 C. C. A. 269 827 
 
 Affg. 119 Fed. 937. See 106 Fed. 168. 
 Second; Lacombe, Coxe, Hazel. 
 
 Lyons v. Drucker, 106 Fed. 416; 45 C. C. A. 368 201, 327, 903 
 
 Second; Wallace, Lacombe. 
 
 MacColl V. Crampton, 95 Fed. 987; 37 C. C. A. 351 507 
 
 Affg. 87 Fed. 731. 
 
 First; Colt, Webb, Aldrich. 
 
 MacColl V. Knowles, 95 Fed. 982: 37 C. C. A. 346 903 
 
 Affg. 87 Fed. 727. 
 
 First; Colt, Webb, Aldrich. 
 
 Macey v. Globe- Wernicke, 180 Fed. 401; 103 C. C. A. 547 App. 384 
 
 Revg. 180 Fed. 408. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Magic V. Economy, 97 Fed. 87; 38 C. C. A. 56 207, 377, 690 
 
 Seventh; Brown, Woods, Jenkins. 
 
 Maginn v. Standard, 150 Fed. 139; 80 C. C. A. 15 176, 305 
 
 Seventh; Baker, Seaman, Quarles. 
 Magowan v. New York, 141 U. S. 332; 35 L. Ed. 781; 12 S. Ct. 62. . . .614, 
 
 626 
 Affg. 27 Fed. 362. 
 Blatchford. 
 
 Mahler v. Animarium, 111 Fed. 530; 49 C. C. A. 431 116, 425, 645 
 
 Eighth; Sanborn, Til\yer, Adams. 
 Mahn v. Harwood, 112 U. S. 354; 28 L. Ed. 665; 5 S. Ct. 174; 6 S. Ct. 
 
 451 308, 310, 313, 871, 877 
 
 Bradley. Dissenting opinion Miller. 
 
 Mahoney v. Jenkins, 138 Fed. 404; 70 C. C. A. 662 468 
 
 Revg. 135 Fed. 550. 
 Third; Acheson, Dallas, Gray. 
 
 Mahoney v. Malcom, 143 Fed. 124; 74 C. C. A. 318 614, 631 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Maimen v. Union, 165 Fed. 440; 91 C. C. A. 384 603, 777 
 
 . Affg. 161 Fed. 748; see 185 Fed. 120; 187 Fed. 123. 
 Third; Gray, Bnffington, Cross. 
 
 Maimen v. Union, 187 Fed. 123; 109 C. C. A. 441 App. 125, 838 
 
 Affg. 185 Fed. 120; see 161 Fed. 748; 165 Fed. 440. 
 Third; Gray, Buffington, Young. 
 
 Maitland v. Goetz, 86 Fed. 124; 29 C. C. A. 607 631, 875, 884 
 
 Second; Wallace, Lacombe, Shipal^n. 
 
 Mallon V. Gregg, 137 Fed. 68; 69 C. C. A. 48 378, 441, 473, 671, 672 
 
 Affg. 126 Fed. 377. 
 
 Eighth; Sanborn, PhiHps, Riner. 
 
 Mann v. Hoffman, 104 Fed. 245; 43 C. C. A. 514 441, 496, 527 
 
 Affg. 96 Fed. 237. 
 
 Seventh; Woods, Grosscup, Seaman. 
 Manning v. Cape Ann, 108 U. S. 462; 27 L. Ed. 793; 2 S. Ct. 860. . . .855, 
 
 857 
 Woods.
 
 IXX CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Manville v. Excelsior, 167 Fed. 538; 93 C. C. A. 216 603 
 
 Affg. 162 Fed. 486. 
 
 Second; Lacombe, CoxE, Ward. 
 
 Marbury v. Madison, 1 Cranch. 137; 2 L. Ed. 60 748 
 
 Marshall. 
 Marchand v. Emken, 132 U. S. 195; 33 L. Ed. 332; 10 S. Ct. 65. . . .186, 
 Affg. 26 Fed. 629. 682, 691 
 
 Marden v. Campbell, 67 Fed. 809; 15 C. C. A. 26 115, 116, 118, 138, 
 
 See 64 Fed. 782. 139, 545 
 
 First; Colt, Putnam, Nelson. 
 
 Marden v. Campbell, 79 Fed. 653; 25 C. C. A. 142 532, 579, 807 
 
 See 64 Fed. 782; revg. 70 Fed. 339. 
 
 First; Colt, Putnam, Nelson. 
 Market v. Rowley, 155 U. S. 621; 39 L. Ed. 284; 15 S. Ct. 224 734 
 
 Shiras. Dissenting Brown. 
 Marsh v. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168. . 159, 742, 827 
 
 Field. 
 Marsh v. Seymour, 97 U. S. 348; 24 L. Ed. 963. . . .282, 409, 411, 455, 883 
 
 Marshall v. Bryant, 185 Fed. 499; 107 C. C. A. 599 App. 31, 893 
 
 Affg. 169 Fed. 426; see 153 Fed. 579; 164 Fed. 862. 
 First; Putnam, Aldrich, Dodge. 
 
 Marshall v. Pettingill-Andrews, 164 Fed. 862; 91 C. C. A. 8 201, 636 
 
 Affg. 153 Fed. 579. 
 
 First; Colt, Putnam, Lowell. 
 
 Martin v. Martin, 67 Fed. 786; 14 C. C. A. 642 384, 394 
 
 Affg. 62 Fed. 272. 
 
 First; Colt, Putnam, Nelson. 
 
 Martin v. Martin, 71 Fed. 519; 18 C. C. A. 234 789 
 
 Affg. and app. 62 Fed. 272; 67 Fed. 786. 
 First; Colt, Putnam, Nelson. Per Curiam. 
 
 Marvel v. Pearl, 133 Fed. 160; 66 C. C. A. 226 934 
 
 Second; Wallace, Townsend, Coxe. 
 
 Mason v. Graham, 90 U. S. 261 ; 23 L. Ed. 86 290, 296 
 
 Strong. 
 
 Masseth v. Larkin, 119 Fed. 171; 56 C. C. A. 167 490 
 
 Affg. Ill Fed. 409. 
 
 Third; Acheson, Bradford. 
 
 Mast V. Dempster, 82 Fed. 327; 27 C. C. A. 191 2, 11, 18, 74, 190, 
 
 220, 316, 473, 629, 635, 655 
 Discredited 177 U. S. 485; revg. 71 Fed. 701. 
 Eighth; Caldwell, Sanborn, Thayer. Dissenting Thayer. 
 
 Mast V. Iowa, 76 Fed. 816; 22 C. C. A. 586 877 
 
 Affg. 68 Fed. 213. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Mast V. Rude, 53 Fed. 120; 3 C. C. A. 477 600 
 
 Seventh; Gresham, Jenkins, Blodgett. 
 
 Mast V. Stover, 177 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708 95, 250, 
 
 Affg. 89 Fed. 333. 256, 257, 544, 617 
 
 Discrediting Mast v. Dempster, 82 Fed. 327. 
 Brow^n. 
 Mast V. Superior, 154 Fed. 45; 83 C. C. A. 157. . . . 112, 126, 286, 289, 292, 
 Affg. former opinions s. c. 115 Fed. S86 295, 298, 842 
 
 Sixth; Lurton, Severens, Richards.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxi 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Matheson v. Campbell, 78 Fed. 910; 24 C. C. A. 284. . . .238, 245, 519, 822, 
 Revg. 69 Fed. 597; 77 Fed. 280. 904, 914 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Matthews v. Boston, 105 U. S. 54; 26 L. Ed. 1022 871, 872 
 
 Bradley. 
 Matthews v. Iron Clad, 124 U. S. 347; 31 L. Ed. 477; 8 S. Ct. 639. .872, 876 
 Affg. 22 Blatchf. 427. 
 Gray. 
 
 Maurer v. Dickerson, 113 Fed. 870; 51 C. C. A. 494 397, 821, 824, 903 
 
 Affg. 108 Fed. 233. 
 
 Third; Acheson, Dallas, Gray. 
 May V. Juneau, 137 U. S. 408; 34 L. Ed. 729; 11 S. Ct. 102. .213, 734, 799 
 Affg. 30 Fed. 241. 
 Blatchford. 
 
 Mayo V. Jenckes, 133 Fed. 527; 66 C. C. A. 503 54 
 
 Affg. 121 Fed. 110. 
 
 First; Colt, Putnam, Aldrich. • 
 
 Mayor v. American, 60 Fed. 1016; 9 C. C. A. 336 158 
 
 Revg. 56 Fed. 149; see s. c. 70 Fed. 853, which reversed 68 Fed. 227. 
 Revg. on question of evidence of title. Brooks v. Jenkins, 3 McLean, 
 432; Parker v. Haworth, 4 McLean, 370; Lee v. Blandy, 1 Bond. 
 361; Dederick i;. Agricultural, 26 Fed. 763; National v. American, 
 55 Fed. 488. 
 Second; Wallace, Lacombe, Shipman. 
 
 Mayor v. American, 70 Fed. 853; 17 C. C. A. 467 672 
 
 Revg. 56 Fed. 419; see 60 Fed. 1016; revg. 68 Fed. 227. 
 Second; Wallace, Lacombe, Shipman. 
 
 Mayor v. Holmquist, 145 Fed. 179; 76 C. C. A. 149 436 
 
 Seventh; Baker, Seaman, Bethea. 
 
 Mayor v. Ransom, 64 U. S. 487; 16 L. Ed. 515 280, 297 
 
 Grier. 
 McAleer v. United States, 150 U. S. 424; 37 L. Ed. 1130; 14 S. Ct. 160. . .756 
 Affg. 25 Ct. CI. 238. 
 Fuller. 
 
 McBride v. Kingman, 97 Fed. 217; 38 C. C. A. 123 9, 195, 376 
 
 Affg. 72 Fed. 908. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 McCafferty v. CeUuloid, 104 Fed. 805; 43 C. C. A. 540 121 
 
 Second. Per Curiam. 
 McCarty v. Lehigh, 160 U. S. 110; 40 L. Ed. 358; 16 S. Ct. 240. . . .195, 
 Brown. 2(T6, 207, 383 
 
 McClain v. Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76. . . .12, 
 
 228, 244, 614, 635, 656 
 Affg. 33 Fed. 284. 
 Brown. 
 
 McClurg V. Kingsland, 1 How. 202; 11 L. Ed. 102 7, 166, 268, 368, 815 
 
 Baldwin. 
 McCormick v. Aultman, 69 Fed. 371; 16 C. C. A. 259. . . .197, 221, 247, 
 Revg. 58 Fed. 773. 375, 497, 754, 911 
 
 Sixth; Taft, Lurton, Severens. 
 McCormick v. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. . . .26, 
 Revg. 58 Fed. 778. 848, 880, 883, 887 
 
 Brown. 
 
 McCormick v. Talcott, 61 U. S. 402; 15 L. Ed. 930 395, 434, 473 
 
 Grier. Dissenting opinion Daniel.
 
 Ixxii CASES EXCERPTED, WITH ANNOTATIONS 
 
 I References are to sections. " App." refers to Appendix ] 
 
 McCoy V. Nelson, 121 U. S. 484; 30 L. Ed. 1017; 7 S. Ct. 1000. . . .562, 
 
 Blatchford. 791, 807 
 
 McCreary v. Pennsylvania, 141 U. S. 459; 35 L. Ed. 817; 12 S. Ct. 40 
 
 ....298, 356, 842, 845, 846 
 Affg. 5 Fed. 367. 
 
 Brown. 
 McCune v. Baltimore, 154 Fed. 63; 83 C. C. A. 175 285 
 
 Third; Dallas, Gray, Buffington. 
 McDowell V. Ideal, 187 Fed. 814; 109 C. C. A. 574 App. 871, 901 
 
 Seventh; Grosscup, Baker, Seaman. 
 McDowell V. Kurtz, 77 Fed. 206; 23 C. C. A. 119 459, 562, 716 
 
 Third; Acheson, Dallas, Wales. 
 
 McDuffee v. Hestonville, 162 Fed. 36; 89 C. C. A. 76 154, 927 
 
 Revg. 158 Fed. 827. 
 
 Third; Dallas, Grey, Buffington. 
 
 McKay v. Dizer, 61 Fed. 102; 9 C. C. A. 382 380, 635 
 
 Revg. 58 Fed. 353. 
 
 First; Colt, Nelson, Webb. 
 
 McMichael v. Ruth, 128 Fed. 706; 63 C. C. A. 304 73, 469 
 
 Revg. 123 Fed. 888. 
 
 Third; Acheson, Dallas, Gray. 
 McMurray v. Mallory, 111 U. S. 97; 28 L. Ed. 365; 4 S. Ct. 375. . . .473, 
 
 Woods. 871, 882 
 
 McNeely v. Williames, 96 Fed. 978; 37 C. C. A. 641 ... . 59, 252, 292, 342, 727 
 Affg. 64 Fed. 766; revg. 77 Fed. 894. 
 
 Third; Acheson, Buffington, Bradford. 
 
 McSherry v. Dowagiac, 163 Fed. 34; 89 C. C. A. 512 837 
 
 Rehearing of 160 Fed. 948. 
 
 Sixth; Cochran. 
 McSherry v. Dowagiac, 101 Fed. 716; 41 C. C. A. 627 376 
 
 Sixth; Taft, Lurton, Day. 
 McSherry v. Dowagiac, 160 Fed. 948; 89 C. C. A. 26. . . .283, 481, 837, 843 
 See 101 Fed. 716; 127 Fed. 143; 118 Fed. 136; 121 Fed. 988; 155 Fed. 
 524; 162 Fed. 472; 162 Fed. 479. 
 
 Sixth; Lurton, Richards, Cochran, Dissenting, Richards. 
 Mellon V. D. L. & W. 154 U. S. 673; 26 L. Ed. 929; 14 S. Ct. 1194 158, 
 
 Woods. 394 
 
 Menasha v. Dodge, 85 Fed. 971; 29 C. C. A. 508 564 
 
 See Dodge v. Post, 76 Fed. 807. 
 
 Seventh; Woods, Jenkins, Showalter. 
 Merrill v. Yeomans, 94 U. S. 508; 24 L. Ed. 235 247, 772, 822, 905 
 
 Miller. Dissenting Clifford. 
 
 Merrill-Soule v. Star, 159 Fed. 142; 86 C. C. A. 332 672 
 
 Affg. 153 Fed. 762. 
 
 Second; Lacombe, Coxe, Ward. 
 Metallic v. Brown, 104 Fed. 345; 43 C. C. A. 568 118, 226 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 Metallic v. Brown, 110 Fed. 664; 49 C. C. A. 147 195, 273 
 
 Eighth; Sanborn, Thayer. 
 Metropolitan v. Providence, 87 U. S. 342; 22 L. Ed. 303 668 
 
 Strong. 
 Metzger v. Berlin, 194 Fed. 426; 114 C. C. A. 388 App. 133 
 
 Second; Coxe, Ward, Noyes. Per Curiam. 
 Mevs ?'. Conover, 131 U. S. cxlii, app; 23 L. Ed. 1008 840, 887 
 
 Strong.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxiii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Meyer v. Pritchard, 131 U. S. ccix, app.; 23 L. Ed. 961 887 
 
 Waite. 
 
 Mica Insulator v. Commercial, 166 Fed. 440; 92 C. C. A. 292 821 
 
 Revg. 157 Fed. 90; see 137 Fed. 928. 
 Seventh; Grosscup, Baker, Seaman. 
 
 Michigan v. Consolidated, 67 Fed. 121 ; 14 C. C. A. 232 55, 809, 812, 903 
 
 Sixth; Taft, Lurton, Severens. 
 
 Millard v. Chase, 108 Fed. 399; 47 C. C. A. 429 207, 681, 705 
 
 First; Colt, Putnam, Webb. 
 Miller v. Brass Co. 104 U. S. 350; 26 L. Ed. 783. . . .12, 873, 883, 884, 885 
 
 Bradley. 
 Miller v. Eagle, 151 U. S. 186; 38 L. Ed. 121; 14 S. Ct. 310. . . .86, 348, 
 Revg. 41 Fed. 351. 356, 378, 525, 528, 651, 680, 771 
 
 Jackson. 
 
 Miller v. Force, 116 U. S. 22; 29 L. Ed. 552; 6 S. Ct. 204 676 
 
 Bradley. 
 
 MiUer v. Mawhinney, 105 Fed. 523; 44 C. C. A. 581 78, 908 
 
 Affg. 96 Fed. 248. 
 
 First; Colt, Putnam, Webb. 
 
 Millheim v. Western, 95 Fed. 152; 37 C. C. A. 38 438 
 
 Affg. 88 Fed. 505. 
 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 MiUigan v. Upton, 97 U. S. 3; 24 L. Ed. 985 775 
 
 Field. 
 
 Milloy V. Thomson-Houston, 148 Fed. 843; 78 C. C. A. 533 871, 876 
 
 See 71 Fed. 192; 78 Fed. 363; 78 Fed. 139; 80 Fed. 712; 82 Fed. 461; 
 101 Fed. 121; 135 Fed. 759. 
 Sixth; Lurton, Severens, Cochran. 
 
 Mills V. Russell, 144 Fed. 700; 75 C. C. A. 516 600 
 
 Affg. 136 Fed. 874. 
 
 Second; Lacombe, Coxe. Per Curiam. 
 
 Mills V. Whitehurst, 72 Fed. 496; 19 C. C. A. 130 166, 167 
 
 Affg. 65 Fed. 996. See 56 Fed. 589. 
 Sixth; Taft, Lurton, Hammond. 
 
 Milner v. Yesbera, 111 Fed. 386; 49 C. C. A. 397 323 
 
 Sixth; Lurton, Day, Severens. 
 
 Milner v. Yesbera, 133 Fed. 916; 67 C.C. A. 210 459, 634 
 
 See 111 Fed. 386. 
 
 Sixth; Lurton, Severens, Richards. 
 
 Milwaukee v. Brunswick-Balke, 126 Fed. 171; 61 C. C. A. 175 68, 163, 
 
 Seventh; Jenkins, Baker, Seaman. 468, 603, 680, 926 
 
 Minnesota v. Dowagiac, 126 Fed. 747; 61 C. C. A. 352 115, 538 
 
 Eighth; Sanborn, Van Devanter. 
 
 Mississippi v. Franzen, 143 Fed. 501; 74 C. C. A. 135 365, 411, 682 
 
 Revg. 138 Fed. 924. 
 
 Third; Acheson, Dallas, Gra5^ 
 
 MitcheU v. Ewart, 81 Fed. 390; 26 C. C. A. 443 454 
 
 Affg. 78 Fed. 485. 
 
 Third; Acheson, Butler, Buffington. 
 Mitchell V. Hawley, 83 U. S. 544; 21 L. Ed. 322.. .418, 757, 769, 926, 927 
 
 Mitchell V. Tilghman, 86 U. S. 287; 22 L. Ed. 125. . . .222, 229, 230, 261, 
 
 488, 489, 500, 501, 629, 641, 679, 702 
 Revg. 9 Blatchf. 1 ; s. c. 4 Fish. P. C. 599; reversed on merits 102 U. S. 708. 
 Clifford. Dissenting Swayne, Strong, Bradley.
 
 Ixxiv CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sectiona. " App." refers to Appendix ] 
 
 Model Bottling Mach. v. Anheuser-Busch, 190 Fed. 573; ill C. C. A. 389 
 
 . . . .App. 5, 9, 100, 101, 128, 351, 672, 881 
 Eighth; Sanborn, Van Devanter, Hunger. 
 
 Moffitt V. Garr, 66 U. S. 273; 17 L. Ed. 207 887, 889 
 
 Nelson. 
 
 Moffitt V. Rogers, 106 U. S. 423; 27 L. Ed. 76; 1 S. Ct. 70 871 
 
 Woods. 
 Moneyweight v. Toledo, 187 Fed. 826; 109 C. C. A. 586. . . .App. 208, 871, 
 Aflfg. 178 Fed. 557. 885 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Monroe v. Anderson, 58 Fed. 398; 7 C. C. A. 272 281, 330, 331 
 
 Revg. 55 Fed. 398. 
 
 Third; Shiras, Acheson, Dallas. 
 
 Moore v. Eggers, 107 Fed. 491; 46 C. C. A. 425 211, 241 
 
 Sixth; Lurton, Severens, Clark. 
 
 Moore v. Marsh, 74 U. S. 515; 19 L. Ed. 37 164, 169, 796 
 
 Clifford. 
 Mop Case — see Garretson v. Clark, 111 U. S. 120. 
 
 Morey v. Lockwood, 75 U. S. 230; 19 L. Ed. 339 459, 884 
 
 Nelson. 
 Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 500; 14 S. Ct. 627. . . .207, 
 Affg. 40 Fed. 577. 477, 515, 524, 769, 771, 871 
 
 Brown. 
 Morgan v. Daniels, 153 U. S. 120; 38 L. Ed. 657; 14 S. Ct. 772. . . .584, 
 Revg. 42 Fed. 451. 785, 810 
 
 Brewer. 
 
 Morgan v. Pennsylvania, 126 Fed. 952; 62 C. C. A. 126 207 
 
 Third; Acheson, Dallas, Gray. 
 Morgan Engineering v. Alliance, 176 Fed. 100; 100 C. C. A. 30. .App. 77, 
 
 344, 598, 631, 665 
 Sixth; Lurton, Severens, Warrington. 
 Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. . . .230, 
 Revg. 23 Fed. 344. 373, 375, 436, 497, 506, 768, 815 
 
 Morrill v. Hardware, 142 Fed. 756; 74 C. C. A. 18 398 
 
 Affg. 131 Fed. 882. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Morrin v. Lawler, 99 Fed. 977; 40 C. C. A. 204 '. . .356 
 
 Modifying 90 Fed. 285. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Morrin v. White, 143 Fed. 519; 74 C. C. A. 466 523, 524, 573 
 
 Modifying 138 Fed. 68; see 90 Fed. 285; 99 Fed. 977. 
 Second; Wallace, Town.send, Coxe. 
 
 Morris v. McMillin, 112 U. S. 244; 28 L. Ed. 702; 5 S. Ct. 218 596 
 
 Woods. 
 
 Morse Chain v. Link Belt, 164 Fed. 331; 90 C. C. A. 650 358 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Mor.se Chain v. Link Belt, 189 Fed. 584; 110 C. C. A. 564 App. 203, 
 
 Affg. 182 Fed. 825; see 164 Fed. 331. 253, 871 
 
 Second; Lacombe, Coxe, Ward. 
 
 Morton v. American, 129 Fed. 916; 64 C. C. A. 367 792 
 
 Revg. 121 Fed. 132. 
 Third; Acheson, Dallas, Gray. 
 
 Morton v. Llewellyn, 164 Fed. 693; 90 C. C. A. 514 626, 795 
 
 Ninth; Gilbert, Ross, Morrow.
 
 CASES EXCERPTED, WITH ANNOTATIONS IxXV 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Morton Trust v. Standard, 177 Fed. 931; 101 C. C. A. 211. . . .App. 322, 
 
 469, 496, 624 
 Revg. 171 Fed. 672. 
 
 Third; Gray, Lanning, McPherson. 
 Mosher v. Joyce, 51 Fed. 441; 2 C. C. A. 322. . . .290, 297, 298, 844, 846 
 Affg. 45 Fed. 205; 31 Fed. 557. 
 Sixth; Brown, Jackson, Taft. 
 Hosier v. Mosler, 127 U. S. 354;, 32 L. Ed. 182; 8 S. Ct. 1148. .601, 773, 822 
 Affg. 22 Fed. 901. 
 Blatchford. 
 
 Mossberg v. Nutter, 124 Fed. 966; 60 C. C. A. 98 890 
 
 Affg. 118 Fed. 168. 
 First; Colt, Putnam, Aldrich. 
 
 Mossberg v. Nutter, 135 Fed. 95; 68 C. C. A. 257 223 
 
 Affg. 128 Fed. 55. 
 
 First; Colt, Putnam, Aldrich. 
 
 Motsinger v. Hendricks, 149 Fed. 995; 79 C. C. A. 505 442 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Mott V. Standard, 53 Fed. 819; 4 C. C. A. 28 207, 442, 595 
 
 Affg. 51 Fed. 81; see 48 Fed. 345. 
 Third; Dallas, Butler, Wales. 
 
 Mott V. Standard, 159 Fed. 135; 86 C. C. A. 325 631, 693 
 
 Affg. 152 Fed. 635. 
 
 Third; Dallas, Gray, Buffington. 
 
 Mowry v. Whitney, 81 U. S. 434; 20 L. Ed. 858 26 
 
 Miller. 
 Mowry v. Whitney, 81 U. S. 620; 20 L. Ed. 860. . . .230, 284, 290, 298, 
 Strong. 519, 683, 815, 847, 914, 915 
 
 Moyer v. Metal Stamping, 178 Fed. 830; 102 C. C. A. 504 App. 59 
 
 Revg. 169 Fed. 825. 
 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 Mueller v. Glauber, 184 Fed. 609; 106 C. C. A. 613. . . .App. 71, 195, 635 
 See 181 Fed. 1022. 
 
 Seventh; Baker, Seaman, Kohlsaat. 
 MuUer v. Lodge, 77 Fed. 621; 23 C. C. A. 357. . . .211, 245, 376, 525, 596, 
 Affg. 69 Fed. 738. 598, 663, 674 
 
 Sixth; Taft, Lurton, Hammond. 
 
 Municipal v. National, 107 Fed. 284; 46 C. C. A. 270 354 
 
 Revg. and affg. 97 Fed. 810; 99 Fed. 569. 
 Second; Wallace, Lacombe, Shipman. 
 
 Munson v. Mayor, 124 U. S. 601; 31 L. Ed. 586; 8 S. Ct. 622 591 
 
 Revg. 18 BlatcM. 237; 21 Blatchf. 342. 
 Gray. 
 Murphy V. Excelsior, 76 Fed. 965; 22 C. C. A. 658. . .224, 376, 473, 517, 608 
 Affg. 70 Fed. 491. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Murray v. Continental, 149 Fed. 989; 79 C. C. A. 499 159, 615 
 
 Revg. 126 Fed. 533. 
 Third; Dallas, Gray, Cross. 
 
 Murray v. Orr, 153 Fed. 369; 82 C. C. A. 445 283, 805, 827 
 
 Seventh; Grosscup, Baker, Seaman. Per Curiam. 
 
 Myers v. Fairbanks, 194 Fed. 971; 114 C. C. A. 546 App. 672 
 
 Seventh; Baker, Seaman, Anderson, 
 
 Myers v. Sternheim, 97 Fed. 625; 38 C. C. A. 345 332 
 
 Ninth; Gilbert, Ross, Hawley,
 
 Ixxvi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Mygatt V. Schauffer-Flaum, 191 Fed. 836; 112 C. C. A. 350 App. 334 
 
 Revg. 186 Fed. 343. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Nassau v. Sprague, 95 Fed. 415; 37 C. C. A. 146 * 537 
 
 Affg. 91 Fed. 786. 
 
 Second; Wallace, Shipman. Per Curiam. 
 
 Nathan v. D. L. & W., 157 Fed. 685; 85 C. C. A. 453 91 
 
 Revg. 146 Fed. 252. 
 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 
 Nathan v. Howard, 143 Fed. 889; 75 C. C. A. 97 460, 485 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Nat. Automatic v. Automatic, 105 Fed. 670; 44 C. C. A. 664 542 
 
 First; Colt, Putnam, Webb. Per Curiam. 
 Nat. Cash Register v. American, 53 Fed. 367; 3 C. C. A. 559. . . .252, 379, 
 
 468, 608, 641 
 Revg. 47 Fed. 212; disapproving 45 Fed. 481; approved in 70 Fed. 709. 
 Third; Dallas, Wales, Buffington. 
 Nat. Cash Register v. American, 178 Fed. 79; 101 C. C. A. 569. . . .App. 2, 
 
 18, 856, 899 
 Second; Lacombe, Coxe, Noyes. 
 Nat. Cash Register v. Boston, 156 U. S. 502, 39 L. Ed. 511; 15 S. Ct. 434 
 
 Brown. 651, 671 
 
 Nat. Cash Register v. Grobet, 153 Fed. 905; 82 C. C. A. 651 478 
 
 Revg. 148 Fed. 385. 
 Second; Wallace, Lacombe, Townsend. 
 
 Nat. Cash Register v. Leland, 94 Fed. 502; 37 C. C. A. 372 132, 401, 
 
 Revg. 77 Fed. 242. 406, 481 
 
 First; Putnam, Brown, Lowell. 
 
 Nat. Casket v. Stolts, 157 Fed. 392; 85 C. C. A. 300 74 
 
 Revg. 153 Fed. 765. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Nat. Casket v. Stolts, 135 Fed. 534; 68 C. C. A. 84 480, 890 
 
 Affg. 127 Fed. 158. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Nat. Casket v. Stolts, 174 Fed. 413; 98 C. C. A. 617 App. 327 
 
 See 127 Fed. 158; 135 Fed. 534; 153 Fed. 765; 157 Fed. 392. 
 Second; Lacombe, Coxe, Ward. 
 
 Nat. Chemical v. Swift, 104 Fed. 87; 43 C. C. A. 421 92, 822, 824 
 
 Affg. 100 Fed. 451. 
 
 Seventh; Woods, Grosscup, Seaman. 
 
 Nat. Company v. Belcher, 71 Fed. 876; 18 C. C. A. 375 78, 398 
 
 Modfg. 68 Fed. 665. 
 
 Third; Acheson, Butler, Wales. 
 
 Nat. Condit v. Roebling's, 158 Fed. 99; 85 C. C. A. 567 207, 496 
 
 Second; Lacombe, Coxe, Noyes. Per Curiam. 
 
 Nat. Dump Car v. Ralston, 172 Fed. 393; 97 C. C. A. 91 App. 376 
 
 Affg. 172 Fed. 399. 
 
 Sixth; Lurton, Severens, Warrington. 
 Nat. Enameling, Ex parte, 201 U. S. 156; 50 L. Ed. 707; 26 S. Ct. 404 
 Brewer. . . . .115, 116, 304, 540, 544 
 
 Nat. Enameling v. New England, 153 Fed. 184; 82 C. C. A. 359 816 
 
 Second; Wallace, Coxe, Holt. 
 Nat. Enameling v. New England, 151 Fed. 19; 80 C. C. A. 485. . . . 195, 
 Revg. 139 Fed. 643. 227, 240, 631, 676, 775 
 
 Second; Wallace, Coxe, Holt.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxvii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Nat. Electric v. General, 159 Fed. 934; 87 C. C. A. 462 622 
 
 Revg. 145 Fed. 193. 
 
 Seventh: Baker, Kohlsaat, Anderson. Per Curiam. 
 
 Nat. Folding Box v. Elsas, 86 Fed. 917; 30 C. C. A. 487 283, 674, 
 
 777, 8oU 
 Affg. 65 Fed. 1001, and 81 Fed. 197. 
 Second; Wallace, Shipman. 
 
 Nat. Folding Box v. Robertson, 104 Fed. 552; 44 C. C. A. 29 550 
 
 Dismissing app. from 99 Fed. 985. 
 
 Second; Lacombe, Shipman. Per Cm-iam. 
 
 Nat. Folding Box v. Stecher, 81 Fed. 395; 26 C. C. A. 448 344, 345 
 
 Affg. 77 Fed. 828. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Nat. Harrow v. Hench, 83 Fed. 36; 27 C. C. A. 349 744 
 
 Affg. 76 Fed. 667. 
 
 Third; Dallas, Butler, Kirkpatrick. 
 
 Nat. Harrow v. Quick, 74 Fed. 236; 20 C. C. A. 410 90, 256 
 
 Affg. 67 Fed. 130; see 40 Fed. 882. 
 Seventh; Woods, Jenkins, Sho waiter. 
 Nat. Hat Pouncing v. Hedden, 148 U. S. 482; 37 L. Ed. 529; 13 S. Ct. 680 
 Affg. 36 Fed. 317. • • • -239, 606, 624, 635 
 
 Brown. 
 
 Nat. Hollow Brake v. Interchangeable, 106 Fed. 693; 45 C. C. A. 544 74, 
 
 94 207, 222, 228, 234, 374, 378, 426, 443, 459, 468, 473, 507, 602, 
 629, 631, 635, 636, 674, 741, 919 
 Revg. 99 Fed. 758; affg. 99 Fed. 777. 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Nat. Machine v. Wheeler, 79 Fed. 432; 24 C. C. A. 663 §95 
 
 Revg. 72 Fed. 185. 
 Second; Wallace, Lacombe, Shipman. 
 Nat. Malleable Castings v. Buckeye, 171 Fed. 847; 96 C. C. A. 515. .App. 637 
 Affg. 171 Fed. 855. 
 
 Sixth; LuRTON, Severens, Warrington. 
 Nat. Mechan. Directory v. Polk, 121 Fed. 742; 58 C. C. A. 24. . . .496, 797 
 
 Ninth; Gilbert, Ross, Morrow. 
 Nat. Metal v. Bredin, 186 Fed. 490; 108 C. C. A. 468. . . .App. 288, 830, 
 
 837, 838, 846, 847 
 Modfg. 182 Fed. 654; see 147 Fed. 741; 157 Fed. 1003. 
 ■ Third; Buffington, Lanning, Young. 
 
 Nat. Newsboard v. Elkhart, 123 Fed. 431; 59 C. C. A. 471 447 
 
 Revg. 115 Fed. 328. 
 
 Seventh; Jenkins, Grosscup, Bunn. 
 
 Nat. Phonograph v. Lambert, 142 Fed. 164; 73 C. C. A. 382 851 
 
 Affg. 125 Fed. 388. 
 
 Seventh; Grosscup, Baker, Seaman. 
 Nat. Phonograph v. Schlegel, 128 Fed. 733; 64 C. C. A. 594. .513, 722, 899 
 Revg. 117 Fed. 624. 
 
 Eighth; Sanborn, Thayer, Van Devanter. 
 
 Nat. Regulator v. Powers, 160 Fed. 460; 87 C. C. A. 444 596 
 
 Revg. 152 Fed. 984. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Nat. Sewing Mach. v. Willcox, 74 Fed. 557; 20 C. C. A. 654 760 
 
 Third; Acheson, Wales, Green. 
 
 Nat. Surface Guard v. Merrill, 49 Fed. 157; 1 C. C. A. 214 696 
 
 Sixth; Brown, Jackson, Sage.
 
 Ixxviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Nat. Tube v. Aikin, 163 Fed. 254; 91 C. C. A. 114 603, 624, 654, 673 
 
 Affg. 157 Fed. 691 and 159 Fed. 1023. 
 Sixth; LuRTON, Severens, Richards. 
 
 Nat. Wire Bound Box v. Healy, 189 Fed. 49; 110 C. C. A. 613 App. 151, 
 
 Seventh; Grosscup, Baker, Seaman. 160, 168, 371 
 
 Naylor v. Alsop, 168 Fed. 911; 94 C. C. A. 315 App. 68, 101, 102, 476 
 
 Eighth; Sanborn, Van Devanter, Amidon. 
 
 Neenan v. Otis Elevator, 194 Fed. 414; 114 C. C. A. 376 App. 174, 371 
 
 Affg. 194 Fed. 415; see 180 Fed. 997. 
 Second; Lacombe, Coxe, Noyes. 
 
 Nelson v. Farmer, 95 Fed. 145; 37 C. C. A. 32. . 357 
 
 Modifying 91 Fed. 418. 
 Second; Wallace, Lacombe, Shipman. 
 
 Neptune v. National, 127 Fed. 563; 62 C. C. A. 345 437, 676, 908 
 
 Revg. 122 Fed. 75. 
 i' Third; Acheson, Gray, McPherson. 
 
 Neureuther v. Mineral Point, 179 Fed. 850; 103 C. C. A. 336 App. 599 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Newark v. Ryan, 102 Fed. 693; 42 C. C. A. 594 207, 360, 387, 592, 807 
 
 Revg. 96 Fed. 100. 
 Third; Acheson, Dallas, Gray. 
 
 New Departure v. Bevin, 73 Fed. 469; 19 C. C. A. 534 85, 672 
 
 Revg. 64 Fed. 859; see 118 Fed. 41; 127 Fed. 152. 
 Second; Wallace, Lacombe, Shipman. 
 
 New Departure v. Sargent, 127 Fed. 152; 62 C. C. A. 266 929 
 
 Affg. 118 Fed. 41; see 73 Fed. 469. 
 Second; Lacombe, Coxe, Holt. 
 
 New England v. Sturtevant, 150 Fed. 131; 80 C. C. A. 85 65 
 
 Revg. 140 Fed. 866. 
 
 Second; Lacombe, Townsend, Coxe. 
 New Marshall Engine Co. v. Marshall, 223 U. S. 473; 56 L. Ed. 513; 32 
 
 S. Ct. 238 App. 151, 714 
 
 Affg. 199 Mass. 546. 
 
 Lamar. ^_ 
 
 Newhall v. McCabe, 125 Fed. 919; 60 C. C. A. 629 567 
 
 Revg. 117 Fed. 621. 
 Second; Wallace, Lacombe, Townsend. 
 New Jersey Patent v. Schaefer, 178 Fed. 276; 101 C. C. A. 540. . . .App. 141 
 Affg. 159 Fed. 171. 
 
 Third; Gray, Buffington, Lanning. 
 New Process v. Maus, 122 U. S. 413; 30 L. Ed. 1193; 7 S. Ct. 1304. . . . 148, 
 Revg. 20 Fed. 725. 626, 638, 819 
 
 Blatchford. 
 
 Newton v. Buck, 77 Fed. 614; 23 C. C. A. 355 151 
 
 Revg. 72 Fed. 777. 
 
 Second; Lacombe, Shipman. Per Curiam. 
 Newton t;. Furst, 119 U. S. 373; 30 L. Ed. 442; 7 S. Ct. 369. . . .224, 375, 871 
 Affg. llBiss. 405. 
 
 Blatchford. ^ ^, ,^,^ 
 
 New York Belting v. New Jersey, 137 U. S. 445; 34 L. Ed. 741 ; 11 S. Ct. 193 
 Revg. 30 Fed. 785. ■ • -329, 707, 791 
 
 Bradley. 
 
 New York Belting v. New Jersey, 53 Fed. 810; 4 C. C. A. 21 331, 337 
 
 Revg. 48 Fed. 556; see 30 Fed. 785; see New York v. New Jersey, 137 
 U. S. 445. 
 Second; Lacombe, Shipman. .
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 New York Belting v. Sierer, 158 Fed. 819; 86 C. C. A. 79 88, 636 
 
 Affg. 149 Fed. 756. 
 
 Second; Lacombe, Ward, Noyes. 
 
 New York Filter v. Niagara, 80 Fed. 924; 26 C. C. A. 252 35 
 
 Affg. 77 Fed. 900. 
 
 Second; Wallace, Lacombe, Shipman; dissenting, Wallace. 
 New York Paper Bag v. Hollingsworth, 56 Fed. 224; 5 C. C. A. 490. . 574, 637 
 Affg. 48 Fed. 562. 
 
 First; Colt, Putnam, Webb. 
 
 Ney V. Ney, 69 Fed. 405; 16 C. C. A. 293 680 
 
 Sixth; Taft, Lurton, Severens. 
 
 Niagara v. Hibbard, 179 Fed. 844; 103 C. C. A. 330 App. 385, 758 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Nicholson v. Jenkins, 81 U. S. 452; 20 L. Ed. 777 154, 173 
 
 Davis. 
 
 Noonan v. Chester, 99 Fed. 90; 39 C. C. A. 426 376, 385 
 
 Sixth; Taft, Lurton, Day. 
 
 North Jersey v. Brill, 134 Fed. 580; 67 C. C. A. 380 695, 812 
 
 Revg. 124 Fed. 778; see 125 Fed. 526. 
 Third; Acheson, Dallas, Gray. 
 Norton v. Jensen, 49 Fed. 859; 1 C. C. A. 452. . . .223, 374, 398, 459, 497, 
 
 506, 643, 865 
 See Norton v. Can Co. 45 Fed. 637; modified in Wheaton v. Norton, 
 70 Fed. 833. 
 Ninth; Hanford, Hawley and Morrow. 
 Norton v. Jensen, 90 Fed. 415; 33 C. C. A. 141. . . .207, 354, 375, 473, 893 
 Affg. 81 Fed. 494. 
 
 Ninth; Ross, Morrow, Hawley. 
 
 Norton v. San Jose, 79 Fed. 793; 25 C. C. A. 194 532, 893 
 
 See 70 Fed. 833. 
 Ninth; Ross, Hawley, Morrow. 
 
 Norton v. San Jose, 83 Fed. 512; 27 C. C. A. 576 31 
 
 Ninth; Ross, Morrow, Hawley. 
 
 Noveltv V. Brookfield, 172 Fed. 221; 97 C. C. A. 25 App. 274, 342 
 
 See 170 Fed. 946. 
 
 Third; Gray, Buffington, Archbald. 
 Novelty v. Brookfield, 170 Fed. 946; 95 C. C. A. 516. . . .App. 290, 531, 
 Affg. 124 Fed. 551. 584, 604, 631, 838, 840, 841, 846 
 
 Third; Gray, Buffington, Archbald. 
 
 Nu Bone v. Spirella, 183 Fed. 984; 106 C. C. A. 324 App. 195, 485 
 
 Revg. 180 Fed. 470. 
 
 Third; Gray, Buffington, Banning. 
 
 Nutter V. Brown, 98 Fed. 892; 39 C. C. A. 332 627, 904 
 
 Affg. 96 Fed. 229. 
 First; Colt, Putnam, Webb. 
 
 O'Brien v. Foster, 159 Fed. 710; 86 C. C. A. 464 91, 253 
 
 Affg. 153 Fed. 585. 
 
 First; Colt, Putnam, Aldrich. 
 
 Office V. Fenton, 174 U. S. 492; 43 L. Ed. 1058; 19 S. Ct. 641 597, 710 
 
 Affg. Mfg. Co. V. Chose, 73 Fed. 831; 84 Fed. 893. 
 Revg. 12 App. J). C. 201. 
 Brown. 
 
 Ohl V. Falstrom, 175 Fed. 67; 99 C. C. A. 89 App. 189, 469 
 
 Affg. 166 Fed. 898. 
 
 Third; Gray, Buffington, Lanning.
 
 IXXX CASES EXCERPTEDj WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 O'Leary v. Utica, 144 Fed. 399; 75 C. C. A. 377 496, 700 
 
 Modifying 139 Fed. 330. 
 Second; Lacombe, Townsend, Coxe. 
 
 Olin V. Timkin, 155 U. S. 141; 39 L. Ed. 100; 15 S. Ct. 49 871 
 
 Revg. 37 Fed. 205. 
 Fuller. 
 Oliver v. Rumford, 109 U. S. 75; 27 L. Ed. 862; 3 S. Ct. 61. . . .41, 165, 751 
 
 Blatchford. 
 Olmsted y. Andrews, 77 Fed. 835; 23 C. C. A. 488. . . .207, 601, 623, 624, 636 
 Seventh; Jenkins, Bunn, Grosscup. 
 
 Oregon v. Excelsior, 132 U. S. 215; 33 L. Ed. 344; 10 S. Ct. 54 888 
 
 Blatchford. 
 O'ReUly v. Morse, 15 How. 62; 14 L. Ed. 601. . . .82, 88, 245, 342, 344, 423, 
 424, 434, 439, 459, 639, 683, 690, 795, 811, 902, 915 
 Taney. Dissenting Wayne, Nelson, Grier. 
 O'Rourkey. McMullen, 160 Fed. 933; 88 C. C. A. 115.... 107, 190, 222, 
 Revg. 150 Fed. 338. 635, 792 
 
 Second; Lacombe, Coxe, Ward. 
 
 Ward writing opinion on first hearing, affg. court below. Coxe 
 writing opinion on rehearing, revg. court below. 
 
 Orr V. Murray, 163 Fed. 54; 89 C. C. A. 492 .838 
 
 AfTg. 138 Fed. 564, and 153 Fed. 369. 
 Seventh; Grosscup, Baker, Seaman. 
 Osgood V. Metropolitan, 75 Fed. 670; 21 C. C. A. 491. . . .398, 595, 638, 706 
 Affg. 69 Fed. 620. 
 
 First; Colt, Putnam, Nelson. 
 
 Otis V. Portland, 127 Fed. 557; 62 C. C. A. 339 357, 358, 361 
 
 Affg. 119 Fed. 928. 
 
 First; Colt, Aldrich, Brown. 
 Overweight v. Improved, 94 Fed. 155; 36 C. C. A. 125. . . . 12, 378, 397, 
 - Affg. 86 Fed. 338. 398, 406, 411, 473, 734 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Overweight v. Vogt, 102 Fed. 957; 43 C. C. A. 80 675 
 
 Sixth; Lurton, Day, Severens. 
 Owens V. Twin City, 168 Fed. 259; 93 C. C. A. 561. . . .App. 68, 189, 208, 
 Eighth; Sanborn, Hook, Adams. 223, 277, 459 
 
 Ozan V. Union City, 207 U. S. 251; 52 L. Ed. 195; 28 S. Ct. 89. .App. 920 
 Revg. 145 Fed. 344; see 179 Fed. 710. 
 Peckham. 
 
 Pacific V. Alaska, 100 Fed. 462; 40 C. C. A. 494 523, 532, 544, 556, 557 
 
 Affg. 93 Fed. 072. 
 
 Ninth; Gilbert, Ross, Hawley. 
 Packard v. Lacing, 70 Fed. 66; 16 C. C. A. 639. . . .20, 67, 629, 636, 782 
 Mod. 67 Fed. 115. 
 First; Colt, Putnam, Nelson. 
 
 Packet V. Sickels, 65 U. S. 333; 16 L. Ed. 650 315, 893, 894 
 
 Campbell. 
 
 Packet V. Sickels, 72 U. S. 580; 18 L. Ed. 550 921 
 
 Nelson. Dissenting, Miller. 
 
 Packet V. Sickels, 86 U. S. 611; 22 L. Ed. 203 283, 287, 292 
 
 Miller. 
 
 Packing Company Cases, 105 U. S. 566; 26 L. Ed. 1172 667 
 
 Woods. 
 
 Page V. Dow, 168 Fed. 703; 94 C. C. A. 209 App. 344 
 
 Affg. 166 Fed. 473. 
 
 Second; Lacombe, Coxe, Ward. Per Curiam.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxxi 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Paine v. Snowden, 50 Fed. 776; 1 C. C. A. 122 334 
 
 Affg. 46 Fed. 189. 
 
 Third; Acheson, Wales, Green. 
 
 Paine v. Trask, 56 Fed. 233; 5 C. C. A. 497 396 
 
 Affg. 56 Fed. 231. 
 
 First; Putnam, Nelson, Webb. 
 
 Palmer v. Brown, 92 Fed. 925; 35 C. C. A. 86 353, 354 
 
 Revg. 84 Fed. 454. 
 
 First; Colt, Brown, Lowell. 
 Palmer v. Corning, 156 U. S. 342; 39 L. Ed. 445; 15 S. Ct. 381 .. . 608, 629 
 Waite. 
 
 Palmer v. Lozier, 90 Fed. 732; 33 C. C. A. 255 353, 355, 587 
 
 Revg. 84 Fed. 659; see 69 Fed. 346. 
 Sixth; Taft, Severens, Clark. 
 
 Palmer v. McDermaid, 54 Fed. 509; 4 C. C. A. 489 646 
 
 Seventh; Gresham, Woods, Bunn. Per Curiam. 
 Panzl V. Battle Island, 138 Fed. 48; 70 C. C. A. 474. . . .398, 484, 892, 905, 
 Revg. in part 132 Fed. 607. 909, 914 
 
 Second; Wallace, Townsend, Coxe. 
 
 Paper Bag Cases, 105 U. S. 766; 26 L. Ed. 959 273, 418, 764, 765, 796 
 
 Waite. 
 
 Pardy v. Hooker, 148 Fed. 631; 78 C. C. A. 403 369 
 
 Ninth; Gilbert, Ross, DeHaven. 
 
 Park V. Hartman, 153 Fed. 24; 82 C. C. A. 158 714, 744, 767, 898 
 
 Revg. 145 Fed. 358. 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Parker ^;. Stebler, 177 Fed. 210; 101 C. C. A. 380 App. 74, 77, 391 
 
 Ninth; Gilbert, Ross, Hunt. 
 
 Parker v. Yale, 123 U. S. 87; 31 L. Ed. 100; 8 S. Ct. 38 871, 878, 886 
 
 Affg. 21 BlatcM. 485. 
 
 TiT ATCPTPORn 
 
 Parks V. Booth, 102 U. S. 96; 26 L. Ed. 54. . . .245, 276, 284, 484, 576, 
 Clifford. 611,629,855,917 
 
 Parlin v. Mohne, 89 Fed. 329; 32 C. C. A. 221 77, 103 
 
 Revg. 84 Fed. 349. 
 
 Seventh; Woods, Showalter, Bunn. 
 
 Parramore v. Siegel-Cooper, 143 Fed. 516; 74 C. C. A. 386 86, 398, 460 
 
 See 114 Fed. 97; 186 U. S. 484; 116 Fed. 1022; 133 Fed. 230; 
 196 U. S. 641. 
 Second; Wallace, Coxe, Holt. 
 
 Parramore v. Taylor, 114 Fed. 97; 52 C. C. A. 45 638 
 
 Revg. 105 Fed. 965. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Parsons v. New Home, 134 Fed. 394; 67 C. C. A. 392 277 
 
 Affg. 125 Fed. 386. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Parsons v. Seelye, 100 Fed. 452; 40 C. C. A. 484 320, 389, 709, 789 
 
 See 92 Fed. 1005. 
 
 First; Colt, Putnam, Aldrich. 
 
 Parsons v. Seelye, 100 Fed. 455; 40 C. C. A. 486 246, 598, 635 
 
 Revg. 92 Fed. 1005. 
 
 First; Colt, Putnam, Aldrich. 
 
 Patent v. Glover, 141 U. S. 560; 35 L. Ed. 858; 12 S. Ct. 79 592 
 
 Affg. 31 Fed. 816. 
 Brewer.
 
 Ixxxii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Pattee v. Kingman, 129 U. S. 294; 32 L. Ed. 700; 9 S. Ct. 389. . . .665, 871 
 See 9 Fed. 821. 
 Fuller. 
 
 Patterson v. Commonwealth, 97 U. S. 501; 24 L. Ed. 1115. 920 
 
 Harlan. 
 
 Patterson v. United States, 181 Fed. 970; 104 C. C. A. 434 App. 779 
 
 Revg. 172 Fed. 241. 
 
 Ninth; Gilbert, Ross, Morrow. 
 
 Paulus V. Buck, 129 Fed. 594; 64 C. C. A. 162 150, 167, 76* 
 
 Eighth; Sanborn, Thayer, Hook. 
 
 Pearce v. Mulford, 102 U. S. 112; 26 L. Ed. 93 647 
 
 Strong. 
 
 Peck V. CoUins, 103 U. S. 660; 26 L. Ed. 512 887 
 
 Bradley. 
 
 Peerless v. White, 118 Fed. 827; 55 C. C. A. 502 470, 525 
 
 Revg. Ill Fed. 190. 
 Third; Acheson, Gray, Bradford. Dissent. Acheson. 
 
 Peifer v. Brown, 112 Fed. 435; 50 C. C. A. 331 207 
 
 Affg. 106 Fed. 938. 
 
 Third; Dallas, Gray, Kirkpatrick. 
 
 Pelouze V. American, 102 Fed. 916; 43 C. C. A. 52 329 
 
 Seventh; Woods, Grosscup, Seaman. 
 
 Pelton V. Doble, 190 Fed. 760; 111 C. C. A. 488 App. 603, 604 
 
 Affg. 186 Fed. 526. 
 
 Ninth; Gilbert, Morrow, Hanford. 
 
 Pelzer v. Binghamton, 95 Fed. 823; 37 C. C. A. 288 510, 547 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Penfield v. Chambers, 92 Fed. 630; 34 C. C. A. 579 378, 454, 506, 701 
 
 Sixth; Taft, Lurton, Clark. 
 Penfield v. Potts, 126 Fed. 475; 61 C. C. A. 371. . . . .195, 257, 298, 305, 386 
 Revg. in part 109 Fed. 323. 
 See 155 U. S. 597; 97 Fed. 78; 108 Fed. 379. 
 Sixth; Lurton, Severe ns, Richards. 
 
 Penn v. Columbia, 132 Fed. 808; 66 C. C. A. 127 124 
 
 Third; Acheson, Gray, Kirkpatrick. 
 
 Penn v. Conroy, 159 Fed. 943; 87 C. C. A. 149 414, 417, 819, 850 
 
 Third; Dallas, Gray, Cross. 
 
 Penn v. Conroy, 185 Fed. 511; 107 C. C. A. 611 App. 37, 883 
 
 Revg. 181 Fed. 697; see 155 Fed. 421; 159 Fed. 943. 
 Third; Gray, Buffington, Lanning. 
 
 Pennock v. Dialogue, 2 Pet. 1; 7 L. Ed. 327 2, 16, 135, 853 
 
 Story. 
 Pennsylvania v. Locomotive, 110 U. S. 490; 28 L. Ed. 222; 
 
 4S. Ct.220 671,676 
 
 Revg. 1 Bann. & A. 470; 6 Fish. P. C. 187; 10 Blatchf. 292. 
 . Gray. 
 
 Peoria V. Cleveland, 58 Fed. 227; 7 C. C. A. 197 873, 885 
 
 Affg. 47 Fed. 728. 
 
 Sixth; Taft, Barr, Sage. 
 
 Perry v. Chicago, 178 Fed. 449; 101 C. C. A. 433 App. 803 
 
 Revg. 170 Fed. 968. 
 
 Seventh; Grosscup, Baker, Anderson. 
 
 Peters v. Active, 129 U. S. 530; 32 L. Ed. 738; 9 S. Ct. 389 87, 671 
 
 Affg. 21 Fed. 319. 
 Blatchford.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxxiii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Peters v. Hanger, 127 Fed. 820; 62 C. C. A. 498 322 
 
 Fourth; Goff, Simonton, McDowell. 
 
 Peters v. Hanger, 134 Fed. 586; 67 C. C. A. 386 532 807 
 
 See 127 Fed. 820. 
 
 Fourth; Brawlev, Purnell, McDowell. 
 
 Peters v. Hanson, 129 U. S. 541; 32 L. Ed. 742; 9 S. Ct. 393 592, 671 
 
 Blatchford. 
 Philadelphia Novelty v. Weeks, 61 Fed. 405; 9 C. C. A. 555 606 
 
 Affg. 52 Fed. 816. 
 
 Second; Wallace, Lacombe, Shipman. 
 Philadelphia Trust v. Edison, 65 Fed 551; 13 C. C. A. 40. . . .299, 562 579 
 Affg. 60 Fed. 397. 
 
 See suits on same patent, 47 Fed. 454; 52 Fed. 300; 53 Fed. 592; 
 54 Fed. 678; 56 Fed. 496; 57 Fed. 616; 61 Fed. 834. 
 Third; Dallas, Butler, Wales. 
 Philip V. Nock, 80 U. S. 185; 20 L. Ed. 567 725 
 
 Philip V. Nock, 84 U. S. 460; 21 L. Ed. 679. . . .280, 290, 294, 297, 298, 299 
 
 SWAYNE. 
 
 Phillips V. Detroit, 111 U. S. 604; 28 L. Ed. 532; 4 S. Ct. 580. . . .656, 
 Woods. 657, 667, 707 
 
 Phillips V. Page, 65 U. S. 164; 16 L. Ed. 639 230, 672, 795 
 
 Nelson. 
 
 Phoenix v. Lanier, 95 U. S. 171; 24 L. Ed. 383 126 
 
 Strong. 
 
 Phoenix v. Spiegel, 133 U. S. 360; 33 L. Ed. 663; 10 S. Ct. 409 207 
 
 Affg. 26 Fed. 272. 
 Bl.\tchpord. 
 Phoenix Knitting Wks. v. Hygienic, 194 Fed. 696; —CCA.—.. .App. 335 
 Affg. 194 Fed. 717. 
 
 Third; Gray, Buffington, Lanning. 
 
 Piaget V. Headley, 108 Fed. 870; 48 C C A. 116 385, 451 
 
 Affg. 107 Fed. 134. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Pickering v. McCuUough, 104 U. S. 310; 26 L. Ed. 749 47, 320, 596 
 
 Matthews. 
 
 Pieper v. Electro-Dental, 160 Fed. 930; 88 C C A. 112 654, 668 
 
 Affg. 156 Fed. 672. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Rttsburg V. Pittsburg, 109 Fed. 644; 48 C C A. 580 195, 473, 490, 
 
 Third; Acheson, Dallas, Gray. 528 644 
 
 Pittsburg V. Roberts, 71 Fed. 706; 18 C C A. 302 691, 891 
 
 Affg. 69 Fed. 624, applying Loom Co. v. Higgins, 105 U. S. 591. 
 Third; Dallas, Butler, Wales. 
 Piatt V. Fire Extinguisher, 59 Fed. 897; 8 C C A. 357. . . . 153, 385, 513, 755 
 See Northwestern v. Philadelphia, 1 Ban. & A. 177. 
 Third; Dallas, Wales, Green. 
 
 Plotts V. Central, 143 Fed. 901; 75 C C A. 7 513 
 
 Ninth; Gilbert, Ross, Morrow. 
 Plummer v. Sargent, 120 U. S. 442; 30 L. Ed. 737; 7 S. Ct. 640. . . .380, 
 
 50"^ S''! 8*''? 881 
 Affg. Tucker v. Sargent, 19 Blatchf. 538. See same"' 
 patent Tucker v. Tucker, 4 Cliff. 397; Tucker v. 
 Burditt, 5 Fed. 808; Tucker v. Dana, 7 Fed. 213. 
 Matthews.
 
 Ixxxiv CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Pohl «. Anchor, 134 U. S. 381; 33 L. Ed, 953; 10 S. Ct. 577. .. . 420, 421, 422 
 Revg. 39 Fed. 782. 
 Construing 129 U. S. 151. 
 Blatchford. 
 Pope V. Gormully, 144 U. S. 238; 36 L. Ed. 420; 12 S. Ct. 637. . . .150, 
 Affg. 34 Fed. 885. 164, 169, 216, 499, 680, 752 
 
 Brown. 
 
 Pope V. Gormully, 144 U. S. 248; 36 L. Ed. 423; 12 S. Ct. 641 214 
 
 Affg. 34 Fed. 893. 
 Brown. 
 
 Pope V. Gormully, 144 U. S. 254; 36 L. Ed. 426; 12 S. Ct. 643 684 
 
 Affg. 34 Fed. 896. 
 Brown. 
 Portland v. Hermann, 160 Fed. 91; 87 C. C. A. 247. . . .47, 285, 378, 456, 525 
 Eighth; Sanborn, Van Devanter, Philips. 
 
 Potthoff V. Hansen, 174 Fed. 983; 98 C. C. A. 595 App. 871 
 
 Affg. 163 Fed. 56. 
 
 Third; Gray, Buffington, Lanning. 
 
 Potts, In re, 166 U. S. 263; 41 L. Ed. 994; 17 S. Ct. 520 897 
 
 Revg. 77 Fed. 454; see 71 Fed. 574. 
 Gray. 
 
 Potts V. Creager, 97 Fed. 78; 38 C. C. A. 47 64, 96, 868 
 
 Sixth; Taft, Lurton, Thompson. 
 Potts V. Creager, 155 U. S. 597; 39 L. Ed. 275; 15 S. Ct. 194. .617, 671, 696 
 Revg. 44 Fed. 680. 
 Brown. 
 
 Powder v. Powder, 98 U. S. 126; 25 L. Ed. 77 327, 821, 871, 883 
 
 Bradley. 
 
 Pratt V. Paris, 168 U. S. 255; 42 L. Ed. 458; 18 S. Ct. 62 724 
 
 Affg. 40 N. E. 1032. 
 Brown. 
 
 Press V. Westinghouse, 135 Fed. 767; 68 C. C. A. 469 305 
 
 Revg. 127 Fed. 822. 
 Third; Acheson, Dallas, Gray. 
 
 Pressed Steel v. Hanson, 137 Fed. 403; 71 C. C. A. 207 129, 151, 368 
 
 Affg. 128 Fed. 444. 
 Third; Acheson, Dallas, Gray. Dissenting, Acheson. 
 
 Preston v. Manard, 116 U. S. 661; 29 L. Ed. 763; 6 S. Ct. 695 669 
 
 Gray. 
 
 Prieth v. Campbell, 80 Fed. 539; 35 C. C. A. 624 570 
 
 Revg. 77 Fed. 976. 
 
 Third; Acheson, Dallas, Buffington. 
 
 Price V. Kelly, 154 U. S. 669; 26 L. Ed. 634; 14 S. Ct. 1208 399, 488 
 
 Waite. 
 
 Propfe V. Coddington, 108 Fed. 86; 47 C. C. A. 218 463 
 
 Affg. 105 Fed. 951. 
 Third; Acheson, Dallas, Gray. 
 
 Prouty V. Ruggles, 16 Pet. 336; 10 L. Ed. 985 473 
 
 Revg. 1 Story, 568. 
 Taney. 
 Providence v. Goodyear, 76 U. S. 805; 19 L. Ed. 828 891 
 
 SWAYNE. 
 
 Prudential v. Westinghouse, 158 Fed. 985; 86 C. C. A. 189 674 
 
 Affg. 155 Fed. 749. 
 Third; Dallas, Gray, Buffington.
 
 CASES EXCERPTED, WITH ANNOTATIONS IxXXV 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Quincy v. Krause, 151 Fed. 1012; 81 C. C. A. 290 704 
 
 Sixth; LuRTON, Severens, Richards. 
 Rahley v. Columbia, 122 Fed. 623; 58 C. C. A. 639 543, 714 
 
 Fourth; Goff, Simonton, McDowell. 
 Railroad v. Dubois, 79 U. S. 47; 20 L. Ed. 265. .. .317, 320, 387, 611, 770, 937 
 
 Strong. 
 Railroad v. Stimpson, 14 Pet. 448; 10 L. Ed. 535 260, 261, 614, 629, 
 
 Story. 638, 740, 795 
 Railroad v. Trimble, 77 U. S. 367; 19 L. Ed. 949 154, 176 
 
 SWAYNE. 
 
 Railroad v. Turrill, 94 U. S. 695; 24 L. Ed. 238 290, 532 
 
 (Cawood Patent.) 
 Strong. Dissenting, Field, Swayne. 
 
 Railroad v. Turrill, 101 U. S. 836; 25 L. Ed. 1009 284, 712 
 
 Waite. 
 Railroad v. TurriU, 110 U. S. 301; 28 L. Ed. 154; 4 S. Ct. 5. . .22, 835, 842 
 Waite. 
 
 Raih-oad v. Winans, 58 U. S. 31; 15 L. Ed. 27 271, 482 
 
 Campbell. 
 
 Railway v. Monroe, 147 Fed. 241; 77 C. C. A. 383 312 
 
 Affg. 145 Fed. 646. 
 
 Seventh; Baker, Seaman, Quarles. 
 
 Rainear v. Western, 159 Fed. 431; 86 C. C. A. 411 697 
 
 Affg. 156 Fed. 49. 
 
 Third; Dallas, Bupfington, Cross. 
 
 Rajah v. Grossman, 188 Fed. 73; 110 C. C. A. 143 App. 634 
 
 Affg. 188 Fed. 74. 
 
 Second; Coxe, Ward, Noyes. 
 
 Rand, McNally v. Exchange, 187 Fed. 984; 110 C. G. A. 322 App. 698 
 
 Seventh; Grosscup, Seaman, Carpenter; dissenting. Carpenter. 
 
 Ransome v. Hyatt, 69 Fed. 148; 16 G. G. A. 185 680 
 
 Reversing Blanchard v. Putnam, 8 Wall. 420, which overruled. 
 
 Corning v. Burden, 15 How. 265. 
 Revg. Norton v. Can Go. 59 Fed. 137. 
 Ninth; Gilbert, Knowles, Bellinger. 
 Ransome v. United Concrete, 177 Fed. 413; 101 C. C. A. 217. . . .App. 672 
 Revg. 165 Fed. 914. 
 
 Second; Lacombe, Ward, Noyes. 
 
 Rawson v. Hunt, 147 Fed. 239; 77 C. G. A. 381 874 
 
 Revg. 140 Fed. 716. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Rawson v. Western, 118 Fed. 575; 55 C. C. A. 403 31 
 
 See 81 Fed. 198; 83 Fed. 706; 86 Fed. 779; 171 U. S. 687. 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Raymond v. Keystone, 134 Fed. 866; 67 G. G. A. 492 495 
 
 Affg. 132 Fed. 30. 
 Third; Acheson, Dallas, Gray. 
 Seventh; Woods, Jenkins, Showalter. 
 Reckendorfer v. Faber, 92 U. S. 347; 23 L. Ed. 719. . . .104, 261, 313, 596, 
 
 617, 629, 656, 674 
 Hunt. Dissenting, Strong, Davis, Bradley. 
 
 Red Jacket v. Davis, 82 Fed. 432; 27 G. G. A. 204 397, 411, 476, 903 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Reece v. Fenwick, 140 Fed. 287; 72 G. C. A. 39 160, 163 
 
 First; Colt, Putnam, Aldrich.
 
 Ixxxvi CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Reece v. Globe, 61 Fed. 958; 10 C. C. A. 194. . .54, 214, 215, 222, 223, 375, 
 
 598 
 Revg. 54 Fed. 884. Following Winans v. Deninead, 15 How. 330. 
 First; Colt, Putnam, Nelson. 
 
 Reed v. Frew, 162 Fed. 887; 89 C. C. A. 577 : . .176, 928 
 
 Modifying 158 Fed. 552. 
 Second; Lacombe, Coxe, Noyes. 
 
 Reed v. Smith, 107 Fed. 719; 46 C. C. A. 601 566, 567, 570 
 
 Revg. 103 Fed. 796. 
 Second; Lacombe, Shipman. 
 
 Reed v. Smith, 123 Fed. 878; 59 C. C. A. 366 208 
 
 Affg. 117 Fed. 322; see 103 Fed. 796; 107 Fed. 719. 
 Second; Wallace, Lacombe, Coxe. 
 Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109 145, 411, 887, 889 
 
 ill TTi^TTORTi 
 
 Reedy v. Western, 83 Fed. 709; 28 C. C. A. 27 717, 720 
 
 Affg. 66 Fed. 163. 
 
 Sixth; Taft, Lurton, CioArk. 
 Rees V. Gould, 82 U. S. 187; 21 L. Ed. 39 468, 473 
 
 Regan v. Pacific,* 49 Fed. 68; 1 C. C. A. 169 160, 161, 163, 172 
 
 Revg. 47 Fed. 511. 
 
 Ninth; Deady, Hanford, Morrow. 
 
 Regensburg v. Portuondo, 142 Fed. 160; 73 C. C. A. 378 593 
 
 Affg. 136 Fed. 866. 
 Third; Acheson, Dallas, Gray. 
 Regent v. Penn, 121 Fed. SO; 57 C. C. A. 334.. . .208, 385, 579, 604, 635, 693 
 Eighth; Jenkins, Baker, Seaman. 
 
 Reineke v. Dixon-Woods, 102 Fed. 349; 42 C. C. A. 388 207, 246 
 
 Third; Acheson, Dallas, Gray. 
 
 Reizenstein v. Koopman, 178 Fed. 546; 101 C. C. A. 462 App. 760 
 
 Affg. 176 Fed. 922; see 152 Fed. 173. 
 Second; Lacombe, Ward, Noyes. 
 
 Rehable v. Stahl, 105 Fed. 663; 44 C. C. A. 657 App. 714 
 
 Seventh; Woods, Grosscup, Bunn. 
 
 Reynolds v. Buzzell, 96 Fed. 997; 37 C. C. A. 656 673 
 
 First; Colt, Putnam, Webb. 
 
 Reynolds v. Standard, 68 Fed. 483; 15 C. C. A. 516 358 
 
 Mg. 43 Fed. 304; revg. 65 Fed. 509. 
 Third; Acheson, Wales, Buffington. 
 
 Rich V. Baldwin, 133 Fed. 920; 66 C. C. A. 464 378, 507, 695 
 
 Sixth; Lurton, Severens, Richards. 
 Richards v. Chase, 158 U. S. 299; 39 L. Ed. 991; 15 S. Ct. 831 . . .313, 323, 
 
 325, 594, 669, 708 
 Affg. 40 Fed. 165. 
 Brown. 
 Richards y. Chase, 159 U. S. 477; 40 L. Ed. 225; 16 S. Ct. 53 . . . . 240, 672, 678 
 Affg. 158 U. S. 299. 
 Brown. 
 
 Richardson v. Osborne, 93 Fed. 828; 36 C. C. A. 610 732 
 
 Affg. 82 Fed. 95. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Richmond v. Atwood, 48 Fed. 910; 1 C. C. A. 144 630 
 
 Revg. 47 Fed. 219. 
 
 First; Colt, Carpenter, Aldrich.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxxvii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. . . .118, 139, 141, 303, 
 Rehearing s. c. 48 Fed. 910. 304, 371, 545 
 
 Revg. 47 Fed. 219; followed in 72 Fed. 545; explained 
 61 Fed. 208; see 75 Fed. 118, disapproving in part, 
 Jones V. Hunger, 50 Fed. 785. 
 First; Colt, Carpenter, Aldrich. 
 
 Rickard v. DuBon, 103 Fed. 868; 43 C. C. A. 360 702 
 
 Affg. 97 Fed. 96. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Ries V. Earth, 136 Fed. 850; 69 C. C. A. 528 506, 507, 674, 690 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Risdon v. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 S. Ct. 745 431, 649, 
 
 Brown. 688, 690, 770, 775, 819 
 
 Ritchie v. Obdyke, 65 Fed. 224; 12 C. C. A. 583 635 
 
 Affg. 65 Fed. 222. 
 
 Third; Acheson, Butler, Wales. 
 
 Robbins v. Illinois, 81 Fed. 957; 27 C. C. A. 21 842, 844 
 
 Affg. 78 Fed. 124. 
 
 Seventh; Woods, Jenkins. 
 
 Roberts v. Bennett, 136 Fed. 193; 69 C. C. A. 533 335, 712 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Roberts v. Ryer, 91 U. S. 150; 23 L. Ed. 267 598, 599, 672 
 
 Waite. 
 Robertson v. Blake, 94 U. S. 728; 24 L. Ed. 245 297, 298, 506 
 
 S WAYNE. 
 
 Robins v. American, 145 Fed. 923; 76 C. C. A. 461 93, 223, 453, 635 
 
 Affg. 142 Fed. 221. 
 
 Third; Dallas, Gray, Cross. 
 
 Robinson v. American, 135 Fed. 693; 68 C. C. A. 331 312, 802, 803 
 
 Affg. 132 Fed. 165. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Robinson v. American, 150 Fed. 331; 80 C. C. A. 127 893, 894 
 
 Revg. 142 Fed. 170. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Robinson v. American, 159 Fed. 131; 86 C. C. A. 321 89 
 
 See 150 Fed. 331. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Robinson v. Chicago, 118 Fed. 438; 55 C. C. A. 254 12, 305 
 
 Seventh; Jenkins, Grosscup. Per Curiam. 
 
 Rodwell V. Tuchfarber, 127 Fed. 138; 62 C. C. A. 252 408 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Roehr v. Bliss, 102 Fed. 692; 42 C. C. A. 593 615 
 
 Affg. 82 Fed. 98 and 98 Fed. 120. 
 
 Second; Wallace, Lacombe. Per Curiam. 
 Roemer v. Neumann, 132 U. S. 103; 33 L. Ed. 277; 10 S. Ct. 12. .345, 868 
 Affg. 26 Fed. 102. 
 Gray. 
 
 Roemer v. Peddie, 78 Fed. 117; 24 C. C. A. 39 217, 378 
 
 Affg. 71 Fed. 407. 
 
 Third; Dallas, Butler, Wales. 
 
 Roemer r. Peddie, 81 Fed. 380; 26 C. C. A. 440 51 
 
 Thir I; Acheson, Dallas, Buffington. 
 
 Roemer v. Ped lie, 132 U. S. 313; 33 L. Ed. 382; 10 S. Ct. 98 207 
 
 Affg. 27 Fed. 702. 
 Blatchford.
 
 Ixxxviii CASES excerpted, with annotations 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. .77, 321, 667, 789, 795, 852 
 Clifford. 
 
 Rogers v. Fitch, 81 Fed. 959-; 27 C. C. A. 23 65 616 630 
 
 Revg. 77 Fed. 885. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Rogers v. Mergenthaler, 64 Fed. 799; 12 C. C. A. 422 459 482 607 
 
 Affg. 57 Fed. 502; see 58 Fed. 693. 
 Third; Acheson, Dallas, Butler. 
 Root V. Railway, 105 U. S. 189; 26 L. Ed. 975. . . .283, 290, 291, 296, 371, 
 Matthews. 576, 718, 839 
 
 Root V. Third Avenue, 146 U. S. 210; 36 L. Ed. 946; 13 S. Ct. 100 416 
 Affg. 37 Fed. 673. 851, 853, 856, 857 
 
 Blatchford. 
 
 Rose V. Hirsch, 77 Fed. 469; 23 C. C. A. 246 453, 531, 634, 679 
 
 Revg. 71 Fed. 881. 
 Third ; Acheson, Butler, Wales. Dissenting, Acheson. 
 
 Rose V. Hirsh, 94 Fed. 177; 36 C. C. A. 132 288 
 
 Revg. 91 Fed. 149. 
 
 Third; Acheson, Kirkpatrick, Buffington. 
 
 Ross V. Dowden, 157 Fed. 681; 85 C. C. A. 449 214, 591 
 
 Eighth; Van Devanter, Adams, Riner. 
 
 Ross V. Fort Wayne, 63 Fed. 466; 11 C. C. A. 288 717, 720 
 
 Revg. 58 Fed. 404. 
 
 Seventh; Woods, Jenkins, Seaman. 
 
 Ross-Moyer v. Randall, 104 Fed. 355; 43 C. C. A. 578 221, 905 
 
 Sixth; Lurton, Day, Severens. 
 
 Roth V. Harris, 168 Fed. 279; 93 C. C. A. 581 App. 72, 277, 390, 625 
 
 Modfg. 162 Fed. 160. 
 
 Second; Lacombe, CoxE, Noyes. 
 
 Rousseau v. Peck, 78 Fed. 113; 24 C. C. A. 7 229 
 
 Affg. 66 Fed. 759. 
 
 Second; Lacombe, Shipman. 
 
 Rowe V. Blodgett, 112 Fed. 61; 50 C. C. A. 120 337, 928 
 
 Affg. 103 Fed. 873. 
 
 Second; Wallace, Lacombe. Per Curiam. 
 Rowell V. Lindsay, 113 U. S. 97; 28 L. Ed. 906; 5 S. Ct. 507. . .468, 573, 609 
 Affg. 6 Fed. 290. 
 Woods. 
 
 Rowland v. Bicseckei;, 185 Fed. 515; 107 C. C. A. 615 App. 755, 762 
 
 Affg. 181 Fed. 128. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Royer v. Coupe, 146 U. S. 524; 36 L. Ed. 1073; 13 S. Ct. 166 297, 
 
 Affg. 38 Fed. 113. 497, 520, 685, 814 
 
 Blatchford. 
 
 Royer v. Roth, 132 U. S. 201; 33 L. Ed. 322; 10 S. Ct. 58 609, 672 
 
 Blatchford. 
 
 Royer v. Schultz, 135 U. S. 319; 34 L. Ed. 214; 10 S. Ct. 833 492 
 
 Revg. 28 Fed. 850; 29 Fed. 281. 
 
 Bl.'VTCHFORD. 
 
 Rubber v. Goodvear, 76 U. S. 788; 19 L. Ed. 566. . . .26, 41, 222, 770, 789, 
 SwAYNE. 807, 823, 830, 832, 833, 834, 839, 843, 847, 873 
 
 Rubber v. Welling, 97 U. S. 7; 24 L. Ed. 942 47 
 
 Hunt. 
 
 Rubber Tip v. Howard, 87 U. S. 498; 22 L. Ed. 410. . . .649, 672, 683, 775 
 Waite.
 
 CASES EXCERPTED, WITH ANNOTATIONS Ixxxix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Rubber Tire v. Goodyear, 183 Fed. 978; 106 C. C. A. 318 App. 31, 576 
 
 See 164 Fed. 869; 116 Fed. 363; 151 Fed. 237; 157 Fed. 677. 
 Sixth; Severens, Warrington, Knappen. 
 Rubber Tire v. MUwaukee, 154 Fed. 358; 83 C. C. A. 336. . . .29, 744, 745, 
 
 764, 920 
 Affd. as to pat. 220 U. S. 428; revg. 142 Fed. 531. 
 Seventh; Grosscup, Baker, Kolilsaat. 
 
 Rubber Tire v. Victor, 123 Fed. So; 59 C. C. A. 215 31 
 
 Revd. as to validity of pat. 220 U. S. 428. 
 Sixth; LuRTOx, Severens, Richards. 
 
 Rubens v. Wheatfield, 93 Fed. 677; 35 C. C. A. 537 540 
 
 Seventh; Woods, Jenkins, Showalter. 
 Rude V. Westcott, 130 U. S. 152; 32 L. Ed. 888; 9 S. Ct. 463 . . 153, 292, 295 
 Field. 
 
 Rumford v. Hygienic, 159 Fed. 436; 86 C. C. A. 416 474, 711, 894 
 
 Revd. 215 U. S. 156. 
 
 Second; Lacombe, Coxe, Noj^es. 
 Rumford v. Hygienic, 215 U. S. 156; 54 L. Ed. 137; 30 S. Ct. 45. .App. 37, 
 Affg. 154 Fed. 65; revg. 159 Fed. 436. 386 » 
 
 Holmes. 
 
 Rumford v. New York, 134 Fed. 385; 67 C. C. A. 367 314, 700 
 
 Revg. in part 125 Fed. 231. 
 
 Second; Wallace, Townsend, Coxe. 
 
 Rupp V. Elliott, 131 Fed. 730; 65 C. C. A. 544. 474, 477, 559, 714 
 
 Sixth; LuRTON, Severens, Richards. 
 
 RusseU V. Dodge, 93 U. S. 460; 23 L. Ed. 973 260, 871 
 
 Field. 
 
 Russell V. Kern, 69 Fed. 94; 16 C. C. A. 154 Ill, 356, 717, 719, 810 
 
 Affg. 64 Fed. 581. 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Ryan v. Hard, 145 U. S. 241; 36 L. Ed. 691; 12 S. Ct. 919 696 
 
 Affg. 35 Fed. 831. 
 Blatchford. 
 
 Ryan v. Metropolitan, 144 Fed. 697; 75 C. C. A. 513 219 
 
 Affg. 139 Fed. 579. 
 
 Second; Townsend, Coxe. 
 
 Ryan v. Runyon, 93 Fed. 970; 36 C. C. A. 36 213 
 
 Third; Acheson, Dallas, Bufhngton. 
 
 Ryder v. Schlichter, 126 Fed. 487; 61 C. C. A. 469 219, 223, 506 
 
 Revg. 121 Fed. 98. 
 
 Third; Acheson, Grav, McPherson. 
 
 St. Claire v. Union Jack, 184 Fed. 989; 106 C. C. A. 667 App. 927 
 
 Seventh; Grosscup, Baker, Seaman. Per Curiam. 
 St. Germain v. Brunswick, 135 U. S. 227; 34 L. Ed. 122; 10 S. Ct. 822. .671 
 •Fuller. 
 
 St. Louis V. American, 156 Fed. 574; 84 C. C. A. 340 68, 207, 433, 525, 
 
 Eighth; Sanborn, Hook, Adams. 635, 673 
 
 St. Louis V. National, 87 Fed. 885; 31 C. C. A. 265. . . .216, 376, 473, 610, 680 
 Affg. 81 Fed. 706. 
 
 Sixth; Lurton, Severens, Clark. 
 St. Louis V. Sanitary, 161 Fed. 725; 88 C. C. A. 585. . . .384, 552, 571, 714 
 Eighth; Hook, Adams, Garland. 
 
 St. Louis V. Sanitarv, 178 Fed. 923; 103 C. C. A. 565 App. 205, 635, 
 
 759, 761, 764 
 Eighth; Adams, Riner, Hunger.
 
 XC CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 St. Paul V. Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803 131 
 
 392, 399, 638, 735, 762, 763, 809 
 Affg. 29 Fed. 790; 32 Fed. 290. >',,,, 
 
 Blatchford. 
 Safety Car Heating v. Consolidated, 174 Fed. 658; 98 C. C. A. 412. .App. 95, 
 
 728 
 Affg. 160 Fed. 476. 
 
 Second; Lacombe, Coxe, Ward. Per Curiam. 
 Sampson ?;. Donaldson, 69 Fed. 621; 16 C. C. A. 342 657 
 
 Affg. 62 Fed. 275. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Sander v. Rose, 121 Fed. 835; 58 C. C. A. 171 442 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 Sanders V. Hancock, 128 Fed. 424; 63 C. C. A. 166.. .95, 603, 631, 634, 937 
 Sixth; Lurton, Severens, Richards. 
 
 San Francisco v. Keating, 68 Fed. 351; 15 C. C. A. 476 603 
 
 Ninth.; Gilbert, Hanford, Hawley. 
 
 Sanitary v. Sprickerhoff, 139 Fed. 801; 71 C. C. A. 565 919 
 
 Revg. 131 Fed. 868. 
 Second; Wallace, Lacombe, Coxe. Dissenting, Wallace. 
 
 Sanitas v. Voigt, 139 Fed. 551; 71 C. C. A. 535 821, 823 
 
 Sixth; Lurton, Severens, Evans. 
 
 Santa Clara v. Prescott, 102 Fed. 501 ; 42 C. C. A. 477 195 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Sargent v. Hall, 114 U. S. 63; 29 L. Ed. 67; 5 S. Ct. 1021 207 
 
 Blatchford. 
 
 Saunders v. Allen, 60 Fed. 610; 9 C. C. A. 157 75 636 
 
 Affg. 53 Fed. 109. ' ' 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Sawyer v. Carpenter, 143 Fed. 976; 75 C. C. A. 162 420 
 
 Affg. 133 Fed. 238. 
 
 First; Colt, Putnam, Lowell. 
 
 Sayre v. Scott, 55 Fed. 971; 5 C. C. A. 366 503, 635, 828, 837 
 
 Third; Acheson, Butler, Wales. 
 Schenck v. Diamond, 77 Fed. 208; 23 C. C. A. 122 78 634 
 
 Affg. 71 Fed. 521. ' ' ' ' 
 
 Third; Acheson, Butler, Wales. 
 
 Schenck v. Diamond, 73 Fed. 22; 19 C. C. A. 352 App. 144 
 
 Third; Acheson, Wales, Green. 
 
 Schenck v. Singer, 77 Fed. 841; ^ C. C. A. 494 246. 606, 626 
 
 Affg. 68 Fed. 191. 
 
 Second; Wallace, Lacombe, Shipman. 
 Schillinger v. United States, 155 U. S. 163; 39 L. Ed. 108; 15 S. Ct. 85 
 
 ....429, 498 
 Affg. 24 Ct. CI. 278. 
 
 Brewer; dissenting opinion Harlan, Shiras. 
 
 Schmitt V. Nelson, 125 Fed. 754; 60 C. C. A. 522 176 
 
 Affg. 121 Fed. 93. 
 Third; Acheson, Gray, McPherson. Dissenting, Acheson. 
 Schock V. Olsen, 147 Fed. 229; 77 C. C. A. 371 207 
 
 Affg. 145 Fed. 633. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Schreiber v. Adams, 117 Fed. 830; 54 C. C. A. 128 203 
 
 Revg. Ill Fed. 182. 
 Eighth; Sanborn, Thayer, Lochren.
 
 CASES EXCERPTED, WITH ANNOTATIONS XCl 
 
 ( References are to sections. " App." refers to Appendix ] 
 
 Schreiber v. Grimm, 72 Fed. 671; 19 C. C. A. 67 363, 672 
 
 Affg. 65 Fed. 220; distinguishing Potts v. Creager, 155 U. S. 597; 
 Electric v. LaRue, 139 U. S. 601. 
 Sixth; Taft, Lurton, Severens. 
 Schumacher v. Cornell, 96 U. S. 549; 24 L. Ed. 676 473, 604 
 
 SWAYNE. 
 
 Schuvler v. Electric, 66 Fed. 313; 13 C. C. A. 491 212 
 
 Affg. 62 Fed. 588. 
 
 Second; Wallace, Lacombe. 
 
 Schwarzalder v. New York, 66 Fed. 152; 13 C. C. A. 380 200, 341, 822 
 
 Affg. 61 Fed. 840; see 62 Fed. 582. 
 Second; Wallace, Lacombe, Coxe. 
 
 Schwab V. Apstein, 178 Fed. 91; 101 C. C. A. 455 App. 74 
 
 Affg. 172 Fed. 149. 
 
 Second; Lacombe, Coxe, Ward, Per Curiam. 
 
 Schweichler v. Levison, 147 Fed. 704; 78 C. C. A. 92 207 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Scofield V. Browne, 158 Fed. 305; 85 C. C. A. 556 331 
 
 Third; DalLu\s, Gray, Buffington. 
 Scott V. Fisher, 145 Fed. 915; 76 C. C. A. 447. . .241, 481, 631, 644, 782, 911 
 Revg. 139 Fed. 137. 
 
 Second; Lacombe, Townsend, Coxe. Per Curiam. 
 
 Scott V. Hoe, 70 Fed. 781; 17 C. C. A. 410 503 
 
 Affg. 65 Fed. 606. 
 
 Third; Dallas, Butler, Wales. 
 
 Scott V. Lazell, 160 Fed. 472; 87 C. C. A. 456 389, 496 
 
 Second; Lacombe, Coxe, Ward. 
 
 Scott V. Laas, 150 Fed. 764; 80 C. C. A. 500 561, 895 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Seabury v. Am Ende, 152 U. S. 561; 38 L. Ed. 553; 14 S. Ct. 683 816, 
 
 Affg. 43 Fed. 672. 832, 833, 917 
 
 Shiras. 
 
 Seal II. Bookkeeper, 130 Fed. 449; 64 C. C. A. 651 762 
 
 Sixth; Lurton, Severens, Richards. 
 
 Seattle v. McNamara, 81 Fed. 863; 26 C. C. A. 652 287 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Sechler v. Deere, 113 Fed. 285; 51 C. C. A. 242 164, 165, 798 
 
 Seventh; Jenkins, Grosscup, Bunn. 
 
 Seller v. Fuller, 102 Fed. 344; 42 C. C. A. 386 546, 557, 579 
 
 Ninth; Gilbert, Ross, Hawley. Dissenting, Ross. 
 
 Seller v. Fuller, 121 Fed. 85; 57 C. C. A. 339 223, 616, 679 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Selden Patent, see Columbia v. Duerr, 184 Fed. 893. 
 
 Sessions v. Gould, 63 Fed. 1001; 11 C. C. A. 550 537 
 
 Affg. 49 Fed. 855; 60 Fed. 753. 
 
 Second; Brown, Wallace, Shipman. Per Curiam. 
 Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 799. . . .183, 
 
 197, 290, 344, 532, 626, 777, 846, 927 
 Revg. 21 Fed. 124. 
 
 SewaU V. Jones, 91 U. S. 171; 23 L. Ed. 275. . . .459, 499, 503, 529, 667, 
 Hunt. Dissenting, Clifford. 904, 906, 910 
 
 Seymour v. McCormick, 16 How. 480; 14 L. Ed. 1024. . .280, 290, 292, 298 
 Revg. 2 Blatchf. 240. 
 Grier.
 
 XCll CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Seymour v. McCormick, 60 U. S. 96; 15 L. Ed. 557 105 
 
 Nelson. Dissenting, Grier. 
 Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. . . . 11, 198, 230, 263, 317, 
 320, 374, 416, 433, 440, 472, 494, 526, 674, 745, 746, 748, 779, 
 Clifford. 795, 804, 807, 811, 862, 871, 880, 888, 889, 937 
 
 Sharp V. Reissner, 119 U. S. 631; 30 L. Ed. 507; 7 S. Ct. 417 230 
 
 Affg. 15 Fed. 919. 
 
 Shaw V. American, 108 Fed. 842; 48 C. C. A. 68 723, 807 
 
 Fifth; Pardee, McCormick, Shelby. 
 Shaw V. Cooper, 7 Pet. 292; 8 L. Ed. 689 16, 744, 858, 889 
 
 McLean. 
 
 Shaw V. Shriver, 86 Fed. 466; 30 C. C. A. 196 696 
 
 See 77 Fed. 992. 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 Sheffield v. D'Arcey, 194 Fed. 686; — C. C. A. — . . . .App. 65, 539, 615, 675 
 
 Sixth; Warrington, McCall, Sanford. 
 Shepard v. Carrigan, 116 U. S. 593; 29 L. Ed. 723; 6 S. Ct. 493 207 
 
 Woods. 
 Shepard v. Kinnear, 86 Fed. 638; 30 C. C. A. 315 752 
 
 Second; Wallace, Lacombe, Shipman. 
 Sheridan v. Law, 172 Fed. 223; 97 C. C. A. 27 App. 371 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Shickle V. St. Louis, 77 Fed. 739; 23 C. C. A. 433 476, 524 
 
 Revg. 70 Fed. 783. 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 
 Shoemaker v. Merrow, 61 Fed. 945; 10 C. C. A. 181 14, 207, 584, 810 
 
 Revg. 59 Fed. 120. 
 
 Third; Acheson, Butler, Wales. 
 
 Shute V. Morley, 64 Fed. 368; 12 C. C. A. 356 305 
 
 Modifying 62 Fed. 291 ; as to scope of decree entered, only. 
 
 First; Putnam, Nelson, Webb. Per Curiam. 
 Siemens v. Sellers, 123 U. S. 276; 31 L. Ed. 153; 8 S. Ct. 117 423 
 
 Bradley. 
 
 Siemens-Halske v. Duncan, 142 Fed. 157; 73 C. C. A. 375 213, 451, 
 
 797, 935 
 
 Seventh; Grosscup, Baker, Seaman. 
 Sigafus V. Porter, 85 Fed. 689; 29 C. C. A. 391 143 
 
 Second; Lacombe, Shipman. Per Curiam. 
 SUsby V. Foote, 14 How. 218; 14 L. Ed. 394 411, 492, 734, 737, 795 
 
 Curtis. Dissenting, McLean. 
 Silsby V. Foote, 61 U. S. 378; 15 L. Ed. 953 274, 284 
 
 Nelson. Dissenting, Grier, Daniel. 
 
 Simonds v. Hathorn, 93 Fed. 958; 36 C. C. A. 24 59, 214, 797 
 
 Modifying 90 Fed. 201. 
 
 First; Colt, Webb, Aldrich. 
 Simplex v. Wands, 115 Fed. 517; 53 C. C. A. 171 587 
 
 Eighth; Caldwell, Sanborn, Thayer. 
 Simplex Railway v. Pressed Steel, 189 Fed. 70; 110 C. C. A. 634. . .App. 222, 
 Affg. 177 Fed. 426. 341, 487 
 
 Second; Lacombe, Coxe, Ward. 
 Simpson v. Wilson, 4 How. 709; 11 L. Ed. 1169 175 
 
 Nelson. 
 Singer v. Brill, 54 Fed. 380; 4 C. C. A. 374 131, 404, 471, 629, 635 
 
 Ninth; McKenna, Gilbert, Knowles.
 
 CASES EXCERPTED, WITH ANNOTATIONS XClll 
 
 s, 
 
 [References are to sections. " App." refers to Appendix] 
 
 Singer v. Kramer, 192 U. S. 265; 48 L. Ed. 437; 24 S. Ct. 291. . . .207, 214, 
 Revg. 109 Fed. 652. 496, 938 
 
 White. 
 
 Singer v. Cramer, 109 Fed. 652; 48 C. C. A. 588 55, 295, 435, 894 
 
 Rev. in 192 U. S. 265. 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Singer v. June, 163 U. S. 169; 41 L. Ed. 118; 16 S. Ct. 1002 928 
 
 Revg. 41 Fed. 208. (See grounds stated and form of decree ordered.) 
 White. 
 
 Sipp V. Atwood-Morrison, 142 Fed. 149; 73 C. C. A. 367 74 
 
 Revg. 136 Fed. 859. 
 
 Third; Acheson, Dallas, Gray. 
 
 Sizer v. Many, 16 How. 98; 14 L. Ed. 861 130, 140, 276 
 
 Taney. 
 
 Slawson v. Grand, 107 U. S. 649; 27 L. Ed. 576; 2 S. Ct. 663 653, 708 
 
 Woods. 
 
 Sloan V. Portland, 139 Fed. 23; 71 C. C. A. 460 380, 437 
 
 Eighth; Sanborn, Hook, Lochren. 
 
 Sly V. RusseU, 189 Fed. 61; 110 C. C. A. 625 App. 2, 207, 228, 229, 
 
 Sixth; Knappen, McCall, Sater. 378, 379, 603 
 
 Smead v. Fuller, 57 Fed. 626; 6 C. C. A. 481 222 
 
 See same patent 44 Fed. 614. 
 Second; Lacombe, Shipman. 
 
 Smeeth v. Perkins, 125 Fed. 285; 60 C. C. A. 199 223 
 
 Third; Acheson, Dallas, Kirkpatrick. 
 
 Smidth V. Bonneville, 114 Fed. 262; 52 C. C. A. 148 630 
 
 Affg. 106 Fed. 930. 
 
 Third; Acheson, Dallas, Gray. 
 
 Smith V. Ely, 15 How. 137; 12 L. Ed. 634 807 
 
 Referred back on authority of O'Reilly v. Morse, 15 How. 62. 
 Taney. 
 
 Smith V. Goodyear, 93 U. S. 486; 23 L. Ed. 952 6, 626, 629, 667, 
 
 677, 889 
 Strong; dissenting Bradley; also Miller and Field. 
 
 Smith V. Macbeth, 67 Fed. 137; 14 C. C. A. 241 67, 207 
 
 Revg. &4 Fed. 797. 
 
 Second; Wallace, Lacombe, Shipman. 
 Smith V. Nichols, 88 U. S. 112; 22 L. Ed. 566. . .343, 431, 440, 506, 614, 867 
 
 S WAYNE. 
 
 Smith V. Ridgley, 103 Fed. 875; 43 C. C. A. 365 198, 384, 663, 765 
 
 Sixth; Lurton, Day, Severens. 
 Smith V. Sprague, 123 U. S. 249; 31 L. Ed. 141; 8 S. Ct. 122. .416, 851, 863 
 Revg. 12 Fed. 721. 
 Matthews. 
 
 Smith V. Whitman, 148 U. S. 674; 37 L. Ed. 606; 13 S. Ct. 768 332, 
 
 334, 337, 635 
 Revg. 38 Fed. 414. Discriminating 81 U. S. 511. 
 Fuller. 
 
 Smith & Davis v. Mellon, 58 Fed. 705; 7 C. C. A. 439 18, 321 
 
 Affg. 52 Fed. 149. 
 
 Eighth; Brewer, Sanborn. 
 
 Smyth V. Sheridan, 149 Fed. 208; 79 C. C. A. 166. . 397, 591 
 
 Second; Lacombe, Townsend, Coxe. Per Curiam. 
 
 Snead v. Scheble, 175 Fed. 570; 99 C. C. A. 578 App. 806 
 
 Sixth; Lurton, Severens, Warrington.
 
 XCIV CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Snow V. Railway, 121 U. S. 617; 30 L. Ed. 1004; 7 S. Ct. 1343. . . . 212, 223 
 Affg. 18 Fed. 602. 
 Matthews. 
 
 Societe v. Allen, 90 Fed. 815; 33 C. C. A. 282 544, 555 
 
 Affg. 84 Fed. 812. 
 
 Sixth; Taft, Lurton, Clark. 
 
 Societe v. Lueders, 142 Fed. 753; 74 C. C. A. 15 341, 505 
 
 Affg. 135 Fed. 102. 
 Second; Lacombe, Townsend, Coxe. Per Curiam. 
 
 Soehner v. Favorite, 84 Fed. 182; 28 C. C. A. 317 223, 331, 335, 337, 
 
 Sixth; Taft, Lurton, Severens. 646. 649 
 
 Solomons v. United States, 137 U. S. 342; 34 L. Ed. 667; 11 S. Ct. 88. . .366, 
 Affg. 21 Ct. CI. 479. 429 
 
 Brewer. 
 
 Solvay V. Michigan, 90 Fed. 818; 33 C. C. A. 285 661, 672 
 
 Sixth; Taft, Lurton, Clark. 
 
 Southern v. Earl, 82 Fed. 690; 27 C. C. A. 185 544, 549, 561, 579 
 
 Affg. 75 Fed. 609. 
 
 Ninth; Gilbert, Hawley, DeHaven. 
 
 Spear v. Kelsey, 158 Fed. 622; 85 C. C. A. 444 48, 606 
 
 Revg. 155 Fed. 976. 
 
 Third; Dallas, Gray, Buffington. 
 
 Sprague v. Nassau, 95 Fed. 821; 37 C. C. A. 286 570 
 
 Second; •Wallace, Shipman. Per Curiam. 
 
 Sprague v. Nassau, 102 Fed. 761; 42 C. C. A. 612 195 
 
 Affg. 97 Fed. 609; see 88 Fed. 82; 77 Fed. 432; 95 Fed. 821; 88 Fed. 
 82. 
 Second; Wallace, Lacombe, Shipman. 
 
 Sproull V. Pratt & Whitney, 108 Fed. 963; 48 C. C. A. 167 305, 760 
 
 Affg. 101 Fed. 265. 
 
 Second; Lacombe, Shipman. 
 
 Standard Cartridge v. Peters, 77 Fed. 630; 23 C. C. A. 367 72, 582, 
 
 Affg. 69 Fed. 408. 682, 811 
 
 Sixth; Taft, Lurton, Hammond. 
 Standard Caster v. Caster, 113 Fed. 162; 51 C. C. A. 109. . . .461, 615, 672 
 
 Sixth; Lurton, Day, Severens. 
 Standard Computing v. Computing, 126 Fed. 639; 61 C. C. A. 541. . . .437, 
 
 475, 591, 704 
 Sixth; Lurton, Severens, Cochran. 
 
 Standard Computing v. Computing, 145 Fed. 627; 76 C. C. A. 384 137 
 
 Sixth; Per Curiam. 
 
 Standard Elevator v. Crane, 76 Fed. 767; 22 C. C. A. 549 Ill, 116, 117, 
 
 158, 301, 327, 827 
 Seventh; Woods, Showalter, Bunn. Dissenting Woods. 
 
 Standard Elevator v. Crane, 56 Fed. 718; 6 C. C. A. 100 398, 562, 565 
 
 Seventh; Gresham, Woods, Jenkins. 
 
 Standard Elevator v. Ramsey, 143 Fed. 972; 75 C. C. A. 158 86, 507 
 
 Affg. 139 Fed. 28. 
 
 Third; Acheson, Dallas, Gray. 
 
 Standard Folding Bed v. Osgood, 58 Fed. 583; 7 C. C. A. 382 468 
 
 Revg. 51 Fed. 675. 
 
 First; Colt, Webb, Carpenter. 
 Standard Machine v. Rambo, 188 Fed. 323; 110 C. C. A. 301. . .App. 646 
 Affg. 181 Fed. 157. 
 
 Third; Gray, Lanning, McPherson.
 
 CASES EXCERPTED, WITH ANNOTATIONS XCV 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Standard Oil v. Southern, 54 Fed. 521; 4 C. C. A. 491. . . .479, 595, 596, 798 
 Affg. 48 Fed. 109; 42 Fed. 295. 
 
 Ninth; McKenna, Gilbert, Morrow. 
 Standard Sanitary v. Arrott, 135 Fed. 750; 68 C. C. A. 388. . . .381, 382, 
 Affg. 131 Fed. 457. 387, 752, 764, 807 
 
 Third; Dallas, Gray, Bradford. 
 Standard Scales v. Fairbanks, 125 Fed. 4; 60 C. C. A. 91 628 
 
 Third; Acheson, Dallas, Kirkpatrick. 
 Standard Sewing Mach. v. Leslie, 78 Fed. 325; 24 C. C. A. 107. . . .753, 761 
 
 Seventh; Woods, Jenkins, Sho waiter. 
 Standard Type^vriter v. Standard, 181 Fed. 500; 104 C. C. A. 248 
 
 Second; Ward, Noyes, Hand. App. 554, 555 
 Staples V. Lord, 148 Fed. 15; 78 C. C. A. 106 544 
 
 First; Colt, Putnam, Aldrich. Per Curiam. 
 Star V. Crescent, 179 Fed. 856; 103 C. C. A. 342 App. 10 
 
 Seventh; Grosscup, Baker, Seaman. 
 Star V. General, 111 Fed. 398; 49 C. C. A. 409 631, 635 
 
 Sixth; Liu-ton, Day, Severens. 
 
 Star V. General, 129 Fed. 102; 63 C. C. A. 604 545 
 
 See 109 Fed. 950. 
 
 Sixth; LuRTON, Severens, Richards. 
 
 Starrett v. Stevens, 100 Fed. 93; 40 C. C. A. 289 217 
 
 Affg. 96 Fed. 244. 
 
 First; Putnam, Webb, Aldrich. 
 
 State Bank v. Hillmans, 180 Fed. 732; 104 C. C. A. 98 App. 212 
 
 Affg. 180 Fed. 737. 
 
 Seventh; Grosscup, Baker, Seaman. 
 Stearns v. Russell, 85 Fed. 218; 29 C. C. A. 121 216, 672, 770 
 
 Sixth; Taft, Lurton, SevereiLs. 
 Stearns-Roger v. Brown, 114 Fed. 939; 52 C. C. A. 559 539, 542, 543, 
 
 Eighth; Caldwell, Sanborn, Thayer. 544, 551, 568 
 
 Steiner v. Adrian, 59 Fed. 132; 8 C. C. A. 44 672 
 
 Affg. 52 Fed. 731. 
 
 Sixth; BroAvn, Taft, Severens. 
 Steinmetz v. Allen, 192 U. S. 543; 48 L. Ed. 555; 24 S. Ct. 416. . . .348, 
 
 McKenna. 383, 770, 784, 786 
 
 Stephens v. Cady, 14 How. 528; 14 L. Ed. 528 157 
 
 See Stevens v. Gladding, 58 U. S. 447. 
 
 Nelson. 
 Stephenson v. Brooklyn, 114 U. S. 149; 29 L. Ed. 58; 5 S. Ct. 777. . . .607, 
 
 Woods. 654, 672 
 
 Stevens v. Gladding, 58 U. S. 447; 15 L. Ed. 155 829 
 
 See Stephens v. Cady, 14 How. 528. 
 
 Curtis. 
 Stevens w. Rodgers, 186 Fed. 631; 108 C. C. A. 495 App. 616, 795 
 
 Sixth; Severens, Cochran, Sater. 
 
 Stevenson v. McFassell, 90 Fed. 707; 33 C. C. A. 249 635 
 
 Revg. 88 Fed. 278. 
 
 Third; Acheson, Butler, Kirkpatrick. 
 Steward v. American, 215 U. S. 161; 54 L. Ed. 139; 30 S. Ct. 46. .App, 398, 
 Mg. 155 Fed. 731 and 740; revg. 128 Fed. 599. 780 
 
 Holmes. 
 
 Stewart v. Smith, 58 Fed. 580; 7 C. C. A 380 334 
 
 Affg. 55 Fed. 481. 
 
 Third; Acheson, Dallas, Wales.
 
 XCVl CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 StillweU-Bierce v. Eufaula, 117 Fed. 410; 54 C. C. A. 584. . . .223, 666, 673, 
 
 911 
 
 Sixth; Lurton, Day, Severens. 
 
 Stilwell V. McPherson, 183 Fed. 586; 106 C. C. A. 354 «. .App. 325 
 
 Revg. 172 Fed. 151; see 183 Fed. 426. 
 
 Second; Lacombe, Coxe, Ward. 
 Stimpson v. Railroad, 4 How. 380; 11 L. Ed. 1020 522 
 
 McLean. 
 Stimpson v. Railroad, 10 How. 329; 13 L. Ed. 441 136, 473 
 
 Daniel. 
 Stimpson v. Stimpson, 104 Fed. 893; 44 C. C. A. 241. . .385, 746, 764, 928 
 
 Sixth; Lurton, Day, Severens. 
 Stimpson v. Woodman, 77 U. S. 117; 19 L. Ed. 866. . .597, 661, 672, 675 
 
 Nelson. Dissenting, Clifford. 
 
 Stirrat v. Excelsior, 61 Fed. 980; 10 C. C. A. 216 211, 216, 224, 380 
 
 Affg. 60 Fed. 607. 
 
 Eighth; Caldwell, Sanborn. 
 Stohhnann v. Parker, 53 Fed. 925; 4 C. C. A. 109 440 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Stokes V. HeUer, 101 Fed. 266; 41 C. C. A. 335 211 
 
 Affg. 96 Fed. 104. ' 
 
 Third; Acheson, Dallas, Gray. 
 
 Stover V. Mast, 89 Fed. 333; 32 C. C. A. 231 539, 633 
 
 Revg. 85 Fed. 782. 
 
 Seventh; Woods, Sho waiter, Bunn. 
 Stow V. Chicago, 104 U. S. 547; 26 L. Ed. 816 188, 197 
 
 Woods. 
 Streator v. Wire Glass, 97 Fed. 950; 38 C. C. A. 573. . . .85, 496, 629, 632, 
 
 635, 819 
 
 Seventh; Brown, Woods, Jenkins, dissenting Woods. 
 Streit V. Kaiper, 143 Fed. 981; 75 C. C. A. 167 665 
 
 Sixth; Lurton, Severens, Richards. 
 
 Strom V. Weir, 83 Fed. 170; 27 C. C. A. 502 326, 696, 774 
 
 Affg. 75 Fed. 279. 
 
 Sixth; Taft, Lurton, Se\t:rens. 
 Stromberg-Carlson v. American, 127 Fed. 704; 62 C. C. A. 460 548 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Stuart V. Auger, 149 Fed. 748; 79 C. C. A. 60 79 
 
 Affg. 139 Fed. 935. 
 
 Third; Dallas, Gray, Bradford. 
 Suffolk V. Hayden, 70 U. S. 315; 18 L. Ed. 76 5, 287, 356 
 
 Nelson. 
 SuUivan v. Railroad, 94 U. S. 806; 24 L. Ed. 324 719, 793 
 
 Swayne. 
 Sutter V. Robinson, 119 U. S. 530; 30 L. Ed. 492; 7 S. Ct. 376. . . .207, 216 
 Revg. 8 Fed. 828; 11 Fed. 798. 
 
 Matthews. 
 
 Swain v. Holyoke, 109 Fed. 154; 48 C. C. A. 265 851, 853, 856 
 
 Affg. 102 Fed. 910. 
 
 First; Cour, Putnam, Webb. 
 
 Swain v. Holvoke, 111 Fed. 408; 49 C. C. A. 419 74 
 
 See 109 Fed. 154. 
 
 First; Colt, Putnam, Webb. 
 Swain v. Ladd, 102 U. S. 408; 26 L. Ed. 184 871 
 
 Bradley.
 
 CASES EXCERPTED, WITH ANNOTATIONS XCvli 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Tabor Co. v. Mumford Co. 191 Fed. 166; 111 C. C. A. 644 App. 207 
 
 Affg. 190 Fed. 179. 
 Third; Gray, BufEngton, Lanning. 
 
 Talbot V. Fear, 89 Fed. 197; 32 C. C. A. 186 639 
 
 Seventh; Woods, Showalter, Bunn. 
 
 Tannage o. Zahn, 70 Fed. 1003; 17 C. C. A. 552 618 
 
 Revg. 66 Fed. 986. Following Potts v. Creager, 155 U. S. 606. 
 Third; Acheson, Dallas, Butler. 
 
 Taylor v. Sawyer, 75 Fed. 301; 22 C. C. A. 203 245, 568, 673 
 
 Affg. 69 Fed. 837. 
 
 Third; Acheson, Wales, Green. 
 
 Tayntor v. Goetchius, 183 Fed. 130; 105 C. C. A. 420 App. 684 
 
 Affg. 171 Fed. 108. 
 
 Second; Lacombe, Coxe, Noyes. 
 Teese v. Huntington, 23 How. 2; 16 L. Ed. 479 795 
 
 Telephone Cases, 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778. . . .59, 147, 148, 
 
 347, 424, 589, 639, 643, 811, 819, 865, 906 
 Affg. 15 Fed. 448; 17 Fed. 604; affg. in part, 32 Fed. 214; affg. 22 Fed. 
 309; 25 Fed. 725; see 31 Fed. 729; 27 Fed. 663. 
 Waite; dissenting Bradley, Field, Harlan. 
 
 Temple v. Goss, 58 Fed. 196; 7 C. C. A. 174 207, 211, 598 
 
 Seventh; Woods, Jenkins, Baker. 
 
 Terhune v. PhiUips, 99 U. S. 592; 25 L. Ed. 293 696, 710 
 
 Field. 
 
 Thatcher v. Burtis, 121 U. S. 286; 30 L. Ed. 942; 7 S. Ct. 1034 596 
 
 Affg. 12 Fed. 569. 
 Matthews. 
 
 The Fair v. Dover, 166 Fed. 117; 92 C. C. A. 43 744 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Thibodeau v. Hildreth, 124 Fed. 892; 60 C. C. A. 78 368 
 
 Affg. 117 Fed. 146. 
 
 First; Putnam, Brown, Low^ell. 
 
 Thomas v. Rocker, 77 Fed. 420; 23 C. C. A. 211 207, 209, 224, 592 
 
 Revg. 68 Fed. 196. 
 
 Sixth; Taft, Lurton, Hammond. 
 
 Thomas v. St. Louis, 149 Fed. 753; 79 C. C. A. 89 325 
 
 Sixth; Lurton, Severens, Richards. 
 
 Thomasson v. Bumpass, 78 Fed. 491; 24 C. C. A. 180 202, 592 
 
 Affg. 74 Fed. 243. 
 
 Fourth; Simonton, Morris, Brawley. 
 
 Thompson v. Boisselier, 114 U. S. 1; 29 L. Ed. 76; 5 S. Ct. 1042 679 
 
 Revg. 19 BlatcM. 73. 
 Blatchford. 
 Thompson v. Bushnell, 96 Fed. 238; 37 C. C. A. 456. . .340, 344, 508, 701 
 Affg. in part 88 Fed. 81 ; see 66 Fed. 57. 
 
 Second; Wallace, Lacombe, Shipman. Dissenting Wallace. 
 
 Thompson v. Chestnut, 127 Fed. 698; 62 C. C. A. 454 44, 411 
 
 Affg. 119 Fed. 359. 
 
 Tliird; Acheson, Dallas, Gray. 
 
 Thompson v. Second Ave. 93 Fed. 824; 35 C. C. A. 620 229, 459 
 
 Revg. 89 Fed. 321. 
 
 Third; Achesox, Dallas, McPherson. 
 
 Thomson v. Bank, 53 Fed. 250; 3 C. C. A. 518 608, 624, 631, 756 
 
 Eighth; Caldwell, Sanborn, Shiras.
 
 XCviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Thomson t;. National, 65 Fed. 427; 12 C. C. A. 671 499, 598, 674 
 
 Third; Acheson, Butler, Wales. 
 
 Thomson v. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788 296, 
 
 Bradley. 305, 322, 790, 807, 844 
 
 Thomson-Houston v. Black River, 135 Fed. 759; 68 C. C. A. 461 9, 
 
 225, 263, 611, 889 
 Revg. 124 Fed. 495; see 86 Fed. 636; 101 Fed. 121. 
 Second; Wallace, Wheeler, Hazel. 
 
 Thomson-Houston v. Ehnira, 71 Fed. 396; 18 C. C. A. 145 12, 222, 348, 
 
 356, 631, 768 
 Revg. and affg. in part 69 Fed. 257. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Thomson-Houston v. Hoosick, 82 Fed. 461; 27 C. C. A. 419 236, 357, 
 
 360, 544, 561 
 Second; Wallace, Lacombe, Shipman. 
 
 Thomson-Houston v. Illinois, 152 Fed. 631; 81 C. C. A. 473 756 
 
 Affg. 143 Fed. 534. 
 
 Seventh; Grosscup, Baker, Seaman. 
 
 Thomson-Houston v. Jeffrey, 101 Fed. 121; 41 C. C. A. 247 360 
 
 Sixth; Taft, Lurton, Day. 
 
 Thomson-Houston v. Kelsey, 75 Fed. 1005; 22 C. C. A. 1 476, 523, 524 
 
 Modifying 72 Fed. 1016. Following Wilson v. Simpson, 9 How, 
 109; distg. Davis v. Edison, 60 Fed. 276; see 71 Fed. 192. 
 Second; Wallace, Lacombe, Shipman. 
 
 Thomson-Houston v. Lorain, 107 Fed. 711; 46 C. C. A. 593 213 
 
 Revg. 103 Fed. 641. 
 
 Second; Wallace, Lacombe. 
 
 Thomson-Houston v. Lorain, 117 Fed. 249; 54 C. C. A. 281 437, 851 
 
 Affg. 110 Fed. 654. 
 
 Second; Wallace, Townsend. 
 
 Thomson-Houston v. McLean, 153 Fed. 883; 82 C. C. A. 629 421 
 
 First; Putnam, Aldrich, Hale. 
 
 Thomson-Houston v. Nassau, 107 Fed. 277; 46 C. C. A. 263 616, 691 
 
 Affg. 98 Fed. 105; revg. 101 Fed. 587. 
 Second; Wallace, Lacombe, Shipman. 
 Thomson-Houston v. National, 65 Fed. 427; 12 C. C. A. 671. .499, 598, 674 
 
 Third; Acheson, Butler, Wales. 
 Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. A. 107. . . .252, 350, 475, 
 Affg. 78 Fed. 139. 476, 477, 506, 544, 561 
 
 Sixth; Taft, Lurton, Clark. 
 
 Thomson-Houston v. Union, 86 Fed. 636; 30 C. C. A. 313 195, 236 
 
 Revg. 78 Fed. 363. 
 
 Second; Wallace, Shipman. Per Curiam. 
 
 Thomson-Houston v. Western, 70 Fed. 69; 16 C. C. A. 642 496, 683 
 
 Affg. 65 Fed. 615. 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Thomson-Houston v. Western, 72 Fed. 530; 19 C. C. A. 1 222, 503, 614 
 
 Affg. 70 Fed. 69, which affirmed 65 Fed. 615. 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Thomson-Houston v. Western, 158 Fed. 813; 86 C. C. A. 73. . . .360, 361, 
 
 Second; Coxe, Ward, Noyes. Per Curiam. 544, 798 
 
 Thomson-Houston v. Western, 158 Fed. 813; 86 C. C. A. 73 (2nd case) 
 
 Second; Coxe, Ward, Noyes. . . . .541, 872, 876 
 
 Thorn V. Washburn, 159 U. S. 423; 40 L. Ed. 205; 16 S. Ct. 94 897 
 
 Shiras.
 
 CASES EXCERPTED, WITH ANNOTATIONS XCIX 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Tiemann v. Kraatz, 85 Fed. 437; 29 G. C. A. 257 212, 444, 614 
 
 Revg. 79 Fed. 322. 
 
 Eighth; Sanborn, Thayer, Phiups. 
 
 Tileson v. Vaughan, 149 Fed. 999; 79 C. C. A. 509 652 
 
 Seventh; Grosscup, Baker, Seaman. 
 Tilglunan v. Proctor, 102 U. S. 707; 26 L. Ed. 279 . . . . 107, 197, 510, 520, 
 
 765, 802, 815, 819, 822 
 OverruUng Mitchell v. Tilghman, 86 U. S. 287. 
 Bradley. 
 Tilghman v. Proctor, 125 U. S. 136; 31 L. Ed. 664; 8 S. Gt. 894 . . . .282, 
 
 292, 836, 837, 839, 847 
 Gray. Dissenting, Waite. 
 
 Timolat v. Franklin, 122 Fed. 69; 58 G. G. A. 405 568 
 
 Second; Wallace, Lacombe. 
 
 Timonev v. Buck, 84 Fed. 887; 28 G. G. A. 561 754 
 
 Affg. 78 Fed. 487. 
 
 Second; Wallace, Lacombe, Shipman. Per Guriam. 
 
 Tompkins v. International, 183 Fed. 773; 106 G. G. A. 529 App. 717 
 
 Second; Lacombe, Ward, Noyes. 
 
 Tompkins v. New York, 159 Fed. 133; 86 G. G. A. 323. 337 
 
 Revg. 154 Fed. 669. 
 
 Second; Lacombe, Goxe, Noyes. 
 Topliff V. Topliff, 145 U. S. 156; 36 L. Ed. 658; 12 S. Gt. 825. . . .91, 125, 
 Brown. 283, 619, 626, 836, 877, 883 
 
 Torrent v. Rodgers, 112 U. S. 659; 28 L. Ed. 842; 5 S. Gt. 501 877 
 
 Woods. 
 
 Torrey v. Hancock, 184 Fed. 61; 107 G. G. A. 79 App. 65, 88, 253, 591, 
 
 Revg. 170 Fed. 600; see 128 Fed. 424. 601, 623 
 
 Eighth; Hook, Adams, Reed. 
 
 Tower v. Eagle, 94 Fed. 361; 36 G. G. A. 294 436 
 
 Revg. 90 Fed. 662. 
 
 Second; Wallace, Lacombe, Shipman. 
 Transit Development Go. v. Gheatham, 194 Fed. 963; 114 G. G. A. 599 
 See 190 Fed. 202. . . . .App. 129, 288, 404 
 
 Second; Lacombe, Goxe, Ward. 
 
 Tremaine v. Hitchcock, 90 U. S. 518; 23 L. Ed. 97 289, 789, 831 
 
 Strong. 
 Tremolo Patent — see Tremaine v. Hitchcock, 90 U. S. 518. 
 
 Trent v. Risdon, 102 Fed. 635; 42 G. G. A. 529 478, 674 
 
 Modifying 92 Fed. 375. 
 
 Ninth; Gilbert, Ross, Hawlev. 
 
 Trethaway v. Berteles, 180 Fed. 730;" 104 G. G. A. 96 App. 629, 702 
 
 Revg. 175 Fed. 971. 
 
 Third; Lanning, Bradford, McPherson. 
 
 Troy V. Adams, 73 Fed. 301 ; 19 G. G. A. 505 207 
 
 Approving Troy v. Sharp, 54 Fed. 712. 
 
 Second; Wallace, Lacombe, Shipman. Per Guriam. 
 
 Troy V. Gorning, 14 How. 193; 14 L. Ed. 383 160, 165 
 
 Wayne; dissenting, Taney, Nelson. 
 
 Troy V. Odiorne, 58 U. S. 73; 15 L. Ed. 37 514, 867 
 
 Gatron. 
 
 Truman v. Holmes, 87 Fed. 742; 31 G. G. A. 215 207, 719 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 Tucker v. Spalding, 80 U. S. 453; 20 L. Ed. 515 404, 617 
 
 Miller.
 
 C CASES EXCERPTED, WITH ANNOTATIONS 
 
 [References are to sectiona. " App." refers to Appendix] 
 
 Turner v. Dover, 111 U. S. 319; 28 L. Ed. 442; 4 S. Ct. 401 87f 
 
 Matthews. 
 Turriil v. Railroad, 68 U. S. 491; 17 L. Ed. 668 223, 228, 404 
 
 Tuttle V. Claflin,'76 Fed. 227; 22 C. C. A. 138. . .282, 289, 290, 2^98, 435, 777 
 Affg. 19 Fed. 599. Approving Elm City v. Wooster, Fed. Cas. 4,415. 
 Second; Peckham, Lacombe, Shipman. 
 
 Tuttle V. Claflin, 82 Fed. 744; 27 C. C. A. 255 116 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Twentieth Century v. Taplin, 181 Fed. 96; 104 C. C. A. 156 App. 193, 
 
 207, 214, 487 
 Sixth; Severens, Warrington, Knappen. 
 Tyler v. Boston, 74 U. S. 327; 19 L. Ed. 93 373, 404, 914 
 
 Tyssowski v. Thayer, 174 Fed. 43; 98 C. C. A. 29 App. 596 
 
 Affg. 159 Fed. 165. 
 
 Seventh; Grosscup, Baker, Anderson. 
 Underwood v. Gerber, 149 U. S. 224; 37 L. Ed. 710; 13 S. Ct. 854. . . .12, 
 
 Affg. 37 Fed. 682. 266, 773 
 
 B LATCH FORD. 
 
 Underwood v. Typewriter, 180 Fed. 726; 104 C. C. A. 92 App. 207 
 
 Second; Lacombe, Coxe, Ward. 
 
 Union Biscuit v. Peters, 125 Fed. 601; 60 C. C. A. 337 636 
 
 Revg. 120 Fed. 679. 
 
 Eighth ; Sanborn, Thayer, Van De vanter. 
 Union Carbide v. Am. Carbide, 181 Fed. 104; 104 C. C. A. 522. . . .App. 59, 
 
 78, 635, 649, 774 
 Revg. 172 Fed. 120. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Union County v. Ozan, 179 Fed. 710; 103 C. C. A. 584 App. 920 
 
 See 127 Fed. 206; 145 Fed. 344; 207 U. S. 251. 
 
 Eighth; Hook, Adams, Garland; dissenting, Hook. 
 Union Edge Setter v. Keith, 139 U. S. 530; 35 L. Ed. 261; 11 S. Ct. 621 . .426, 
 Affg. 31 Fed. 46, which reversed 28 id. 715. 596, 911 
 
 Brown. 
 
 Union Iron Works v. Smith, 69 Fed. 827; 16 C. C. A. 451 652 
 
 Revg. 64 Fed. 583. 
 
 Eighth; Caldwell, Sanborn, Thaver. 
 Union Match v. Diamond, 162 Fed. 148; 89 C. C. A. 172. . . .202, 378, 426, 
 
 456, 680, 936 
 Eighth; Hook, Adams, Philips. 
 Union Metalhc Cartridge v. United States, 112 U. S. 624; 28 L. Ed. 828; 
 
 5 S. Ct. 475 344, 889 
 
 Revg. 7 Fed. 344. 
 Blatchtord. 
 Union Paper Bag v. Advance, 194 Fed. 126; 114 C. C A. 204. . .App. 456, 
 Affg. 194 Fed. 126. 468 
 
 Sixth; Warrington, Knappen, Donison. 
 
 Union Paper Bag v. Murphy, 97 U. S. 120; 24 L. Ed. 935 379, 526 
 
 Clifford. 
 
 Union Paper Collar v. VanDeusen, 90 U. S. 530; 23 L. Ed. 128. . . .367, 775, 
 
 Affg. 10 Blatchf. 119. 874, 880 
 
 Clifford. 
 
 Union Steam Pump v. Battle Creek, 104 Fed. 337; 43 C. C. A. 560. . . . 195, 
 
 Sixth; Lurton, Day, Severens. 382, 459, 651
 
 CASES EXCERPTED, WITH ANNOTATIONS CI 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Union Switch v. Johnson, 61 Fed. 940; 10 C. C. A. 176. . . 171, 753, 764, 897 
 See 43 Fed. 331; 51 Fed. 85; affg. 59 Fed. 20. 
 Third; Dallas, Butler, Green. 
 Union Typewriter v. Smith, 181 Fed. 966; 104 C. C. A. 430. . . .App. 358 
 Affg. 173 Fed. 288. 
 
 Third; Lanning, Bradford, McPherson. 
 
 Union Water Meter v. Desper, 101 U. S. 332; 25 L. Ed. 1024 219, 473 
 
 Bradley. 
 
 United Blue Flame v. Silver, 128 Fed. 925; 63 C. C. A. 110 544 
 
 Second; Lacombe, Townsend, Coxe. Per Curiam. 
 United Shirt & Collar v. Beattie, 149 Fed. 736; 79 C. C. A. 442. . . .72, 408, 
 Affg. 138 Fed. 136. 603, 699, 704 
 
 Second; Wallace, Lacombe, Coxe. 
 
 United Shoe Mach. v. Duplessis, 155 Fed. 842; 84 C. C. A. 76 411, 
 
 Affg. 148 Fed. 31. 424, 923 
 
 First; Colt, Putnam, Brown. 
 
 United Shoe :\Iach. v. Greenman, 146 Fed. 759; 77 C. C. A. 22 207 
 
 First; Colt, Putnam, Brown. 
 
 United Shoe Mach. v. Greenman, 153 Fed. 283; 82 C. C. A. 581 60 
 
 Affg. 145 Fed. 538. 
 
 First; Colt, Putnam, Aldrich. 
 United States v. Am. Bell, 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. . . .26, 
 Revg. 32 Fed. 591. 31, 317, 425, 745, 748, 804, 807, 894 
 
 Miller. 
 United States v. Am. Bell, 159 U. S. 548; 40 L. Ed. 255; 16 S. Ct. 69. .725 
 See 68 Fed. 542 revg. 65 Fed. 86. 
 Fuller. 
 United States v. Am. Bell, 167 U. S. 224; 42 L. Ed. 144; 17 S. Ct. 809. .26, 
 Affg. 68 Fed. 542. 143, 703, 727, 740, 745, 787 
 
 Brewer; dis. Harlan. 
 United States v. Berdan, 156 U. S. 552; 39 L. Ed. 530; 15 S. Ct. 420. .464, 
 Brewer. 715, 812, 840, 842, 847, 921 
 
 United States v. Burns, 79 U. S. 246; 20 L. Ed. 388 498 
 
 Field. 
 United States v. Goodyear, 76 U. S. 811; 19 L. Ed. 786 26 
 
 United States"?;. Harvey, 196 U. S. 310; 49 L. Ed. 492; 25 S. Ct. 240. . .385, 
 
 Affg. 38 Ct. CI. 662. 754, 762 
 
 Holmes. 
 
 United States v. Pahner, 128 U. S. 262; 32 L. Ed. 442; 9 S. Ct. 104. . . .714, 
 
 Affg. 20 Ct. CI. 432. 715 
 
 Bradley. 
 
 United States v. Seymour, 153 U. S. 353; 38 L. Ed. 742; 14 S. Ct. 849. .725 
 
 Gray. 
 United States v. Societe Anonyme &c. 224 U. S. 309; 56 L. Ed. 224; 32 S. Ct. 
 
 479 App. 137, 191, 468, 715 
 
 Affg. 43 Ct. CI. 25. 
 McKenna. 
 U, S. Consolidated v. Chaddock, 173 Fed. 577; 97 C. C. A. 527. . .App. 144 
 Ninth; Gilbert, Morrow, Hunt. 
 
 U. S. Coils, v. Griffin, 126 Fed. 364; 61 C. C. A. 334 744, 753, 920 
 
 Ninth; Gilbert, Ross, Hawley. 
 
 U. S. Credit v. American, 59 Fed. 139; 8 C. C. A. 49 225, 687, 698 
 
 Affg. 53 Fed. 818. 
 Second; Wallace, Lacombe, Shipman.
 
 Cii CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 U S. Envelope v. Sherman, 122 Fed. 464; 58 C. C. A. 624 507, 529 
 
 Affg. 116 Fed. 200. 
 
 First; Putnam, Aldrich, Brown. 
 
 U S Fastener v. Bradley, 149 Fed. 222; 79 C. C. A. 180 314, 692 
 
 Affg. 143 Fed. 523. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 U. S. Glass V. Atlas, 90 Fed. 724; 33 C. C. A. 254 519 
 
 Affg. 88 Fed. 493. 
 
 Third; Acheson, Dallas, Butler. 
 
 U. S. Gramophone v. Seaman, 113 Fed. 745; 51 C. C. A. 419 535, 543 
 
 Fourth; Simonton, Purnell, Waddill. 
 
 U. S. Hog V. North, 158 Fed. 818; 86 C. C. A. 78 380 
 
 First; Colt, Putnam, Aldrich. 
 
 U. S. Mineral v. ManviUe, 125 Fed. 770; 60 C. C. A. 288 854 
 
 Affg. 101 Fed. 145. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 U. S. Mitis V. Detroit, 122 Fed. 863; 59 C. C. A. 589 717, 729, 792 
 
 Sixth; Lurton, Severens, Richards. 
 U. S. Peg- Wood V. Sturtevant, 125 Fed. 378; 60 C. C. A. 244. .661, 694, 919 
 Affg. 122 Fed. 470. 
 
 First; Colt, Putnam, Aldrich. 
 U. S. Peg- Wood V. Sturtevant, 125 Fed. 382; 60 C. C. A. 248. . 194, 207, 210 
 Affg. 122 Fed. 476. 
 
 First; Colt, Putnam, Aldrich. 
 
 U. S. Repair v. Assyrian, 100 Fed. 965; 41 C. C. A. 123 100, 195, 207 
 
 Affg. 96 Fed. 235; see 87 Fed. 339; 95 Fed. 137. 
 Seventh; Woods, Jenkins, Bunn. 
 
 U. S. Repair v. Standard, 95 Fed. 137; 37 C. C. A. 28 77, 218, 819 
 
 Affg. 87 Fed. 339. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 U. S. Rifle V. Whitney, 118 U. S. 22; 30 L. Ed. 53; 6 S. Ct. 950 3, 8, 
 
 Affg. 14 Blatch. 94. Gray. 13, 261 
 
 Universal v. Comptograph, 146 Fed. 981; 77 C. C. A. 227 57 
 
 Revg. 142 Fed. 539. 
 Seventh; Grosscup, Baker, Seaman. 
 
 Universal v. Sonn, 154 Fed. 665; 83 C. C. A. 422 219, 431^ 456 
 
 Revg. 146 Fed. 517. 
 
 Second; Lacombe, Townsend, Coxe. 
 
 Untermeyer v. Freund, 58 Fed. 205; 7 C. C. A. 183. .65, 74, 281, 335, 336, 
 
 Affg. 50 Fed. 77. 827, 838, 846 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Vance v. Campbell, 66 U. S. 427; 17 L. Ed. 168. . . .237, 389, 405, 466, 473, 
 
 Nelson. 604 
 
 VanEpps v. United, 143 Fed. 869; 75 C. C. A. 77 92, 207, 431, 916 
 
 Revg. 137 Fed. 418. 
 Second; Wallace, Lacombe, Townsend. 
 
 Varley v. Osthcimer, 186 Fed. 171; 108 C. C. A. 303 App. 395 
 
 See 159 Fed. 655. 
 
 Second; Lacombe, Coxe, Ward. 
 
 Vermont v. Gibson, 56 Fed. 143; 5 C. G. A. 451 393, 513 
 
 Affg. 46 Fed. 488; 50 Fed. 423. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Victor V. American, 145 Fed. 350; 76 C. C. A. 180 9, 349, 350 
 
 Affg. 140 Fed. 860. 
 
 Second; Lacombe, Townsend, Coxe. Per Curiam.
 
 CASES EXCERPTED, WITH ANNOTATIONS CHI 
 
 [ References are to sections. " App." refers to Appendix 1 
 
 Victor V. Hawthorne, 178 Fed. 455; 101 C. C. A. 439. . . .App. 323, 615, 623 
 Affg. 168 Fed. 554; see 173 Fed. 617. 
 Third; Gray, Buffington, Lanning. 
 
 Victor V. The Fair, 123 Fed. 424; 61 C. C. A. 58 714, 761 
 
 Revg. 118 Fed. 609. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Victor V. Hoschke, 188 Fed. 326; 110 C. C. A. 304 App. 144, 251 
 
 Revg. 188 Fed. 330; see 213 U. S. 301; 213 U. S. 325; 140 Fed. 860: 
 145 Fed. 350; 146 Fed. 534; 148 Fed. 1022. 
 Second; Lacombe, Ward, Noyes. 
 
 Vinton v. Hamilton, 104 U. S. 485; 26 L. Ed. 807 666 
 
 Woods. 
 
 Virtue v. Creamery, 179 Fed. 115; 102 C. C. A. 413 App. 744, 924 
 
 Eighth; Sanborn, Adams, Riner. 
 
 Voightmann v. Perkinson, 138 Fed. 56; 70 C. C. A. 482 616, 683 
 
 Affg. 133 Fed. 934. 
 
 Seventh; Jenkins, Grosscup, Baker. 
 
 Volkmann v. Dohnhofif, 77 Fed. 978; 23 C. C. A. 599 224 
 
 Second; Lacombe, Shipman. 
 Von Schmidt v. Bowers, 80 Fed. 121; 25 C. C. A. 323.... 76, 108, 375, 
 Affg. 63 Fed. 572. 497, 603, 782 
 
 Ninth; Gilbert, Ross. 
 
 Voss V. Fisher, 113 U. S. 213; 28 L. Ed. 975; 5 S. Ct. 511 473 
 
 Woods. 
 Vrooman v. PenhoUow, 179 Fed. 296; 102 C. C. A. 484. . . .App. 204, 208, 
 See 186 Fed. 495. 435, 481, 704, 804 
 
 Sixth; Severens, Warrington, Knappen. 
 
 Vrooman v. Penhollow, 186 Fed. 495; 108 C. C. A. 502 App. 277 
 
 Rehearing of 179 Fed. 296. 
 
 Sixth; Severens, Knappen, Sanford. 
 
 Vulcan V. Smith, 62 Fed. 444; 10 C. C. A. 493 380, 462, 592, 624 
 
 Revg. 57 Fed. 934. 
 
 Ninth; Gilbert, Knowles, Hawley. 
 Wade V. Lawder, 165 U. S. 624; 41 L. Ed. 851; 17 S. Ct. 425. . . .App. 724 
 
 Fuller. 
 Wade V. Metcalf, 129 U. S. 202; 32 L. Ed. 661; 9 S. Ct. 271. . . .270, 509, 
 Affg. 16 Fed. 130. 756, 757, 932 
 
 Gray. 
 Wagner v. Wyckoff, 151 Fed. 585; 81 C. C. A. 129. . . .222, 435, 510, 644 
 Affg. and revg. in part 138 Fed. 108. 
 Second; Lacombe, Townsend, Coxe. 
 Wales V. Waterbury, 101 Fed. 126; 41 C. C. A. 250. . .841, 843, 845, 846 
 Modifying 87 Fed. 920. 
 Second; Wallace, Lacombe, Shipman. 
 
 Wall V. Leek, 66 Fed. 552; 13 C. C. A. 630 639, 683 
 
 Affg. 61 Fed. 291. 
 
 Ninth; McKenna, Gilbert, Hawley. 
 
 Walker v. CoUins, 102 Fed. 689; 42 C. C. A. 591 207 
 
 Third; Dallas, Gray, Br.\dford. 
 
 Wanamaker v. Enterprise, 53 Fed. 791 ; 3 C. C. A. 672 251, 252 
 
 Afi"g. 46 Fed. 854. Appro\nng Enterprise v. Sargent, 28 Fed. 185; 34 
 Fed. 134. 
 Third; Dallas, Wales, Buffington. 
 
 Warner v. Stewart, 185 Fed. 507; 107 C. C. A. 607 App. 594, 672 
 
 Seventh; Grosscup, Seaman, Carpenter.
 
 civ CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." tefers to Appendix ] 
 
 Warren v. Blake, 163 Fed. 263; 91 C. C. A. 19 598, 608, 631 
 
 Affg. 155 Fed. 285. 
 
 First; Colt, Putnam, Lowell. 
 
 Warren v. Casey, 93 Fed. 963; 36 C. C. A. 29 99 207 
 
 Affg. 91 Fed. 653. 
 
 Third; Acheson, Buffington, Kirkpatrick. 
 
 Warren v. City, 166 Fed. 309; 92 C. C. A. 227 629, 779, 851 
 
 Sixth; LuRTON, Severens, Cochran. 
 
 Warren v. Keep, 155 U. S. 265; 39 L. Ed. 144; 15 S. Ct. 83 286, 298, 
 
 Shiras. 299, 830 
 
 Warren v. Rosenblatt, 80 Fed. 540; 25 C. C. A. 625 601, 629 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Warren Bros. v. City of N. Y. 187 Fed. 831; 109 C. C. A. 591 App. 253, 
 
 535 
 Affg. 187 Fed. 832; see 166 Fed. 309; 172 Fed. 414. 
 Second; Lacombe, Ward, Noyes. 
 Warren Webster y. Dunham, 181 Fed. 836; 104 C. C. A. 346. . .App. 598, 671 
 
 Eighth; Sanborn, Adams, Reed. 
 Washburn v. Beat Em All, 143 U. S. 275; 36 L. Ed. 154; 12 S. Ct. 443. . .61, 
 
 356, 408, 811, 812, 864, 866, 887 
 See 33 Fed. 261; 16 Fed. 661; 24 Fed. 23; revg. 33 Fed. 261. 
 Brown; dissenting Field. 
 
 Washer Co. v. Cramer, 169 Fed. 629; 95 C. C. A. 157 App. 223 
 
 Affg. 163 Fed. 296. 
 
 Third; Dallas, Gray, BufRngton. 
 Waterbury v. Aston, 183 Fed. 120; 105 C. C. A. 410. . . .App. 87, 136, 462, 
 Affg. 172 Fed. 672. 622, 625, 693 
 
 Second; Lacombe, Coxe, Ward. 
 
 Waterman v. Lockwood, 125 Fed. 497; 60 C. C. A. 333 43 
 
 Affg. 123 Fed. 303. 
 
 First; Colt, Putnam, Brown. 
 Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. . . 150, 
 Affg. 29 Fed. 316. 153, 164, 165, 176, 745, 750, 752, 765, 778 
 
 Gray. 
 
 Waterman v. Parker, 107 Fed. 141; 46 C. C. A. 203 110, 723 
 
 Affg. 100 Fed. 544. 
 
 Third; Gray, Bradford, McPherson. 
 
 Waterman v. Shipman, 55 Fed. 982; 5 C. C. A. 371. . . . 151, 398, 411, 510, 
 
 Second; Wallace, Shipman. 511, 751, 765, 778 
 
 Watson V. Cincinnati, 132 U. S. 161; 33 L. Ed. 295; 10 S. Ct. 45. . . .47, 206, 
 
 Affg. 23 Fed. 443. 653 
 
 Fuller. 
 
 Watson V. Stevens, 51 Fed. 757; 2 C. C. A. 500 635, 668 
 
 Revg. 47 Fed. 117. 
 First; Gray, Colt, Putnam. 
 
 Way V. McClarin, 96 Fed. 416; 37 C. C. A. 516 655 
 
 Affg. 91 Fed. 663. 
 
 Third; Acheson, Bradford, Buffington. 
 Wayne v. Benbow-Brammer, 168 Fed. 271; 93 C. C. A. 573. . . .App. 97, 
 
 158, 208, 441, 459, 625, 673 
 Affg. 1.57 Fed. 559. 
 
 Eighth; Sanborn, Van Devanter, Munger. 
 Weatherhead v. Coupe, 147 U. S. 322; 37 L. Ed. 188; 13 S. Ct. 312. .. .768 
 Revg. 16 Fed. 673; 37 Fed. 16. 
 Blatchford.
 
 CASES EXCERPTED, WITH ANNOTATIONS CV 
 
 [ Referemces are to sections. " App." refers to Appendix ] 
 
 Webber v. Virginia, 103 U. S. 344; 26 L. Ed. 565 920 
 
 Field. 
 
 Webster v. General, 115 Fed. 497; 53 C. C. A. 229 214 
 
 Affg. 113 Fed. 756. 
 
 First; Colt, Putnam, Aldrich. 
 
 Weierman v. Shaw, 157 Fed. 928; 85 C. C. A. 222 649 
 
 Revg. 154 Fed. 67. 
 
 Third; Dallas, Gray, Buffington. 
 
 Weissenthanner v. Dodge, 161 Fed. 915; 88 C. C. A. 388 787 
 
 Affg. 156 Fed. 365. 
 
 Third; Dallas, Gray, Buffington. 
 Weld V. Johnson, 147 Fed. 234; 77 C. C. A. 376 435 
 
 First; Colt, Putnam, Brown. 
 Wells V. Curtis, 66 Fed. 318; 13 C. C. A. 494. ...86, 200, 245, 374, 375, 
 
 468, 598, 605, 606, 654, 908 
 
 Sixth; Lurton, Barr, Severens. 
 Wells V. Henderson, 67 Fed. 930; 15 C. C. A. 84 3, 817 
 
 Seventh; Woods, Bunn, Seaman. 
 Welsbach v. American, 98 Fed. 613; 39 C. C. A. 185 82 
 
 Second; Wallace, Shipman. 
 
 Welsbach v. Apollo, 96 Fed. 332; 37 C. C. A. 508 520 
 
 See 94 Fed. 1005. 
 
 Second; Wallace, Shipman. 
 
 Welsbach v. Cosmopolitan, 104 Fed. 83; 43 C. C. A. 418 250, 544, 704 
 
 Affg. 100 Fed. 648. 
 
 Seventh; Woods, Grosscup, Bunn. 
 Welsbach v. Union, 101 Fed. 131; 41 C. C. A. 255 521 
 
 Second; Wallace, Shipman. Per Curiam. 
 Werner v. King, 96 U. S. 218; 24 L. Ed. 613 503, 602 
 
 Miller. 
 Wessel V. United, 139 Fed. 11; 71 C. C. A. 423 112, 441 
 
 Sixth; Lurton, Severens, Wanty. 
 
 West V. Frank, 149 Fed. 423; 79 C. C. A. 359 332 
 
 Affg. 146 Fed. 388. . 
 
 Second; Laeombe, Townsend. Coxe. Per Curiam. 
 Western Electric v. Ansonia, 114 U. S. 447; 29 L. Ed. 210; 5 S. Ct. 447. .218, 
 
 Woods. 676, 822 
 
 Western Electric v. Fowler, 177 Fed. 224; 101 C. C. A. 394 App. 30 
 
 See 144 Fed. 684. 
 
 Seventh; Grosscup, Baker, Seaman. 
 Western Electric v. Galesburg, 144 Fed. 684; 75 C. C. A. 500 659 
 
 Seventh; Grosscup, Baker, Landis. 
 Western Electric v. LaRue, 139 U. S. 601; 35 L. Ed. 294; 11 S. Ct. 670 
 Affg. '28 Fed. 85; 31 Fed. 80. ... .616, 634 
 
 Brown. 
 Western Electric v. North, 135 Fed. 79; 67 C. C. A. 553. . .277, 308, 481, 624, 
 
 Sixth; Lurton, Severens, Richards. 700, 748, 800 
 
 Western Electric v. Robertson, 142 Fed. 471; 73 C. C. A. 587. . . .496, 510, 
 
 Second; Wallace, Laeombe, Townsend. 641, 761, 767 
 
 Western Electric v. Rochester, 145 Fed. 41; 75 C. C. A. 313. . . .398, 698 
 Affg. 132 Fed. 814. 
 
 Second; Wallace, Laeombe, Townsend. Per Curiam. 
 Western Electric v. Sperry, 58 Fed. 186; 7 C. C. A. 164. .. .3, 19, 20, 54, 606 
 Rehearing denied 59 Fed. 295. 
 
 Seventh; Fuller, Woods, Jenkins.
 
 CVl CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Western Electric v. Sperry, 59 Fed. 295; 8 C. C. A. 129 361 
 
 Rehearing s. c. 58 Fed. 186 approved; disapproving Roll Paper Co. v. 
 Kopp, 44 Fed. 609. 
 Seventh; Fuller, Woods, Jenkins. 
 
 Western Electric v. Standard, 84 Fed. 654; 28 C. C. A. 512 531, 602 
 
 Affg. 81 Fed. 192. 
 
 Seventh; Woods, Jenkins, Bunn. 
 
 Western Electric v. Williams-Abbott, 108 Fed. 952; 48 C. C. A. 159 116, 
 
 352, 353, 542 
 Revg. 83 Fed. 842. 
 
 Sixth; Lurton, Day, Severens. 
 
 Western Glass v. Schiuertz, 185 Fed. 788; 109 C. C. A. 1 App. 2, 4, 26, 
 
 61, 817 
 Affg. one case and revg. one case 178 Fed, 977; see 97 Fed. 950; 144 
 Fed. 117; 168 Fed. 73; 178 Fed. 945; 178 Fed. 949. 
 Seventh; Grosscup, Baker, Seaman. 
 
 Western Telephone v. American, 131 Fed. 75; 65 C. C. A. 313 363, 452 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Western Telephone v. Swedish, 194 Fed. 104; 114 C. C. A. 182. .App. 452 
 Affg. 163 Fed. 308; see 131 Fed. 75. 
 Seventh; Grosscup, Baker, Seaman. 
 
 Western Union v. Am. Bell, 125 Fed. 342; 60 C. C. A. 220 897 
 
 Revg. 105 Fed. 684. 
 
 First; Putnam, Aldrich, Brown. 
 Westinghouse v. AUis- Chalmers, 176 Fed. 362; 100 C. C. A. 408. . .App. 271, 
 
 631, 690 
 Revg. 168 Fed. 91. 
 Third; Gray, Buffington, McPherson. 
 Westinghouse v. Boyden, 170 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707 
 . . . .207, 229, 380, 426, 496, 503, 532, 641, 644, 686, 817 
 Revg. and modifying 66 Fed. 997; Affg. 70 Fed. 816; see 77 Fed. 616. 
 Brown; dissenting Shiras, Brewer, Gray, McKenna. 
 
 Westinghouse v. Burton, 77 Fed. 301; 23 C. C. A. 174 App. 546 
 
 See 63 Fed. 962. 
 
 First; Colt, Nelson, Webb. 
 
 Westinghouse v. Catskill, 121 Fed. 831; 58 C. C. A. 167 74, 76 
 
 Revg. 110 Fed. 377. i 
 Second; Wallace, Townsend, Coxe. 
 
 Westinghouse v. Christensen, 104 Fed. 622; 44 C. C. A. 92 542 
 
 Second; Lacombe, Shipman. Per Curiam. 
 
 Westinghouse v. Christensen, 128 Fed. 437; 63 C. C. A. 179 93 
 
 Revg. in part 123 Fed. 306; see 113 Fed. 594. 
 Second; Wallace, Townsend, Coxe. 
 
 Westinghouse v. Condit, 194 Fed. 427; 114 C. C. A. 389 App. 208 
 
 Affg. 194 Fed. 430; see 167 Fed. 546; 143 Fed. 966; 169 Fed. 634. 
 Second; Lacombe, Coxe, Notes. 
 
 Westinghouse v. Condit, 167 Fed. 546; 93 C. C. A. 224 App. 253 
 
 Affg. 159 Fed. 144 and 154. 
 
 Second; Lacombe, Coxe, Noyes. 
 Westinghouse v. Edison, 63 Fed. 588; 11 C. C. A. 342. . . .229, 244, 361, 
 Revg. 55 Fed. 490. 610, 638, 659 
 
 Third; Acheson, Dallas, Butler. 
 
 Westinghouse v. Electric, 170 Fed. 430; 95 C. C. A. 600 App. 371 
 
 Revg. 165 Fed. 992. 
 Third; Gray, Buffington, Bradford.
 
 CASES EXCERPTED, WITH ANNOTATIONS CVU 
 
 I References are to sections. " App." refers to Appendix 1 
 
 Westinghouse v. Great Northern, 88 Fed. 258; 31 C. C. A. 525. . . .94, 555, 
 Affg. 86 Fed. 132. 723 
 
 Second; Wallace, Shipman. 
 
 Westinghouse v. Hien, 159 Fed. 936; 87 C. C. A. 142 584 
 
 Seventh; Baker, Seaman, Sanborn. 
 
 Westinghouse v. Montgomery, 139 Fed. 868; 71 C. C. A. 582 564 
 
 Revg. 131 Fed. 86. 
 
 Second; Wallace, Townsend. Per Curiam. 
 
 Westinghouse v. Montgomery, 153 Fed. 890; 82 C. C. A. 636 691 
 
 See decisions on same patent, 131 Fed. 86, reversed in 139 Fed. 868; 
 108 Fed. 221; 113 Fed. 884; 117 Fed. 309; 119 Fed. 365. 
 Second; Wallace, Townsend, Holt. 
 
 Westinghouse v. New England, 110 Fed. 753; 49 C. C. A. 151 87, 88 
 
 Affg. 103 Fed. 951. 
 
 Second; Wallace, Lacombe, Shipman. 
 Westinghouse v. New York, 63 Fed. 962; 11 C. C. A. 528. . . . 197, 217, 361, 
 Affg. in part 59 Fed. 581. 375, 380, 440, 606 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Westinghouse v. New York, 96 Fed. 991; 37 C. C. A. 649 55 
 
 Affg. 87 Fed. 882. 
 
 Second; Lacombe, Shipman, Thomas. 
 
 Westinghouse v. New York, 119 Fed. 874; 56 C. C. A. 404 223, 502 
 
 Revg. 112 Fed. 424; see 59 Fed. 581; 63 Fed. 962. 
 Second; Wallace, Lacombe, Townsend. 
 
 Westinghouse v. New York, 140 Fed. 545; 72 C. C. A. 61 845 
 
 See 115 Fed. 645; 131 Fed. 607. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Westinghouse v. Prudential, 158 Fed. 987; 86 C. C. A. 434 456 
 
 Affg. 155 Fed. 749. Third; Dallas, Gray, Buffington. 
 
 Westinghouse v. Saranac, 113 Fed. 884; 51 C. C. A. 514 235, 650, 851 
 
 Affg. 108 Fed. 221. 
 
 Second; Wallace, Lacombe, Townsend. 
 •Westinghouse v. Stanley, 133 Fed. 167; 68 C. C. A. 523. . . .76, 257, 407, 
 Revg. 129 Fed. 140. 598, 620, 641, 691, 937 
 
 See 106 Fed. 724; 118 Fed. 562; 110 Fed. 377; 129 Fed. 213; 125 
 Fed. 6; 133 Fed. 396; 128 Fed. 751. 
 First; Putnam, Aldrich, Brown. 
 Westinghouse v. Stanley, 138 Fed. 823; 71 C. C. A. 189. . . .257, 421, 790 
 See 133 Fei. 167. 
 
 First; Putnam, Aldrich, Brown. 
 
 Westinghouse v. Toledo, 172 Fed. 371; 97 C. C. A. 69 App. 322, 668 
 
 Sixth; Lurtou, Severens, Cochran. 
 
 Westinghouse v. Triumph, 97 Fed. 99; 38 C. C. A. 65 332, 337 
 
 Sixth; Taft, Lurton, Severens. 
 
 Westinghouse v. Union, 117 Fed. 495; 55 G. G. A. 230 622 
 
 Affg. and revg. 112 Fed, 417. 
 Second; Wallace, Lacombe, Townsend. 
 Westinghouse v. Wagner, 225 U. S. 604; 56 L. Ed. — ; 32 S. Ct. 691 
 
 ....App. 495, 841, 845 
 Revg. 173 Fed. 373, and 129 Fed. 604; see 112 Fed. 417; 117 Fed. 495; 
 121 Fed. 560; 129 Fed. 604; 130 Fed. 554. 
 Lamar. 
 
 Westmoreland v. Hogan, 167 Fed. 327; 93 G. G. A. 31 598, 926 
 
 Affg. 163 Fed. 289. 
 
 Third; Dallas, Gray, Buffington.
 
 Cviii CASES EXCERPTED, WITH ANNOTATIONS 
 
 1 References are to sections. " App." refers to Appendix ] 
 
 Weston V. Empire, 136 Fed. 599; 69 C. C. A. 329 15, 308 
 
 Affg. 131 Fed. 90. 
 
 Second; Lacombe, Townsend, Coxe. Per Curiam. 
 
 Weston V. Empire, 177 Fed. 1006; 100 C. C. A. 670 App. 481 
 
 Affg. 166 Fed. 867. 
 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 
 Weston V. Stevens, 134 Fed. 574; 67 C. C. A. 374 871 
 
 Revg. 119 Fed. 181. 
 Second; Wallace, Lacombe, Townsend. 
 
 Westrumite v. Commissioners, 174 Fed. 144; 98 C. C. A. 178 App. 905 
 
 Revg. 164 Fed. 989. 
 
 Seventh; Grosscup, Baker, Anderson. 
 
 Wheaton v. Norton, 70 Fed. 833; 17 C. C. A. 447 207, 456 
 
 Revg. 57 Fed. 927. Modifying Norton v. Jensen, 49 Fed. 859. 
 Ninth; Ross, Hawley, Morrow. 
 
 Whippany v. United, 87 Fed. 215; 30 C. C. A. 615 564 
 
 Revg. 83 Fed. 485. 
 
 Third; Acheson, Butler, Bradford. 
 
 Whitaker v. Huntington, 95 Fed. 471; 37 C. C. A. 151 691 
 
 Third; Acheson, Dallas, Buffington. 
 White V. Dunbar, 119 U. S. 47; 30 L. Ed. 303; 7 S. Ct. 72. . . .217, 223, 
 
 679, 871 
 Bradley. 
 
 Whiteley v. Swayne, 74 U. S. 685; 19 L. Ed. 199 20, 811, 866 
 
 Nelson. 
 Whitin V. Houghton, 178 Fed. 444; 101 C. C. A. 344. . . .App. 68, 378, 697 
 See 161 Fed. 58; 153 Fed. 740. 
 First; Colt, Putnam, Aldrich. 
 
 Whitley V. Winsor, 127 Fed. 338; 62 C. C. A. 220 195 
 
 Affg. 117 Fed. 851. 
 
 First; Colt, Putnam, Aldrich. 
 
 Whittemore v. Reinhardt, 159 Fed. 707; 86 C. C. A. 461 . . , 201 
 
 Second; Lacombe, Coxe; Ward. 
 
 Wicke V. Ostrum, 103 U. S. 461; 26 L. Ed. 409 466, 468, 607 
 
 Waite. 
 
 Wickelman v. Dick, 88 Fed. 264; 31 C. C. A. 530 107, 697 
 
 Affg. 74 Fed. 799; also 80 Fed. 519. 
 Second; Wallace, Lacombe, Shipman. 
 
 Wilcox V. Sherborne, 123 Fed. 875; 59 C. C. A. 363 216, 896 
 
 Affg. 119 Fed. 371. 
 
 Third; Acheson, Buffington, Kirkpatrick. Dissenting in part 
 Kirkpatrick. 
 
 Wilfley V. Ne^v Standard, 164 Fed. 421; 90 C. C. A. 543 752, 755 
 
 Ninth; Gilbert, Ross, Morrow. 
 
 Wilgus V. Germain, 72 Fed. 773; 19 C. C. A. 188 App. 64, 386, 629 
 
 See 56 Fed. 587. 
 
 Ninth; McKenna, Gilbert, Hawley. 
 
 Willcox V. Merrow, 93 Fed. 206; 35 C. C. A. 269 245, 624 
 
 Revg. 83 Fed. 179. 
 
 Second; Wallace, Lacombe, Shipman. 
 
 Williams v. American, 86 Fed. 641; 30 C. C. A. 318 64 
 
 Revg. on rehearing 84 Fed. 197 and 81 Fed. 200. 
 Seventh; Woods, .Tonkins, Showalter. 
 
 Williams v. Breitling, 77 Fed. 285; 23 C. C. A. 171 551, 567, 579 
 
 Seventh; Woods, Jenkins, Showalter.
 
 CASES EXCERPTED, WITH ANNOTATIONS CIX 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 WiUiams v. Goodyear, 54 Fed. 498; 4 C. C. A. 485 601 
 
 Affg. 49 Fed. 245. 
 
 Second; Wallace, Lacombe. Per Curiam. 
 
 Williams v. Kemmerer, 145 Fed. 928; 76 C. C. A. 466 207, SS6 
 
 Affg. 136 Fed. 210. 
 
 Third; Dallas, Gray, Cross. 
 
 WiUiams v. Wrapper Co. 84 Fed. 197; 28 C. C. A. 325 672 
 
 Revd. 86 Fed. 641; see 81 Fed. 200. 
 Seventh; Woods, Jenkins, Showalter. 
 
 WiUis V. Miller, 121 Fed. 985; 58 C. C. A. 286 404 
 
 Second; Wallace, CoxE. 
 
 Wills V. Scranton, 153 Fed. 181; 82 C. C. A. 355 323, 672 
 
 Affg. 147 Fed. 525. 
 
 Third; Gray, Buffington, Lanning. 
 Wilson V. Am. Circular Loom, 187 Fed. 840; 109 C. C. A. 600. . . .App. 366 
 First; Colt, Putnam, Aldrich. 
 
 Wilson V. Ansonia, 54 Fed. 495; 4 C. C. A. 484 596 
 
 Revg. 48 Fed. 681. 
 
 Second; Wallace, Lacombe, Shipman. Per Curiam. 
 
 Wilson V. Barnum, 8 How. 258; 12 L. Ed. 1070 113 
 
 Taney 
 
 Wilson V. Calculagraph, 144 Fed. 91 ; 75 C. C. A. 249 195, 217 
 
 Revg. 132 Fed. 20. 
 
 First; Colt, Putnam, Aldrich. 
 Wilson V. Consolidated, 88 Fed. 286; 31 C. C. A. 533. . . .551, 554, 561, 563, 
 Revg. 83 Fed. 201. 575, 579 
 
 First; Putnam, Brown, Lowell. 
 
 Wilson V. McCormick, 92 Fed. 167; 34 C. C. A. 280 195 
 
 Seventh; Woods, Jenkins, Showalter. 
 
 Wilson V. Rousseau, 4 How. 646; 11 L. Ed. 1141 175, 418 
 
 Nelson ; dissenting McLean, Wayne, Woodbury. 
 
 Wilson V. Sanford, 10 How. 99; 13 L. Ed. 344 714 
 
 Taney. 
 
 Wilson V. Simpson, 9 How. 109; 13 L. Ed. 66 524 
 
 W^ayne 
 
 Wilson V. Townley, 125 Fed. 491; 60 C. C. A. 327 65, 442, 612 
 
 Eighth; Sanborn, Thayer, Van Devanter. 
 Winans v. Denmead, 15 How. 330; 14 L. Ed. 717. . . .222, 229, 459, 530, 
 
 601, 602, 655, 679, 903 
 Curtis; dissenting Taney, Catron, Daniel, Campbell. 
 Winans v. N. Y. & Erie, 21 How. 88; 16 L. Ed. 68 398 
 
 Winchester v. Peters, 184 Fed. 333; 106 C. C. A. 363 App. 207 
 
 Affg. 173 Fed. 86. 
 
 Second; Coxe, Ward, Noyes. 
 Wing V. Anthony, 106 U. S. 142; 27 L. Ed. 110; 1 S. Ct. 93 871 
 
 Woods. 
 Winston v. Croton Falls, 194 Fed. 123; 114 C. C. A. 201 App. 653 
 
 Second; Lacombe, Coxe, Ward. 
 Wisconsin v. American, 125 Fed. 761 ; 60 C. C. A. 529 593 
 
 Seventh; Jenkins, Grosscup, Baker. 
 Wise V. AUis, 76 U. S. 737; 19 L. Ed. 784 795 
 
 Miller. 
 Withington v. Kinney, 68 Fed. 500; 15 C. C. A. 531 366, 367, 756 
 
 Sixth; Taft, Lurton, Severens.
 
 ex CASES EXCERPTED, WITH ANNOTATIONS 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Wold V. Thayer, 148 Fed. 227; 78 C. C. A. 350 108, 385 
 
 Affg. 142 Fed. 776. 
 
 Seventh; Grosscup, Seaman, Baker. 
 
 Wolff V. Du Pont, 134 Fed. 862; 67 C. C. A. 488 620, 917 
 
 Affg. 122 Fed. 944. 
 
 Third; Acheson, Dallas, Lanning. 
 Wollensak v. Reiher, 115 U. S. 87; 29 L. Ed. 355; 5 S. Ct. 1132. . .213, 729 
 
 Matthews. 
 
 Wollensak v. Reiher, 115 U. S. 96; 29 L. Ed. 350; 5 S. Ct. 1137. . . .876, 
 
 Matthews. 877, 879 
 
 Wollensak v. Sargent, 151 U. S. 221; 38 L. Ed. 137; 14 S. Ct. 291 . . . . 195, 
 
 Affg. 33 Fed. 840; 41 Fed. 53. 239, 651, 731, 877 
 
 Fuller. 
 
 Wood V. Underhill, 5 How. 1; 12 L. Ed. 23 266, 914, 917 
 
 Taney. 
 
 Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939. . . .7, 11, 13, 260, 316, 
 
 Strong. 380, 407, 413, 592, 729, 795 
 
 Woodmansee v. Williams, 68 Fed. 489; 15 C. C. A. 520. . . .271, 719, 729, 
 
 Sixth; Taft, Lurton, Hammond. 732, 793 
 
 Woods V. Carl, 293 U. S. 358; 51 L. Ed. 219; 27 S. Ct. 99 920 
 
 Affg. 75 Ark. 328. 
 
 Peckham; dissenting Day. 
 
 Woodward v. Boston, 60 Fed. 283; 8 C. C. A. 622 451, 506 
 
 Affg. 53 Fed. 481; rehearing denied 63 Fed. 609. 
 First; Colt, Putnam, Nelson. 
 
 Woodward v. Boston, 63 Fed. 609; 11 C. C. A. 353 387, 790, 807 
 
 Denying rehearing on 60 Fed. 283. 
 
 First; Colt, Putnam, Nelson. Per Curiam. 
 
 Woodworth v. Wilson, 4 How. 712; 11 L. Ed. 1171 798 
 
 Nelson. 
 Worden v. Searles, 121 U. S. 14; 30 L. Ed. 853; 7 S. Ct. 814. . . .578, 725, 871 
 Revg. 13 Fed. 716; 11 Fed. 501. 
 Blatchford. 
 
 Worley v. Loker, 104 U. S. 340; 26 L. Ed. 821 369, 857, 858 
 
 Woods. 
 
 Wright V. Clinton, 67 Fed. 790; 14 C. C. A. 646 215, 673 
 
 Revg. 65 Fed. 425. 
 
 First; Colt, Nelson, Aldrich. 
 
 Wright V. Fitz, 133 Fed. 394; 66 C. C. A. 456 473 
 
 First; Putnam, Aldrich, Brown. 
 
 Wright V. Herring-Curtis, 180 Fed. 110; 103 C. C. A. 31 App. 564 
 
 Revg. 177 Fed. 257. 
 
 Second; Lacombe, Coxe, Noyes. Per Curiam. 
 
 Wright V. Paulhan, 180 Fed. 112; 103 C. C. A. 32 App. 566 
 
 Second; Lacombe, Ward, Noyes. Per Curiam. 
 Wright V. Yuengling, 155 U. S. 47; 39 L. Ed. 64; 15 S. Ct. 1 . .201, 202, 596 
 Brown. 
 
 Writing Machine v. ElUott, 108 Fed. 628; 47 C. C. A. 536 442 
 
 Affg. 106 Fed. 507. 
 
 Second; Wallace, Shipman. 
 Yale V. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 884. . . .273, 469, 
 
 473, 869, 871, 875 
 Affg. in part 17 Fed. 531 ; revg. in part 26 Fed. 104. Referring to 38 
 Fed. 917; 32 Fed. 167; 6 Fed. 377. 
 Blatchford.
 
 CASES EXCERPTED, WITH ANNOTATIONS CXI 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Yale V. Greenleaf, 117 U. S. 554; 29 L. Ed. 952; 6 S. Ct. 846. . . .223, 657, 666 
 
 Woods. 
 Yale V. James, 125 U. S. 447; 31 L. Ed. 807; 8 S. Ct. 967. . . .870, 871, 885 
 Affg. 22 Blatchf. 294. 
 
 Yale V. Sargent, ll/u. S. 373; 29 L. Ed. 950; 6 S. Ct. 931 .473 
 
 Matthews. 
 Yale V. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S. Ct. 934. . . .270, 284, 
 Affg. 17 Blatchf. 244; except as to costs. 287, 288, 342, 883 
 
 Yawman v. Library, 147 Fed. 246; 77 C. C. A. 388 194 
 
 First; Colt, Putnam, Aldrich. 
 
 Yawman v. Vetter, 159 Fed. 443; 86 C. C. A. 473 612, 632 
 
 Second; Lacombe, Coxe, Ward. 
 
 Yesbera v. Hardesty, 166 Fed. 120; 92 C. C. A. 46 283, 841, 845 
 
 See 111 Fed. 386; 133 Fed. 916. 
 
 Sixth; Lurton, Severens, Richards. 
 
 Yost V. Perkins, 179 Fed. 511; 103 C. C. A. 116 App. 548, 599, 675 
 
 Sixth; Severens, Warrington, Knappen. 
 
 Young V. Wolfe, 130 Fed. 891; 65 C. C. A. 199 107 
 
 Affg. 120 Fed. 956. 
 
 Second; Wallace, Lacombe, Townsend. 
 
 Zane v. Soffe, 110 U. S. 200; 28 L. Ed. 119; 3 S. Ct. 562 389, 391 
 
 Affg. 2 Fed. 229. 
 Bradley. 
 
 Zinn V. Auto Strop, 175 Fed. 78; 99 C. C. A. 100 App. 212, 701 
 
 Affg. 170 Fed. 197. 
 
 Second; Lacombe, Coxe, Noyes. 
 
 Zinnser v. Krueger, 48 Fed. 296; 1 C. C. A. 73 687 
 
 Affg. 45 Fed. 572. Revg. 39 Fed. HI. 
 Third; Acheson, Wales.
 
 TABLE OF CASES CITED 
 
 With volume and page in standard American reports 
 [ References are to sections. " App." refers to Appendix ] 
 
 Abbott V. Bonn, 51 Fed. 223 App. 701 
 
 Accident t;. Crandal, 120 U. S. 527; 30 L. Ed. 740; 7 S. Ct. 685 407 
 
 Accumulator v. Consolidated, 53 Fed. 793 577 
 
 Acker, In re, 66 Fed. 290 536, 577 
 
 Ackerman, Ex parte, C. D. 1869, 75 775 
 
 Acme V. Gary, 96 Fed. 344 180 
 
 Adams v. Adams, 91 N. Y. 381 164 
 
 Adams V. BeUaire, 141 U. S. 539; 35 L. Ed. 849; 12 S. Ct. 66. . . .380, 600, 
 
 603, 608, 635, 636, 672, 827, App. 636 
 
 Adams v. BeUaire, 28 Fed. 360 827 
 
 Adams v. BeUaire, 25 Fed. 270 219, 718 
 
 Adams v. Bridgewater, 26 Fed. 324 219, 718 
 
 Adams v. Burks, 84 U. S. 453; 21 L. Ed. 700 418, 450, 505, 
 
 512, 523, 524, 576, 757, 763, 899 
 
 Adams, Exparte, 3 O. G. 150 775 
 
 Adams v. Howard, 22 Fed. 656 751 
 
 Adams v. Jones, 12 Pet. 207; 9 L. Ed. 205 113 
 
 Adams v. Jones, Fed. Cas. 57 2, 7, 18 
 
 Adams v. Lindell, 77 Fed. 432; 23 C. C. A. 223 12, 195, 212, 
 
 214, 376, 378, 437, 441, 468, 473, 507, 671, 937, App. 503, 671 
 
 Adams v. Meyrose, 7 Fed. 208 App. 714 
 
 Adams v. Tannage, 81 Fed. 178; 26 C. C. A. 326 561 
 
 Adams v. Woods, 6 U. S. 336; 2 L. Ed. 334 921 
 
 Adee v. Thomas, 41 Fed. 342 213 
 
 Adriance v. McCormick, 55 Fed. 287 505, 765 
 
 Adriance v. National, 98 Fed. 118 924 
 
 Aeolian v. Juelg, 155 Fed. 119; 86 C. C. A. 205 App. 476 
 
 Aetna v. Ward, 140 U. S. 76; 35 L. Ed. 371; 11 S. Ct. 720 131 
 
 Agawam v. Jordan, 74 U. S. 583 2, 18, 261, 367, 629, 682, 704, 
 
 795,811,856, 860 
 
 Ager V. Murray, 105 U. S. 126; 26 L. Ed. 942 151, 921 
 
 Ah Know V. Nunan, Fed. Cas. 6546 667, 707, 708 
 
 Aikin v. Dolan, 3 Fish. 197; Fed. Cas. 110 103, 343, 413, 600 
 
 Aikin v. Manchester, 2 Cliff. 435; Fed. Cas. 113 523, 524 
 
 Ajax V. Pettibone, 125 Fed. 748; 60 C. C. A. 516 490 
 
 Alabastine v. Payne, 27 Fed. 559 476, 555 
 
 Albany v. Felthousen, 20 Fed. 633 273 
 
 Albright v. Celluloid, 2 B. &. A. 629; Fed. Cas. 147 629 
 
 Albright v. Teas, 106 U. S. 613; 27 L. Ed. 295; 1 S. Ct. 550 714, 724, 
 
 App. 718 
 
 Alden v. Dewey, 1 Story, 336; Fed. Cas. 153 368, 503 
 
 Allen V. Baltimore, 114 U. S. 311; 29 L. Ed. 200; 5 S. Ct. 925 553
 
 CXIV TABLE OF CASES CITED 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Allen V. Blunt, 3 Story, 742; Fed. Cas. 216 880 
 
 Allen V. Gulp, 166 U. S. 501; 41 L. Ed. 1093; 17 S. Ct. 644 883 
 
 Allen V. Deacon, 21 Fed. 122 777 
 
 Allen V. Hall, 1 A. K. Marsh, 425 386 
 
 Allen V. Riley, 203 U. S. 347; 51 L. Ed. 216; 27 S. Ct. 95 . . . . ~; 920 
 
 Allen V. Rawson, 1 M. G. & S. 574 368 
 
 AUington v. Booth, 78 Fed. 878; 24 G. G. A. 378 551 
 
 AUington v. Globe, 89 Fed. 865 351 
 
 Alvin V. Scharling, 100 Fed. 87 213, 384, 797 
 
 Alywin v. Bray, Y. & J. 518 798 
 
 American v. Ament, 74 Fed. 789 756 
 
 American v. American, 4 Fish. 284; Fed. Gas. 302 856, 857 
 
 American v. Brown, 58 Fed. 409 717 
 
 American v. Buckskin, 72 Fed. 508; 18 G. G. A. 662 323, 325, 
 
 326, 709, 817 
 
 American v. Bullard, 17 Blatch. 160; Fed. Cas, 294 295, 899 
 
 American v. Chicago, 41 Fed. 522 568, 717, 730, App. 717 
 
 American v. Cleveland, 158 Fed. 978; 86 G. C. A. 182 App. 207 
 
 American v. Grossman, 57 Fed. 1021 510 
 
 American v. Grossman, 61 Fed. 888; 10 G. C. A. 146 510 
 
 American v. Elizabeth, 4 Fish. 189; Fed. Cas, 312 .. . 567, 629, 680, App. 629 
 American v. Fiber, 90 U. S. 566; 23 L. Ed. 31 310, 649, 774, 
 
 090 oyi oyj 
 
 American v. Garrett, 110 U. S. 288; 28 L. Ed. 149; 4 S. Ct. 90 ..'... .' 183 
 
 American v. Helmstetter, 142 Fed. 978; 74 C. C. A. 240 47 
 
 American v. Kitsell, 35 Fed. 521 338, 764 
 
 American v. Knopp, 44 Fed. 609 361 
 
 American v. Laroway, 28 Fed. 141 213, 384 
 
 American v. Leeds, 87 Fed. 873 626 
 
 American v. Ligowski, 31 Fed. 466 587 
 
 American v. McKeesport, 57 Fed. 661 254 
 
 American v. Mills, 162 Fed. 440; 89 G. G. A. 171 777 
 
 American v. National, 51 Fed, 229; 2 C. C. A. 165 120, 535, 539, 
 
 App. 253, 535, 541, 544, 561 
 
 American v. National, 90 Fed. 824 568 
 
 American v. Newton, 82 Fed. 732 228 
 
 American v. Pennock, 164 U. S. 26; 41 L, Ed. 337; 17 S. Ct. 1 600 
 
 American v. Phoenix, 113 Fed. 629; 51 C. G. A App. 381 
 
 American v. Sample, 130 Fed. 145; 64 C. C. A. 497 App. 668 
 
 American v. Sexton, 139 Fed. 564; 71 C. C. A. 548 817 
 
 American v. Simmons, 106 U. S. 89; 27 L. Ed. 79; 1 S. Ct. 52 476, 523, 
 
 524, 717, 899 
 
 American v. Southern, 34 Fed. 795 568, 801 
 
 American v. Streat, 83 Fed. 700; 28 C. C. A. 18 525, App. 468 
 
 American v. Vail, 15 Blatch. 315; Fed. Cas. 308 550 
 
 American v. Western, 58 Fed. 410 717 
 
 American v. Weston, 59 Fed. 147; 8 G. C. A, 56 74, 80, 408 
 
 American v. Wilson, 198 Mass. 182 App. 160 
 
 American v. Wyeth, 139 Fed. 389; 71 C. C. A. 485 599 
 
 Am. Bank Protection v. Electric, 181 Fed. 350 App. 74 
 
 Am. Bell Tel. v. Dolbear, 15 Fed. 488 688, 770 
 
 Am. Bell Tel. v. Peoples, 22 Fed. 309 61 
 
 Am. Bell Tel. v. Spencer, 8 Fed. .WO 375 
 
 Am. Bell Tel. v. United States. 68 Fed. 542; 15 G. G. A. 569 789 
 
 Am. Brake Shoe v. Railway, 143 Fed. 540 App. 672
 
 TABLE OF CASES CITED CXV 
 
 [References are to sections. " App.'' refers to Appendix] 
 
 Am. Cable v. Chicago, 41 Fed. 522 App. 717 
 
 Am. Graphophone v. Hawthorne, 92 Fed. 516 App. 477 
 
 Am. Graphophone v. Universal, 151 Fed. 595; 81 C. C. A. 139 . . App. 207 
 
 Am. Ins. Co. v. Canter, 1 Pet. 511 ; 7 L. Ed. 242 140 
 
 Am. Stove v. Cleveland, 158 Fed. 978; 86 C. C. A. 182 App. 207 
 
 Am. Street Car v. Jones, 122 Fed. 803 App. 714 
 
 Am. Tube Works v. Bridge water, 26 Fed. 334 App. 366 
 
 Am. Writing Mach. v. Wagner, 151 Fed. 576; 81 C. C. A. 120 ... App. 72 
 
 Ames V. Howard, 1 Sumn. 482; Fed. Cas. 326 222, 472, 687, 903 
 
 Amory v. Lawrence, 3 Cliff. 523; Fed. Cas. 336 183 
 
 Ammunition v. Nordenfelt, 1 Ch. 630 365 
 
 Amy V. Supervisors, 11 Wall. 136; 20 L. Ed. 101 481 
 
 Anderson v. Collins, 122 Fed. 451; 58 C. C. A. 669. . 102, 673, App. 97, 129 
 
 Anderson v. Dunn, 6 Wheat. 204; 5 L. Ed. 242 App. 577 
 
 Anderson v. Filer, 50 Fed. 775; 1 C. C. A. 659 759, 764 
 
 Andrea v. Redfield, 98 U. S. 225; 25 L. Ed. 158 921 
 
 Andres v. Lee, 21 N. C. 319 305 
 
 Andrews v. Cross, 8 Fed. 269 916, App. 691 
 
 Andrews v. Hovey, 123 U. S. 267; 31 L. Ed. 160; 8 S. Ct. 101 18, 20, 
 
 82 853 
 
 Andrews v. Hovey, 124 U. S. 694; 31 L. Ed. 557; 8 S. Ct. 676 74, 82, 
 
 853, 932 
 
 Andrews v. National, 76 Fed. 166; 22 C. C. A. 110 386, 893 
 
 Andrews v. National, 77 Fed. 774; 23 C. C. A. 454 112 
 
 Andrews v. Pipe, 61 Fed. 782 120, 539 
 
 Andrews v. Thum, 67 Fed. 911; 15 C. C. A. 67 655 
 
 Angell V. Angell, 1 Eng. Ch. Ren. 89 App. 371 
 
 Angier v. Eaton, 98 Pa. 594 755 
 
 Animarium v. Neiman, 98 Fed. 14 794 
 
 Ansonia v. Electrical, 144 U. S. 11; 36 L. Ed. 327; 12 S. Ct. 601 .. . 94, 331, 
 431, 440, 599, 635, 656, 662, 671, 672, 676, 689, App. 599 
 
 Appleton V. Star, 60 Fed. 411; 9 C. C. A. 42 188, 427, 672, 707, 817 
 
 Arkell, In re, 15 Blatch. 437; Fed. Cas. 531 671 
 
 Armitage v. Mace, 96 N. Y. 538 164 
 
 Armour v. United States, 153 Fed. 1; 82 C. C. A. 135 App. 770 
 
 Aron V. Manhattan, 132 U. S. 84; 33 L. Ed. 272; 10 S. Ct. 24 48, 49, 
 
 88, 213, 591, 608, 616, 617, 624, 635, 646, 651, 654, 656, 657, 662, 669, 
 
 671, 672, App. 404, 666, 672 
 
 Asay V. Lieber, 92 Pa. St. 377 322 
 
 Ashcroft V. Walworth, 1 Holmes, 152; Fed. Cas. 580 157, 921 
 
 Ashley v. Board, 60 Fed. 55 327 
 
 Ashton V. Coale, 52 Fed. 314; 3 C. C. A. 98 202 
 
 Ashworth v. Roberts, 9 R. P. C. 309 384 
 
 Aspden v. Nixon, 4 How. 476; 11 L. Ed. 466 315, App. 31 
 
 Aspen V. Billings, 150 U. S. 31 ; 37 L. Ed. 986; 14 S. Ct. 4 34, 128, 71 1 
 
 Aspinwall v. Gill, 32 Fed. 697 161, 927 
 
 Association v. Rogers, 42 Minn. 123 386 
 
 Atherton v. Atwood-Morrison, 102 Fed. 949; 43 C. C. A. 72 714 
 
 Atkins V. Chilson, 11 Mete. 112 App. 755 
 
 Atlantic v. Brady, 107 U. S. 192; 27 L. Ed. 438; 2 S. Ct. 225 20, 47, 
 
 48, 215, 216, 313, 437, 593, 596, 614, 616, 636, 653, 655, 656, 657, 658, 
 
 659, 662, 664, 666, 667, 671, 672, 676, 679, 698, 811 
 
 Atlantic v. Parker, 16 Blatch. 281 ; Fed. Cas. 625 105 
 
 Atty. V. Vernon, 1 Vern. 277 26 
 
 Atwater v. Beecher, 8 Fed. 610 App. 344
 
 CXVl TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Automatic v. Pneumatic, 166 Fed. 288; 92 C. C. A. 206 . . App. 65, 861, 862 
 
 Avery v. Case, 148 Fed. 214; 78 C. C. A. 110 203 
 
 Avers, In re, 123 U. S. 443; 31 L. Ed. 216; 8 S. Ct. 164 553 
 
 Babcock v. Clarkson, 63 Fed. 607; 11 C. C. A. 351 213, 384, 385, 
 
 394, App. 381 
 
 Babcock v. Degener, 1 MacArthur, 607; Fed. Cas. 698 18 
 
 Babcock v. Toledo, 170 Fed. 81; 95 C. C. A. 363 App. 384 
 
 Badger v. Badger, 2 Wall. 87; 17 L. Ed. 836 729 
 
 Badische v. Kalle, 104 Fed. 802; 44 C. C. A. 201 390, App. 97, 633 
 
 Badische v. Klipstein, 125 Fed. 543 350, App. 348, 633 
 
 Badische v. Leveinstein, L. R. 24, Ch. D. 156 230, 768, 815 
 
 Bagnall v. Villar, L. R. 12 Ch. D. 812 778 
 
 Bailey v. Abrams, 3 B. & A. 96; Fed. Cas. 752 564 
 
 Bailey v. Bailey, 67 Vt. 494 841 
 
 Baker v. Crane, 138 Fed. 60; 70 C. C. A. 486 App. 845 
 
 Baker v. Buncombe, 146 Fed. 744; 77 C. C. A. 234 325 
 
 Baldwin v. Sibley, 1 Cliff. 150; Fed. Cas. 805 751, 753 
 
 Balkam v. Woodstock, 154 U. S. 177; 38 L. Ed. 953; 14 S. Ct. 1010. . . 921 
 
 Ball V. Ball, 36 Fed. 309 510 
 
 Ball V. Bangles, 102 U. S. 128; 26 L. Ed. 104 871, 877 
 
 Ballard v. McClusky, 58 Fed. 880 480, 485, App. 344 
 
 Bank V. Beedle, 37 Minn. 527 753 
 
 Bank v. Mumford, 2 Barb. Ch. 596 720 
 
 Bank v. Patterson, 7 Cranch, 299; 3 L. Ed. 298 156 
 
 Bank v. Robinson, 57 Cal. 520 157 
 
 Bank v. Widner, 11 Paige Ch. 533 807 
 
 B. & S. Fastener v. B. G. Fastener, 58 Fed. 818; 7 C. C. A. 498. . . .54, 194, 
 
 207, 378, 384, 385, 394, 714 
 B. & S. Fastener v. Edgarton, 96 Fed. 489; 37 C. C. A. 523 .... 194, 904 
 B. & S. Fastener v. Kraetzer, 150 U. S. Ill; 37 L. Ed. 1019; 14 S. Ct. 48 
 
 203 226 
 
 Bantz V. Frantz, 105 U. S. 160; 26 L. Ed. 1013 871, 872, 873' 877 
 
 Barber v. National, 129 Fed. 370; 64 C. C. A. 40 App. 366 
 
 Barnard v. Gibson, 7 How. 650; 12 L. Ed. 649 116, 130, 304, 893 
 
 Barnes v. Walworth, 51 Fed. 88 860 
 
 Barnes v. Walworth, 60 Fed. 605; 9 C. C. A. 154 860, App. 97 
 
 Barney v. Oelrichs, 138 U. S. 529; 34 L. Ed. 1037; 11 S. Ct. 414 921 
 
 Barreda v. Silsbee, 21 How. 146; 16 L. Ed. 86 131 
 
 Barrett v. Hall, 1 Mas. 447; Fed. Cas. 1047 440, 473 
 
 Barry v. Crane, 22 Fed. 396 App. 366 
 
 Barry v. New York, 53 N. Y. 536 411 
 
 Barton v. White, 144 Mass. 281 921 
 
 Bate V. Gillett, 31 Fed. 809 420, 421, 422 
 
 Bate V. Hammond, 129 U. S. 151; 32 L. Ed. 645; 9 S. Ct. 225 420, 
 
 421, 422, 923 
 
 Bate V. Sulzberger, 157 U. S. 1 ; 39 L. Ed. 001 ; 15 S. Ct. 508 420, 422 
 
 Bates V. Clark, 95 U. S. 204; 24 L. Ed. 471 498 
 
 Bates V. Coe, 98 U. S. 31; 25 L. Ed. 68 59, 68, 73, 76, 96, 102, 320, 
 
 629, 857, 860, 908, App. 68,97 
 
 Bates V. Force, 149 Fed. 220; 79 C. C. A. 178 226 
 
 Bates V. Keith, 84 Fed. 1014; 28 C. C. A. 638 627, 661 
 
 Bates V. Keith, 82 Fed. 100 661 
 
 Bates V. Serger, 2 O. G. 493 775 
 
 Battin v. Taggart, 58 U. S. 77; 15 L. Ed. 37 222, 223, 404, 734, 873, 
 
 880,888
 
 TABLE OF CASES CITED CXVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Bauserman v. Blunt, 147 U. S. 647; 37 L. Ed. 316; 13 S. Ct. 466 921 
 
 Baxter, Ex parte, 2 0. G. 470 775 
 
 Beach v. American, 63 Fed. 597 247, 459, 670 
 
 Beach, Ex parte, 3 0. G. 607 775 
 
 Beach v. Hobbs, 92 Fed. 146; 34 C. C. A. 248 257, 561 
 
 Beach v. Hobbs, 82 Fed. 916 256 
 
 Bean v. Patterson, 110 U. S. 401; 28 L. Ed. 190; 4 S. Ct. 23 .... App. 273 
 Bean v. Smallwood, 2 Story, 408; Fed. Gas. 1173 ... 593, 667, 672, 687, 775 
 
 Beatty v. Burnes, 12 U. S. 98; 3 L. Ed. 96 921 
 
 Beanbien v. Beanbien, 23 How. 190; 16 L. Ed. 484 729 
 
 Bedford v. Hunt, 1 Mas. 302; Fed. Gas. 1217. ... 71, 391, 440, 667, 811, 860 
 
 Beebee v. Russell, 19 How. 283; 15 L. Ed. 668 130, 304 
 
 Beecher v. Atwater, 114 U. S. 523; 29 L. Ed. 232; 5 S. Gt. 1007 47, 
 
 596, 603, 609 
 
 Beedle v. Bennett, 122 U. S. 71; 30 L. Ed. 1074; 7 S. Gt. 1090 550, 
 
 717, 770 
 
 Beer Go. v. Mass. 97 U. S. 25; 24 L. Ed. 989 920 
 
 Beer v. Walbridge, 100 Fed. 465; 40 G. G. A. 496 325, 707, App. 325 
 
 Beggs, Ex parte, 50 O. G. 1130 5 
 
 Belcher v. Whittemore, 134 Mass. 330 App. 160 
 
 Belding v. Ghallenge, 152 U. S. 100; 38 L. Ed. 370; 14 S. Gt. 492 . . 374, 
 
 486, App. 601 
 Belknap v. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Gt. 443 ... . 285, 384, 
 
 4Sl, 505, 842, 847, App. 384 
 
 Bell V. Morrison, 26 U. S. 351; 7 L. Ed. 349 921 
 
 Beman v. Rufford, 1 Simon N. S. 550 482 
 
 Bement v. National, 186 U. S. 70; 46 L. Ed. 1058; 22 S. Gt. 747 474, 
 
 513, 548, 645, 714, 744, 745, 761, 837, App. 718 
 
 Benbow-Brammer v. Richmond, 159 Fed. 161 App. 404 
 
 Benbow-Brammer v. Simpson, 132 Fed. 614 247 
 
 Bene v. Jeantet, 129 U. S. 683; 32 L. Ed. 803; 9 S. Gt. 428 245, 375, 
 
 411 904 915 
 
 Benjamin v. Dale, 158 Fed. 617; 85 G. G. A. 439 .'....' 348 
 
 Bennett v. Fowler, 75 U. S. 445; 19 L. Ed. 431 348 
 
 Bensley v. N. W. Horsenail, 26 Fed. 250 151 
 
 Berdan's Gase, 26 Gt. Gl. 48 498 
 
 Bessette v. Gonkey, 194 U. S. 324; 48 L. Ed. 997; 24 S. Gt. 665 . . 537, 538, 
 
 App. 538, 577 
 
 Best V. Polk, 18 Wall. 112; 27 L. Ed. 805 308 
 
 Betts V. Menzies, 4 B. & Q. B. 999 320, 888 
 
 Bevin v. East Hamilton, 5 Fish. 23; Fed. Gas. 1379 3 
 
 Bevin v. Starr, 114 Fed. 362 335 
 
 Bigelow V. Dobson, 10 Fed. 386 842 
 
 Birdsall v. Goolidge, 93 U. S. 64; 23 L. Ed. 802 282, 285, 292, 298, 839 
 
 Birdsall v. Perego, 5 Blatch. 251; Fed. Gas. 1435 764 
 
 Birdsall v. Shahol, 112 U. S. 485; 28 L. Ed. 768; 5 S. Gt. 244. .. . 165, 338, 
 512, 757, 763, 765, 798, 839, App. 31, 299, 371 
 
 Birmingham v. Gates, 78 Fed. 350; 24 G. G. A. 132 229 
 
 Bischoff V. Wethered, 9 Wall. 812; 19 L. Ed. 829 404, 406, 734, 888, 
 
 App. 131, 404 
 Bissell V. Goshen, 72 Fed. 545; 19 G. G. A. 25 . . 116, 118, 130, 302, 544, 893, 
 
 App. 544, 893 
 
 BisseU V. Spring, 124 U. S. 225; 31 L. Ed. 411; 8 S. Gt. 495 893, 894 
 
 Black V. Allen, 42 Fed. 618 717 
 
 Black V. Thorne, 111 U. S. 122; 28 L. Ed. 372; 4 S. Gt. 326. . . 293, 298, 839
 
 Cxviii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Black Diamond v. Excelsior, 156 U. S. 611; 39 L. Ed. 553; 15 S. Ct. 482 
 
 . . . .204, 304, 325, 473, 496, 707, 712 
 
 Blackledge v.We\v, 108 Fed. 71; 47 C. C. A. 212 764 
 
 Blake v. Oxford, 68 N. H. 302 141, 371 
 
 Blake V. San Francisco, 113 U. S. 679; 28 L. Ed. 1070; 5 S. Ct. 692 . . 596, 
 
 651, 654, 671, 672, 676, App. 672 
 
 Blakeney v. Goode, 30 Ohio St. 350 168 
 
 Blakey v. National, 95 Fed. 136; 37 C. C. A. 27 544, 566 
 
 Blanchard v. Bank, 75 Fed. 249; 21 C. C. A. 319 129 
 
 Blanchard v. Beers, 2 Blatch. 411; Fed. Gas. 1506 459 
 
 Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433. .. . 321, 409, 484, 526, 
 
 629, 680, 795 
 
 Blanchard v. Reeves, 1 Fish. 103; Fed. Gas. 1515 453 
 
 Blanchard v. Sprague, 1 Gliff. 288; Fed. Gas. 1156 714, 724, 752 
 
 Blanchard v. Sprague, 3 Sumn. 535; Fed. Gas. 1518 222, 223, 903, 
 
 App. 741 
 
 Blandy v. Griffith, 3 Fish. 609; Fed. Gas. 1529 223, 443, 501, 
 
 App. 459 
 
 Blauvelt v. Interior, 80 Fed. 906; 26 G. G. A. 243 App. 366 
 
 Blessing v. Gopper, 34 Fed. 753 324, 603, 807 
 
 Bliss V. Reed, 106 Fed. 314; 45 G. G. A. 304 App. 604 
 
 Block V. Gommissioners, 99 U. S. 686; 25 L. Ed. 491 894 
 
 Bloomer v. McQuewan, 14 How. 539; 14 L. Ed. 532. . . . 418, 450, 505, 645, 
 
 745, 747, 757, 764, 769, 927 
 
 Bloomer v. Millinger, 68 U. S. 340; 17 L. Ed. 581 418, 505, 757, 769 
 
 Blount V. Societe, 53 Fed. 98; 3 G. G. A. 455 ... . 118, 120, 535, 539, 543 
 
 544, 549, 554, App. 544, 579 
 Board of Gouncilmen v. Deposit Bank, 127 Fed. 812; 59 G. G. A. 538. . 537 
 
 Boardmen, In re, 169 U. S. 39; 42 L. Ed. 653; 18 S. Gt. 291 711 
 
 Bobbs-MerriU v. Straus, 210 U. S. 339; 52 L. Ed. 122; 28 S. Gt. 748 .. . 744 
 Boesch V. Griiff, 133 U. S. 697; 33 L. Ed. 787; 10 S. Gt. 378. . . 450, 505, 
 
 512, 763 
 
 Bogart V. Hinds, 25 Fed. 485 801 
 
 Bonnette v. Koehler, 82 Fed. 428; 27 G. G. A. 200 234, App. 459 
 
 Bonsack v. Hulse, 65 Fed. 864; 13 G. G. A. 180 365 
 
 Bonsack v. Smith, 70 Fed. 383 574 
 
 Boogher v. Ins. Go., 103 U. S. 90; 20 L. Ed. 310 131 
 
 Booker v. Booker, 20 Ga. 780 App. 3/ 1 
 
 Boone v. Gbiles, 10 Pet. 178; 9 L. Ed. 176 807 
 
 Boston V. Allen, 91 Fed. 248; 33 G. G. A. 485. . . . 151, 285, 464, 468, App. 
 
 212, 223 
 
 Boston V. Bcmis, 80 Fed. 287; 25 G. G. A. 420 68, 374, 378, 637 
 
 Boston V. Bcmis, 98 Fed. 121; 38 G. G. A. 661 790 
 
 Boston V. Potter, 123 Mass. 28 App. 758 
 
 Boston V. Woodward, 82 Fed. 97; 27 G. G. A. 69 271, 385, App. 381, 384 
 
 Bostwick V. Brinkcrhoff, 106 U. S. 3; 27 L. Ed. 73; 1 S. Gt. 15 116 
 
 Bottle V. DeLa\'ergne, 47 Fed. 59 324 
 
 Boughton.t;. Allen, 11 Paige, 321 796 
 
 Bovill V. Moore, Davis Gas. 361 905 
 
 Boville V. Moore, 2 Merch. 211 204 
 
 Bowcn V. Iblev, 1 Edw. Gh. 148 796 
 
 Bowen v. Morris, 2 Taunt. 374 156 
 
 Bowers v. Atlantic, 104 Fed. 887 797 
 
 Bowers v. Lake Superior, 149 Fed. 983; 79 C. G. A. 493 App. 758 
 
 Bowers v. Von Schmidt, 63 Fed. 572 72
 
 TABLE OF CASES CITED Cxix 
 
 [ References are to sectiona. " App." refers to Appendix ] 
 
 Bowker v. Daws, 3 B. & A. 518; Fed. Cas. 1734 476 
 
 Boyce v. Grundy, 3 Pet. 215; 7 L. Ed. 207 719 
 
 Boyd V. Cherry, 50 Fed. 279 107, 476 
 
 Boyd V. Janesville, 158 U. S. 260; 39 L. Ed. 973; 15 S. Ct. 837 ... . 198, 
 202, 349, 441, 629, 680, App. 376, 456, 497, 629 
 
 Boyd V. McAlpin, 2 Robb. 277; Fed. Cas. 1748 411 
 
 Boyer v. Keller, 127 Fed. 130; 62 C. C. A. 244 673 
 
 Boyle V. Zacharie, 6 Pet. 647; 8 L. Ed. 646 285 
 
 Boynton v. Morris, 87 Fed. 225; 30 C. C. A. 617 937 
 
 Bradford v. Belknap, 105 Fed. 63 380, App. 322, 637 
 
 Bradford v. Corbin, 6 0. G. 223 861 
 
 Bradley v. Eagle, 57 Fed. 980; 6 C. C. A. 661 305, 893, 894 
 
 Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669 335 
 
 Bragg V. Fitch, 121 U. S. 478; 30 L. Ed. 1008; 7 S. Ct. 978 . . 198, 202, 
 207, 211, 212, 215, 217, 229, 376, 442, 473, 597, 602, 889 
 
 Bragg V. Hartford, 56 Fed. 292 558, App. 717 
 
 Brainard v. Buck, 184 U. S. 99; 46 L. Ed. 449; 22 S. Ct. 458 77 
 
 Brainard v. Gramme, 12 Fed. 621 688, 770, App. 344 
 
 Brant v. Iron Co. 93 U. S. 326; 23 L. Ed. 927 384 
 
 Brammer v. Schroeder, 106 Fed. 918; 46 C. C. A. 41 App. 129 
 
 Brammer v. Witte, 159 Fed. 726; 86 C. C. A. 207 456, App. 461 
 
 Brass Co. v. Miller, 5 Fish. 48; Fed. Cas. 17,254 223 
 
 Bray v. Hartshorn, 1 Cliff. 538; Fed. Cas. 1820 440 
 
 Brazee v. Schofield, 124 U. S. 495; 31 L. Ed. 484; 8 S. Ct. 604 384 
 
 Brechbill v. Randall, 102 Ind. 528 920 
 
 Brennan v. Dowagiac, 162 Fed. 472; 89 C. C. A. 392 841 App. 845 
 
 Brent v. Davis, 10 Wheat. 350; 6 L. Ed. 393 291 
 
 Bresnahan v. Tripp, 72 Fed. 920; 19 C. C. A. 237 35, 561 
 
 Bresnahan v. Tripp, 102 Fed. 899; 43 C. C. A. 48 190, 197 
 
 Brickill v. Mayor, 7 Fed. 479 857 
 
 Brickill v. Mayor, 112 Fed. 65; 50 C. C. A. 1 843 
 
 Bricknall v. Hartford, 49 Fed. 372 921 
 
 Briggs V. Central, 60 Fed. 87; 8 C. C. A. 480 616, 672 
 
 Briggs Petition, 28 N. H. 553 141, 371 
 
 Brill V. St. Louis, 90 Fed. 666; 33 C. C. A. 213. . 207, 378, 442, 587, App. 
 
 201, 207 
 
 Brill V. Third Ave. 103 Fed. 289 App. 97 
 
 Brinkerhoff v. Aloe, 146 U. S. 515; 36 L. Ed. 1068; 13 S. Ct. 221 . . 595, 597, 
 
 App. 597 
 
 Broasnahan, In re, 18 Fed. 62 * 574 
 
 Brobet v. Brock, 77 U. S. 519; 19 L. Ed. 1002 778 
 
 Brockway v. Allen, 17 Wend. 40 156 
 
 Broadnax v. Central, 4 Fed. 214 548, 574 
 
 Broderick v. Mayhew, 131 Fed. 92 257, 574 
 
 Bronson v. Chappell, 12 Wall. 681 ; 20 L. Ed. 436 753 
 
 Bronson v. Railroad, 2 Black, 524; 17 L. Ed. 798 116 
 
 Brook V. Ashton, 27 Law. J. Q. B. 145 215, 671, 676 
 
 Brookfield v. Elmer, 132 Fed. 312 App. 559 
 
 Brookfield v. Novelty, 170 Fed. 960; 96 C. C. A. 127 App. 604, 847 
 
 Brooks V. Byam, 2 Story, 525; Fed. Cas. 1948 165, 764 
 
 Brooks V. Fiske, 15 How. 212; 14 L. Ed. 665 145, 201, 375, 459, 467, 
 
 468, 473, 526, 528, 872 
 
 Brooks V. Jenkins, 3 McLean, 432; Fed. Cas. 1953 158, 396 
 
 Brooks V. Sacks, 81 Fed. 403; 26 C. C. A. 456 60, 74, App. 25. 30 
 
 Brooks V. Miller, 28 Fed. 615 717, 718
 
 CXX TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Brooks V. Stolley, 3 McLean, 523; Fed. Cas. 1962 714 
 
 Brown v. Davis, 116 U. S. 237; 29 L. Ed. 659; 6 S. Ct. 379 103, 
 
 201, 202, 612 
 
 Brown v. District of Columbia, 130 U. S. 87; 9 S. Ct. 437 88, 188, 380, 
 
 427, 598, 667, 671, 696 
 
 Brown v. District of Columbia, 3 Mackey, 502 411 
 
 Brown v. Drohen, 140 Fed. 97 640 
 
 Brown v. Duchesne, 60 U. S. 183; 15 L. Ed. 595 532 
 
 Brown v. Guild, 90 U. S. 181; 23 L. Ed. 161 12, 61, 200, 215, 223, 229, 
 
 245, 473, 577, 590, 605, 609, 610, 617, 629, 641, 860, 871, 937 
 
 Brown v. Hall, 6 Blatch. 401; Fed. Cas. 2008 407, 795 
 
 Brown v. Huntington, 134 Fed. 735; 67 C. C. A. 639 198 
 
 Brown v. King, 107 Fed. 498; 46 C. C. A. 432 501 
 
 Brown v. Lanyon, 148 Fed. 838; 78 C. C. A. 528 285 
 
 Brown v. Lanyon, 179 Fed. 309; 102 C. C. A. 497 .. . App. 836, 843, 845 
 
 Brown v. Lapham, 27 Fed. 77 385, 513 
 
 Brown v. Lent, 20 Vt. 529 481 
 
 Brown v. Meyer, 139 U. S. 540; 35 L. Ed. 247; 11 S. Ct. 625 928 
 
 Brown v. Meyer, 100 U. S. 671; 25 L. Ed. 738 377 
 
 Brown v. Piper, 91 U. S. 37; 23 L. Ed. 200 ... 47, 116, 215, 224, 313, 322, 
 323, 324, 325, 389, 390, 394, 483, 493, 591, 593, 616, 617, 651, 653, 656, 
 667, 669, 670, 671, 672, 676, 706, 707, 708, 709, 710, 734, 795, 799, 817, 
 
 App. 672 
 
 Brown v. Shannon, 20 How. 55; 15 L. Ed. 826 714, App. 151 
 
 Brown v. Stihvell, 57 Fed. 731; 6 C. C. A. 528 211, 375, App. 207 
 
 Brown Saddle Co. v. Troxel, 98 Fed. 620 645 
 
 Bruce v. Marder, 10 Fed. 750 222 
 
 Brunswick v. Thum, 111 Fed. 904; 50 C. C. A. 61 633, 648, 673, 
 
 App. 325 
 
 Brush V. California, 52 Fed. 945; 3 C. C. A. 368 375, 798, App. 764 
 
 Brush V. Condit, 132 U. S. 39; 33 L. Ed. 251; 10 S. Ct. 1. . .60, 103, 448, 854 
 
 Brush V. Electric, 45 Fed. 241 558, 568 
 
 Brush V. Electric, 47 Fed. 48 App. 244 
 
 Brush V. Electric, 64 Fed. 775. 564 
 
 Brush V. Julien, 41 Fed. 679 55 
 
 Brush V. Ware, 15 Pet. 93, 112, 114; 10 L. Ed. 89 167 
 
 Brush-Swan v. Thomson-Houston, 48 Fed. 224 765 
 
 Bryan v. Harrison, 27 Pa. St. 233 322 
 
 Bryant v. Leland, 6 Fed. 125 401 
 
 Bryce v. Dorr, 3 McLean, 583; Fed. Cas. 6497 289 
 
 Bryce v. National, 116 Fed. 186; 53 C. C. A. 611 202 
 
 Bryce v. Seneca, 140 Fed. 161 851 
 
 Buckingham's Appeal, 60 Conn. 143 396 
 
 Buddicuin v. Kirk, 3 Cranch, 295; 2 L. Ed. 584 App. 371 
 
 Buerk /;. Lnhauscr, 2 B. & A. 452; Fed. Cas. 2107 396, 830 
 
 Buffington's v. Eusti.s, 65 Fed. 804; 13 C. C. A. 143. .. . 12, 195, 204, 473 
 
 liuffington's V. Harvey, 95 U. S. 99; 24 L. Ed. 381 138 
 
 Bullock V. CJcneral, 149 Fed. 409; 79 C. C. A. 229 309, 904 
 
 Bullock V. Jones, 3 B. & A. 195; Fed. Cas. 2132 629 
 
 Bullock V. Westinghou.se, 129 Fed. 105; 63 C. C. A. 607 App. 508 
 
 Bundy V. Detroit, 94 Fed. 524; 36 C. C. A. 375 . . . 198, 241, 374, 376, 378, 
 435, 459, 461, 468, 485, 600, 615, App. 207, 376, 378, 461, 658 
 
 Burdell v. Denig, 92 U. S. 716; 23 L. Ed. 764 285, 292, 294 
 
 Burdett v. Estev, Fed. Cas. 2145 App. 344 
 
 Burdsall v. Curran, 31 Fed. 918 451, 797
 
 TABLE OF CASES CITED CXXl 
 
 I References are to sections. " App." refers to Appendix] 
 
 Burnham v. Union, 110 Fed. 765; 49 C. C. A. 163 599, 674, App. 675 
 
 Burns v. Cooper, 153 Fed. 148; 82 C. C. A. 300 App. 893 
 
 Burns v. Lynde, 6 Allen, 305 717 
 
 Burns v. Meyer, 100 U. S. 671; 25 L. Ed. 738 207, 226, 244, 375, 377, 
 
 598, 629, 680, 903, App. 205 
 
 Burns v. Mills, 143 Fed. 325; 74 C. C. A. 525 App. 672 
 
 Burr V. DeLaVergne, 102 N. Y. 415 168, App. 160 
 
 Burr V. Duryea, 1 Wall. 320; 17 L. Ed. 650 196, App. 458, 490 
 
 Burr V. Duryee, 68 U. S. 531; 17 L. Ed. 750 310, 426, 499, 503, 531, 
 
 605, 639, 651, 672, 679, 683, 771, 871, 872, 886, 88-8 
 
 Burr V. Durvee, 68 U. S. 579; 17 L. Ed. 660 651, 686 
 
 Burr V. Duryee, 2 Fish. 275; Fed. Cas. 2190 532 
 
 Burr V. Gregory, 2 Paine, 426; Fed. Cas. 357 714 
 
 Burr V. Kimbark, 28 Fed. 574 554, 555, 797 
 
 Burrell v. Hackley, 35 Fed. 833 800- 
 
 Burt V. Evory, 133 U. S. 349; 33 L. Ed. 647; 10 S. Ct. 349. .. . 380, 431, 
 437, 440, 591, 601, 608, 609, 612, 617, 646, 654, 665, 667, 671, 672, App. 
 
 599, 675 
 Busch V. Jones, 184 U. S. 598; 46 L. Ed. 707; 22 S. Ct. 511 . 717, App. 806 
 Busell V. Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 150 .. . 363, 599, 
 
 606, 654, 655, 668, 672 
 
 Buser v. Novelty, 151 Fed. 478; 81 C. C. A. 16 72 
 
 Bush V. Fox, 5 H. L. Cas. 707 671, 676, 679 
 
 Buss V. Putney, 38 N. H. 44 753 
 
 Bussey v. Excelsior, 110 U. S. 131; 28 L. Ed. 95; 4 S. Ct. 38 ... . 41, 216, 
 
 609, 657, 662, 667, 679 
 
 Butler V. Eaton, 141 U. S. 240; 35 L. Ed. 713; 11 S. Ct. 985 34, 711 
 
 Butler V. Fayerweather, 91 Fed. 458 537 
 
 Butler V. Shaw, 21 Fed. 321 13 
 
 Butterworth v. Boral, 97 0. G. 1596 App. 421 
 
 Butterworth v. Hoe, 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25. . . . 13, 143, 
 
 App. 128 
 
 Buxton V. Lister, 3 Atk. 383 174 
 
 Cahill V. Brown, 3 B. & A. 580; Fed. Cas. 2291 85, 88 
 
 Cahoon v. Ring, 1 Cliff. 592; Fed. Cas. 2292 20, 72, 373, 501, 
 
 526, 629, 811 
 
 Cain V. Park, 86 0. G. 797 3 
 
 Calculagraph v. Wilson, 132 Fed. 20 247 
 
 Caldwell v. Powell, 73 Fed. 488; 19 C. C. A. 592 325, 326 
 
 Callaghan v. Myers, 128 U. S. 617; 32 L. Ed. 547; 9 S. Ct. 177 290, 
 
 829, 836, 837, App. 845 
 
 California v. Henzel, 48 Fed. 375 548 
 
 California v. Molitor, 113 U. S. 609; 28 L. Ed. 1106; 5 S. Ct. 618 406 
 
 Camden v. Stuart, 144 U. S. 118; 36 L. Ed. 363; 12 S. Ct. 585 836 
 
 Cammeyer v. Newton, 94 U. S. 225; 24 L. El. 72 26, 498, 745 
 
 Campbell v. Am. Shipbuilding, 179 Fed. 498; 103 C. C. A. 122 . . App. 207 
 
 Campbell v. Baylcy, 63 Fed. 463; 11 C.C. A. 284 46 
 
 Campbell v. Duplex, 101 Fed. 282; 41 C. C. A. 351 207, 599, 654, 
 
 674, 675, App. 675, 701 
 
 Campbell v. Duplex, 86 Fed. 315 195, 574 
 
 Campbell v. Hall, 16 N. Y. 575 36 
 
 Campbell v. Manhattan, 49 Fed. 930 548, 574, 645, 746 
 
 Campbell v. Mayor, 9 Fed. 500 853, 857 
 
 Campbell v. Mayor, 36 Fed. 260 App. 899 
 
 Campbell v. Rankin, 99 U. S. 261; 25 L. Ed. 435 894
 
 CXXll TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Canal Co. v. Clark, 13 Wall. 311; 20 L. Ed. 581 928 
 
 Candai;. Michigan, 124 Fed. 486; 61 C. C. A. 194. . . 195, 937, App. 97 
 
 Canda v. Michigan, 152 Fed. 178; 81 C. C. A. 420 298, 837 
 
 Canter v. American, 28 U. S. 307; 7 L. Ed. 306 141 277 
 
 Cantrell v. Wallick, 117 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970. . 61 447 
 453, 501, 506, 532, 561, 629, 630, 636, 638, 673, 850, App. 74 
 
 Carbon Co. v. McMillin, 119 N. Y. 46 744 
 
 Carhart v. Austin, 2 Cliff. 528; Fed. Cas. 2288 871 
 
 Carnan v. Bowles, 2 Bro. Ch. 84 418 
 
 Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698 ... 101 
 
 561, 648, 817, App. 341, 817 
 
 Carnegie v. Colorado, 165 Fed. 195; 91 C. C. A. 229 App. 806 
 
 Carpenter v. Dexter, 8 Wall. 513; 19 L. Ed. 426 161 
 
 Carpenter v. Searle, 60 Fed. 82; 8 C. C. A. 476 871, 878, 884 
 
 Carr v. Rice, 1 Fish. 198; Fed. Cas. 2440 574 
 
 Carr v. U. S., 98 U. S. 433; 25 L. Ed. 209 '. . . . . 715, 721 
 
 Carter v. Baker, 1 Sawy. 512; Fed. Cas. 2472 374 
 
 Carter v. Hanes, 70 Fed. 859 App. 205 
 
 Carter v. Ins. Co. 1 Johns. Ch. 463 720 
 
 Carty v. Kellogg, 73 O. G. 285 3, 5 
 
 Carver v. Hyde, 16 Pet. 513; 10 L. Ed. 1051 145, 426, 468, 473, 651 
 
 Carver v. Mfg. Co., 2 Story, 432; Fed. Cas. 2485 223, 311 
 
 Gary v. Acme, 108 Fed. 873; 48 C. C. A. 118 537 
 
 Cary v. Domestic, 27 Fed. 299 ,579 
 
 Cary v. Lovell, 37 Fed. 654 287 
 
 Cary v. Neal, 90 Fed. 725 672, 919, App. 598 
 
 Cary v. Wolff, 24 Fed. 139 671 
 
 Case V. Brown, 69 U. S. 320; 17 L. Ed. 817 605, 872 
 
 Case V. Hall, 94 Fed. 300; 30 C. C. A. 259 136 
 
 Case V. Terrell, 78 U. S. 199; 20 L. Ed. 134 553 
 
 Casey v. Cincinnati, 45 Fed. 135 924 
 
 Casebeer v. Mowry, 55 Pa. St. 422 894 
 
 Casler, Ex parte, 90 0. G. 446 App. 229 
 
 Cathcart v. Robinson, 30 U. S. 264; 8 L. Ed. 264 174 
 
 Cator V. Burke, 1 Br. Ch. 434 ' 720 
 
 Caverly v. Deere, 66 Fed. 305 Ill, 363, 593, 602, 646 
 
 Cayuta v. Kennedy, 127 Fed. 335 548, App. 559 
 
 Cazier v. Mackie-Lovejoy, 138 Fed. 654; 71 C. C. A. 104 247 
 
 Celluloid V. American, 30 Fed. 437 476, 477 
 
 Celluloid V. Arlington, 34 Fed. 324 548, App. 559 
 
 Celluloid V. Tower, 26 Fed. 451 " 696 
 
 Celluloid V. Zylonite, 27 Fed. 291 App. 195 
 
 Centaur v. Ileinsfurter, 84 Pal. 955; 28 C. C. A. 581 929 
 
 Central v. Grant, 135 U. S. 207; 34 L. Ed. 97; 10 S. Ct. 736 116 
 
 Cerealine v. Bates, 101 Fed. 272; 41 C. C. A. 341 646, 823 
 
 Chabot V. Ovenseaming Co. 6 Fish. 71; Fed. Cas. 2567 752 
 
 Chace v. Vasquez, 11 Wheat. 429; 6 L. Ed. 426 116 
 
 Chadwick v. Covell, 151 Mass. 190 898 
 
 Chaffee v. Boston, 63 U. S. 217; 16 L. Ed. 240. . . .418, 477, 523, 524, 769, 
 
 927, App. 474 
 
 Chambers v. Chrichley, 33 Beav. 374 213, 384, 385 
 
 Chapman v. Barney, 129 U. S. 677; 32 L. Ed. 800; 9 S. Ct. 426 .... 789 
 
 Charter v. Charter, 47 III. App. .36 762 
 
 Chase v. Jefferson, 1 Houst. 257 387 
 
 Chase v. Fillebrown, 58 Fed. 374 85, 98, 107
 
 TABLE OF CASES CITED CXXlll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Chatfield v. Wilson, 28 Vt. 49 508 
 
 Chatillon, Ex parte, 2 0. G. 115 775 
 
 Chang-Kee v. United States, 3 Wall. 320; 18 L. Ed. 72 789 
 
 Chemical v. Lauer, 10 Blatch. 122; Fed. Cas. 12,135 200, 341 
 
 Chemical v. Raymond, 71 Fed. 179; 18 C. C. A. 31 904, 908 
 
 Chemical v. Vice, 14 Blatch. 179; Fed. Cas. 12,136 548 
 
 Chetwood, In re, 165 U. S. 443; 41 L. Ed. 782; 17 S. Ct. 385 537 
 
 Chicago V. Bush, 2 Biss. 472; Fed. Cas. 2669 459 
 
 Chicago V. Sayles, 97 U. S. 554; 24 L. Ed. 1053 ... 54, 55, 56, 213, 222, 224, 
 230, 375, 378, 441, 442, 468, 497, 507, 768, 780, 815, 872, 876, App. 440, 
 
 441, 632, 780 
 Chicago V. Tompkins, 176 U. S. 170; 44 L. Ed. 418; 20 S. Ct. 336. . App. 845 
 
 Child V. Powder Works, 45 N. H. 547 894 
 
 Chiles, Re, 22 Wall. 157; 22 L. Ed. 819 App. 577 
 
 Chinnock v. Paterson, 112 Fed. 531; 50 C. C. A. 384 326, 717 
 
 Chinnock v. Paterson, 110 Fed. 199 327 
 
 Christensen, In re, 194 U. S. 458; 48 L. Ed. 1072; 24 S.Ct. 729 .. . App. 536, 
 
 538, 577 
 
 Christensen v. Westinghouse, 129 Fed. 96; 63 C. C. A. 598 536 
 
 Christie v. Seybold, 55 Fed. 69; 5 C. C. A. 33 613, 682, App. 65, 861 
 
 Christie v. Seybold, 54 0. G. 957 811 
 
 Christman v. Ramsey, Fed. Cas. 2704 App. 344 
 
 Cimiotti v. American, 198 U. S. 399; 49 L. Ed. 1100; 25 S. Ct. 697. .. . 206, 
 
 226, 378, 433, 456, 467, 473, 700, App. 456 
 
 Cimiotti v. American, 115 Fed. 498; 53 C. C. A. 230 456 
 
 Cimiotti V. Nearseal, 123 Fed. 479; 59 C. C. A. 58 257, 456 
 
 Cincinnati v. Bay, 200 U. S. 179; 50 L. Ed. 428; 26 S. Ct. 208. . . App. 744 
 Clark V. Adie, L. R. 2 App. Cas. 423. .. . 213, 230, 330, 384, 385, 768, 815 
 
 Clark V. Adie, L. R. 10 Ch. 667 202, 466 
 
 Clark V. Clark, 58 U. S. 315; 14 L. Ed. 315-322 183 
 
 Clark V. Deere, 80 Fed. 534; 25 C. C. A. 619 Ill, 646 
 
 Clark V. Ferguson, 119 U. S. 335; 30 L. Ed. 406; 7 S. Ct. 382 591, 
 
 609, 636, 664, 667, 672 
 Clark V. Willimantic, 140 U. S. 481; 35 L. Ed. 521; 11 S. Ct. 846 . . 65, 71, 
 
 74, 108, 613, App. 65, 862 
 Clark V. Wooster, 119 U. S. 322; 30 L. Ed. 392; 7 S. Ct. 217 .... 550, 568, 
 
 717, 718, 719, 730, App. 717, 806 
 Clements v. Odorless, 109 U. S. 641; 27 L. Ed. 1060; 3 S. Ct. 525. . . . 871, 
 
 876, 877, 885 
 
 Cleveland v. Chamberlain, 1 Black. 419; 17 L. Ed. 93 887 
 
 Cleveland v. Detroit, 131 Fed. 853; 68 C. C. A. 233 . . 56, 780, App. 691 
 
 Cleveland v. Kauffman, 126 Fed. 658 App. 668 
 
 Clough V. Barker, 106 U. S. 166; 27 L. Ed. 134; 1 S. Ct. 188 107, 230, 
 
 375, 453,485, 497, 506, 608, 673, 699, 768, 815 
 Clough V. Gilbert, 106 U. S. 178; 27 L. Ed. 138; 1 S. Ct. 198. . . 375, 453 
 
 Cluett V. Claflin, 140 U. S. ISO; 35 L. Ed. 385; 11 S. Ct. 725 646 
 
 Clum V. Brewer, 2 Curt. 506; Fed. Cas. 2909 418, 927 
 
 Coburn v. Clark, 15 Fed. 804 561, 579 
 
 Cochrane v. Badische, 111 U. S. 293; 28 L. Ed. 433; 4 S. Ct. 455. . 519, 774 
 Cochrane v. Deener, 94 U. S. 780; 24 L. Ed. 139 .. . 148, 348, 379, 434, 
 
 459, 461, 506, 688, 770, 817, 819, App. 817 
 
 Coder v. Arts, 152 Fed. 943; 82 C. C. A. 91 App. 129 
 
 Coffin V. Douglass, 61 Tex. 406 753 
 
 Coffin V. Ogden, 85 U. S. 120; 21 L. Ed. 821. .. . 10, 61, 71, 88, 89, 103, 
 
 408, 415, 561, 590, 630, 854, 858, App. 97
 
 CXXiv TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Cohansey Mfg. Co. v. Wharton, 28 Fed. 189 190, 473 
 
 Cohn V. United States, 93 U. S. 366; 23 L. Ed. 907 106, 320 
 
 Colgate V. Western, 15 Blatch. 365; Fed. Cas. 2995 3, 618, 672 
 
 Collar Co. v. White, 2 B. & A. 60; Fed. Cas. 14.396 689 
 
 Cole V. Thayer, 25 Mich. 212 App. 144 
 
 Colorado v. United States, 123 U. S. 307; 31 L. Ed. 182; 8 S. Ct. 131 . . . 26 
 
 Colt V. Arms Co. 1 Fish. 108; Fed. Cas. 3030 497, 506 
 
 Columb V. Webster, 84 Fed. 592; 28 C C. A. 225 37, App. 31 
 
 Columbia v. Duff, 184 Fed. 876; 107 C. C. A. 200 App. 37 
 
 Columbia v. Freeman, 71 Fed. 302 574, 920 
 
 Columbia Wire Co. v. Boyce, 104 Fed. 172; 44 C. C. A. 588 542 
 
 Columbine v. Chichester, 2 Phil. 27 151 
 
 Columbus V. Robbins, 52 Fed. 337; 3 C. C. A. 103. . . 116, 118, 120, 539, 544 
 Columbus V. Robbins, 64 Fed. 384; 12 C. C. A. 174. . . 116, 459, 468, 545, 
 
 App. 459 
 
 Columbus V. Standard, 148 Fed. 622; 78 C. C. A. 394 74, App. 65 
 
 Commercial v. Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 S. a. 972. . 420, 421 
 
 Com. V. Alger, 7 Cush. 53 920 
 
 Com. V. Props. 7 Mass. 417 807 
 
 Commercial Acetylene v. Acme, 188 Fed. 89 App. 561 
 
 Commercial Acetylene v. Avery, 152 Fed. 642 App. 579 
 
 Commercial Acetylene v. Autolux, 181 Fed. 387 App. 476 
 
 Commissioner v. Whiteley, 4 Wall. 522; 18 L. Ed. 335 25 
 
 Commonwealth v. Johnson, 6 Pa. 136 App. 144 
 
 Computing v. Automatic, 204 U. S. 609; 51 L. Ed. 645; 27 S. Ct. 307 . . 207 
 
 App. 201, 207, 213 
 
 Computing v. National, 79 led. 962 924, App. 924 
 
 Conrad v. Atlantic, 26 U. S. 446; 7 L. Ed. 385 778 
 
 Conley v. Marum, 83 Fed. 309 323 
 
 Conqueror, The, 166 U. S. 110; 41 L. Ed. 937; 17 S. Ct. 510 397 
 
 Consolidated v. Accumulator, 55 Fed. 485; 5 C. C. A. 202 120, 
 
 539, 544, 567 
 
 Consolidated v. American, 82 Fed. 993 59 
 
 Consolidated v. Ashton, 26 Fed. 319 App. 371 
 
 Consolidated v. Barnard, 43 Fed. 527 624 
 
 Consolidated v. Coombs, 39 Fed. 25 223, 459 
 
 Consolidated v. Coombs, 39 Fed. 803 548, 574, 645, 746 
 
 Consolidated v. ColumI)ian, 79 Fed. 795 219, 228, 692, 797 
 
 Consolidated v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 513. . . 230, 
 
 375,435,453, 459, 497, 506, 622, 624, 631, 635, 655, 717, 768, 811, 815, 
 
 864, App. 497 
 Consolidated v. Crosby, 141 U. S. 441; 35 L. Ed. 809; 12 S. Ct. 49 . . 290, 
 
 298, 828, 829, 837, 845, App. 838, 845 
 
 Consolidated v. Detroit, 59 Fed. 902 635 
 
 Consolidated v. Guilder, 9 Fed. 155 213, 384, 555 
 
 Consolidated v. Hays, 100 Fed. 984; 41 C. C. A. 142 457, 692, 701 
 
 Consolidated v. Holtzcr, 67 Fed. 907; 15 C. C. A. 63 615, 616, 627, 
 
 658, 661, 904 
 
 Consolidated v. Littaucr, 84 Fed. 164; 28 C. C. A. 133 561, 692 
 
 Consolidated v. McKeesport, 40 Fed. 21 207 
 
 Consolidated v. Pacific, 58 Fed. 226; 7 C. C. A. 195 120, 539 
 
 Consolidated v. Walker, 138 U. S. 124; 34 L. Ed. 920; 11 S. Ct. 292. . . 49, 
 
 212, 225, 440, 671, 672 
 
 Consolidated v. West End, 85 Fed. 662; 29 C. C. A. 386 59, 486 
 
 Consolidated v. Woerle, 29 Fed. 449 76
 
 TABLE OF CASES CITED CXXV 
 
 I References are to sections. " App." refers to Appendix 1 
 
 Consolidated v. Wright, 94 U. S. 92; 24 L. Ed. 68 18, 74, 414, 
 
 853, 856, 857, App. 727, 856 
 
 Con. B. S. Co. V. Detroit, 47 Fed. 894 622, 633, 635 
 
 Con. Fastener Co. v. Am. Fastener Co. 94 Fed. 523 572 
 
 Con. Piedmont v. Pacific, 58 Fed. 226; 7 C. C. A. 195 539 
 
 Consolidated Purifier Co. v. Wolf, 28 Fed. 814 766 
 
 Consolidated Rubber Tire v. Diamond, 157 Fed. 677; 85 C. C. A. 249 
 
 .... App. 118, 253, 535 
 Continental v. Eastern, 210 U. S. 405; 51 L. Ed. 922; 28 S. Ct. 748 . . 267, 
 
 484, 744, App. 129, 212, 223, 322 
 
 Continental v. Empire, 8 Blatch. 295; Fed. Cas. 3142 366, 367 
 
 Continental v. Pendergast, 126 Fed. 381 App. 381 
 
 Converse v. Cannon, 2 Woods. 7; Fed. Cas. 3144 501 
 
 Coon V. Wilson, 113 U. S. 268; 28 L. Ed. 963; 5 S. Ct. 537 871, 872, 
 
 875, 877, 878, 885, 887 
 
 Coop V. Development, 47 Fed. 899 324 
 
 Copeland v. Crane, 9 Pick. 79 847 
 
 Corbin v. Eagle, 150 U. S. 38; 37 L. Ed. 989; 14 S. Ct. 28. . . 54, 207, 208, 
 
 871, App. 207, 885 
 
 Corbin v. Yale, 58 Fed. 563 384 
 
 Corcoran v. Canal, 94 U. S. 741; 24 L. Ed. 190 31 
 
 Cordova v. Hood, 17 Wall. 1 ; 21 L. Ed. 587 167 
 
 Corning v. Burden, 15 How. 252; 14 L. Ed. 683. .. . 148, 222, 426, 629, 651, 
 
 680, 686, 688, 690, 770, 795, 815, 817, 819, 903, App. 629 
 
 Cornley v. Marckwold, 131 U. S. 159; 33 L. Ed. 117; 9 S. Ct. 744 ... 288 
 
 Corser v. Overall Co. 59 Fed. 781 554 
 
 Corrington v. Westinghouse, 173 Fed. 69 App. 9 
 
 Cortelyou v. Carter, 118 Fed. 1022 257 
 
 Cortelyou v. Johnson, 145 Fed. 933 476 
 
 Cortelyou v. Lowe, 111 Fed. 1005 474, 476, 513, 761 
 
 Corvailis v. Curran, 8 Fed. 150 497, 506 
 
 Coupe V. Royer, 155 U. S. 565; 39 -L. Ed. 263; 15 S. Ct. 199 223, 285, 
 
 293, 294, 299, 777, 837, 842, 847, App. 717 
 
 Coupe V. Weatherhead, 16 Fed. 673 453, 454 
 
 Covert V. Covert, 106 Fed. 183 App. 856 
 
 Covert V. Sargent, 38 Fed. 237 288 
 
 Cox V. Griggs, 1 Biss. 362; Fed. Cas. 3302 861 
 
 Craighead v. Wilson, 18 How. 199; 15 L. Ed. 332 130 
 
 Cram v. Morris, 6 Pet. 598; 8 L. Ed. 596 734 
 
 Cramer v. Fry, 68 Fed. 201 48-1 
 
 Cramer v. Singer, 93 Fed. 636; 35 C. C. A. 508 386, 893 
 
 Cranson v. Smith, 37 Mich. 309 920 
 
 Crandall v. Watters, 9 Fed. 659 671 
 
 Crane v. Price, 1 Web. 393 655, 667, 671, 676, 679, 696, /69 
 
 Crane v. Price, 4 Man. & G. 580 671, 6/6 
 
 Crawford v. Heysinger, 123 U. S. 589; 31 L. Ed. 269; 8 S. Ct. 399 .. . 54, 
 
 202, 207, 380, 602, 871 
 
 Crawford v. Points, 13 How. 11; 14 L. Ed. 10 116 
 
 Creamer v. Bowers, 35 Fed. 206 288 
 
 Creamer v. Washington, 168 U. S. 124; 18 S. Ct. 1 711 
 
 Crescent v. Gottfried, 128 U. S. 158; 32 L. Ed. 690; 9 S. Ct. 83. . . . 682, 692, 
 
 App. 672 
 
 Crier v. Innes, 170 Fed. 324; 95 C. C. A. 508 App. 679 
 
 Crockett v. Lee, 7 Wheat. 522; 5 L. Ed. 520 789 
 
 Crompton v. Knowles, 7 Fed. 199 95, 224
 
 CXXVl TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Cromwell v. Sac. 94 U. S. 351; 24 L. Ed. 195 31, 893, 894 
 
 Cropper v. Smith, 26 Ch. Div. 700 384 
 
 Crosby Case, 3 Wilson, 188 577 
 
 Crossley v. Dixon, 10 H. of L. Cas. 293 213 
 
 Crosthwaite v. Steel, 6 R. P. C. 190 : 384 
 
 Crotty V. Chicago, 169 Fed. 593; 95 C. C. A. 91 App. 893 
 
 Crouch V. Roemer, 103 U. S. 797; 26 L. Ed. 426 380 
 
 Crown V. Aluminum, 108 Fed. 845; 48 C. C. A. 72 375, 506, 548, 
 
 574, 631, 692, App. 497, 637 
 
 Crown V. Standard, 136 Fed. 841; 69 C. C. A. 200 350 
 
 Cunningham v. Macon, 109 U. S. 446; 27 L. Ed. 992; 3 S. Ct. 109. .. . 553 
 
 Curtis V. Overman, 58 Fed. 784; 7 C. C. A. 493 120, 539, 561 
 
 Curtis V. Piatt, L. R. 3 Ch. Div. 134 230, 768, 815 
 
 Curran v. Burdsall, 20 Fed. 835 384, 451, 766, 927 
 
 Curson v. Belworthy, 22 Eng. Law & Eq. 1 425 
 
 Cushman v. Parkman, 9 O. G. 1108 861 
 
 Cutter V. Sheldon, 10 Blatch. 1 ; Fed. Cas. 13,331 756 
 
 Dake v. Rice, 130 Mass. 410 157 
 
 Dale V. Hyatt, 125 U. S. 46; 31 L. Ed. 683; 8 S. Ct. 756 714 
 
 722, 724, App. 718 
 Dalzell V. Dueber, 149 U. S. 315; 37 L. Ed. 749; 13 S. Ct. 886. . . 141, 151, 
 
 162, 756, 800, App. 160 
 
 Daniel v. Miller, 81 Fed. 1000 797, App. 381, 384 
 
 Daniels v. Eldridge, 125 Mass. 356 157 
 
 Daniels v. Railroad, 3 Wall. 250; 18 L. Ed. 224 113 
 
 D'Arcey v. Staples, 161 Fed. 733; 88 C. C. A. 606 App.658 
 
 Dashiell v. Grosvenor, 162 U. S. 425; 40 L. Ed. 1025; 16 S. Ct. 805 ... . 93 
 
 Davey v. Prouty, 107 Fed. 505; 46 C. C. A. 439 435 
 
 Davis V. Brown, 94 U. S. 423; 24 L. Ed. 204 894 
 
 Davis V. Brown, 9 Fed. 647 20 
 
 Davis V. Davis, 2 Atk. 21 305 
 
 Davis V. Edison, 60 Fed. 276; 8 C. C. A. 615 523, 541, 544, 561 
 
 Davis V. Frederick, 19 Fed. 99 857 
 
 Davis V. Perry, 120 Fed. 941; 57 C. C. A. 231 608, 612 
 
 Davis V. Smith, 19 Fed. 823 App. 717 
 
 Davis V. United States, 23 Ct. CI. 329 756 
 
 Davock V. Chicago, 69 Fed. 468 324 
 
 Davoll V. Brown, 1 Wood & M. 53; Fed. Cas. 3662 903 
 
 Dawson v. FoUen, 2 Wash. 311; Fed. Cas. 3670 667 
 
 Dawson v. Johnson, 1 Fost. & F. 656 778 
 
 Day V. Fair Haven, 132 U. S. 98; 33 L. Ed. 265; 10 S. Ct. 11 49, 195, 
 
 223, 239, 667 
 
 Day V. Wood worth, 13 How. 363; 14 L. Ed. 181 283 
 
 Daylight v. Marcus, 110 Fed. 980 180 
 
 Dayton v. Westinghouse, 118 Fed. 562; 55 C. C. A. 390 349 
 
 Dean v. Hodge, 35 Minn. 146 App. 160 
 
 Dean v. Mason, 61 U. S. 198; 15 L. Ed. 876 292, 796, 837, 839 
 
 Debs, In re, 158 U. S. 564; 39 L. Ed. 1092; 15 S. Ct. 900. . . 536, 537, 924, 
 
 App. 577 
 
 Debs, Ex parte, 159 U. S. 251; 15 S. Ct. 1039 538 
 
 Decatur v. Paulding, 14 Pet. 497; 10 L. Ed. 560 25 
 
 Dececo v. Gilchrist, 125 Fed. 293; 60 C. C. A. 207 608 
 
 Dederick v. Cassell, 9 Fed. 306 674, App. 91 
 
 Dederick v. Fox, 56 Fed. 714 3 
 
 Dederick v. Whitman, 26 Fed. 763 158, 396
 
 TABLE OF CASES CITED CXXVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Deere v. Case, 56 Fed. 841; 6 C. C. A. 157 608, 672 
 
 Deere v. Dowagiac, 153 Fed. 177; 82 C. C. A. 351 717 
 
 Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118 60, 
 
 74, 195, 232, 245, 378, 390, 408, 464, 468, 620, 629, 702, 903, App. 71, 
 74, 87, 247 
 DeLamater v. Heath, 58 Fed. 414; 7 C. C. A. 279 .... 192, 221, 234, 856 
 
 DeLaval v. Vermont, 109 Fed. 813 159 
 
 DeLaVergne y. Featherstone, 147 U. S. 209; 37 L. Ed. 138; 13 S. Ct. 283 
 
 ...55, 56, 181, 207, 239, 300, App. 780 
 
 DeLaVergne v. Featherstone, 49 Fed. 916 55 
 
 DeLaVergne v. Valentine, 66 Fed. 765; 14 C. C. A. 77 195, 503 
 
 Delaware & A. Tel. v. Delaware, 50 Fed. 677; 2 C. C. A. 1 746 
 
 DeLoriea v. Whitney, 63 Fed. 611; 11 C. C. A. 355 473, 496, 627 
 
 Denise v. Swett, 142 N. Y. 602 764 
 
 Dennison v. Thomas, 94 Fed. 651 794 
 
 Denniston v. Stewart, 18 How. 565; 15 L. Ed. 489 113 
 
 Densmore v. Scofield, 102 U. S. 375; 26 L. Ed. 214 715, 745 
 
 Derby v. Thompson, 146 U. S. 476; 30 L. Ed. 1051; 13 S. Ct. 181 ... 380 
 Deslions v. LaCompagnie, 210 U. S. 95; 52 L. Ed. 973; 28 S. Ct. 664. . . 129 
 DeSollar v. Hanscome, 158 U. S. 216; 39 L. Ed. 956; 15 S. Ct. 816. . . 894 
 
 Detmold v. Reeves, 1 Fish. 127; Fed. Cas. 3831 683 
 
 Detroit v. Renchard, 9 Fed. 293 860, 867 
 
 Devlin V. Paynter, 64 Fed. 398; 12 C. C. A. 188 226, 459 
 
 D'Wolf V. Raband, 1 Pet. 476; 7 L. Ed. 474 734 
 
 Dexter v. Arnold, 2 Sumn. 109; Fed. Cas. 3858 847 
 
 Dexter v. Sayward, 79 Fed. 237 App. 273 
 
 Dhegetaft v. London, 4 Br. P. C. 2d. Ed. 436 720 
 
 Diamond v. Sens, 159 Fed. 497 App. 717 
 
 Diamond Rubber Tire v. Consolidated, 220 U. S. 428; 55 S. Ct. 327; 31 L. 
 
 Ed. 444 App. 387 
 
 Dick V. Oil Well, 25 Fed. 105 324 
 
 Dickerson v. Codwise, 11 Paige, 189 116 
 
 Dickerson v. Machine, 35 Fed. 143 567, 570, 575 
 
 Dickerson v. Matheson, 57 Fed. 524; 6 C. C. A. 466 505 
 
 Dickerson v. ^latheson, 47 Fed. 319 505 
 
 Dickerson v. Matheson, 50 Fed. 73 505 
 
 Dickerson v. Tiuhng, 84 Fed. 192; 28 C. C. A. 139 513, 744 
 
 DiUingham v. Snow, 5 Mass. 554 App. 758 
 
 DistiUing v. People, 41 N. E. 188 744 
 
 Dixon V. Moyer, 4 Wash. 68; Fed. Cas. 3931 152 
 
 Dixon-Woods V. Pfeifer, 55 Fed. 390; 5 C. C. A 148, 188, 427, 679, 691, 
 
 916, App. 691 
 
 Dobbs V. Penn, 5 Exch. 427 671, 676 
 
 Dobson V. Cubley, 149 U. S. 117; 37 L. Ed. 671 ; 13 S. Ct. 766 380 
 
 Dobson V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946 277, 846, 
 
 App. 331 
 
 Dobson V. Hartford, 114 U. S. 439; 29 L. Ed. 177; 5 S. Ct. 945 247, 
 
 277, 281, 290, 298, 337, 846, 847 
 
 Dobson V. Lees, 137 U. S. 258; 34 L. Ed. 652; 11 S. Ct. 71 54, 207, 
 
 876, 885 
 
 Dodge V. N. Y. C. 150 Fed. 738; 80 C. C. A. 404 App. 653 
 
 Dodge V. Porter, 98 Fed. 624 613 
 
 Doe V. Earl, 1 Adol. & E. 783 36 
 
 Doe V. Grymes, 1 Pet. 469; 7 L. Ed. 466 734 
 
 Doig V. Morgan, 91 Fed. 1001; 33 C. C. A. 683 App. 253, 535
 
 CXXVlll TABLE OF CASES CITED 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Doig V. Morgan, 122 Fed. 460; 59 C. C. A. 616 591, 626 
 
 Donnell v. Columbia, 2 Sumn. 366; Fed. Cas. 3987 836 
 
 Dorsey v. Bradley, 12 Blatch. 202; Fed. Cas. 4015 505, 576, 899 
 
 Doten V. City, 138 Fed. 406; 70 C. C. A. 308 842 
 
 Double Pointed v. Two Rivers, 109 U. S. 117; 27 L. Ed. 877; 3 S. Ct 105 
 
 . . . .216, 609, 657, 662, 667, 669, 672, 679 
 
 Double Pointed v. Two Rivers, 3 Fed. 26 607 
 
 Dougherty v. Steel Co. 88 Wise. 343 20 
 
 Dougherty v. West, 2 Fish, 553; Fed. Cas. 4029 554 
 
 Dowagiac v. Brennan, 127 Fed. 143; 62 C. C. A. 257 485 
 
 Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. 526 App. 843 
 
 Dowagiac v. Minnesota, 118 Fed. 136; 55 C. C. A. 86 376, 635 
 
 Dowagiac v. Superior, 162 Fed. 479; 89 C. C. A. 399 841 
 
 Dowagiac v. Superior, 115 Fed. 886; 33 C. C. A. 36 207, 459, 468, 598, 
 
 599, 622, 631, 671, 673, 674, 911, 919, App. 598, 622 
 
 Downton v. Yaeger, 108 U. S. 466; 27 L. Ed. 789; 3 S. Ct. 10 320 
 
 Drake v. Brownell, 123 Fed. 86; 59 C. C. A. 216 325 
 
 Draper v. Hudson, 3 0. G. 354; Fed. Cas. 4069 775 
 
 Draper v. Mills, 13 0. G. 276; Fed. Cas. 4072 613, 867 
 
 Draper v. Wattles, 3 B. & A. 618; Fed. Cas. 4073 856, 857 
 
 Dravo v. Fabel, 132 U. S. 487; 33 L. Ed. 421; 10 S. Ct. 170 411 
 
 Drewson v. Hartje, 131 Fed. 734; 65 C. C. A. 548 App. 812 
 
 Dreyfus v. Searle, 124 U. S. 60; 31 L. Ed. 352; 8 S. Ct. 390 609, 616, 
 
 671, 672, 682 
 
 Dryfoos v. Wiese, 124 U. S. 32; 31 L. Ed. 362; 8 S. Ct. 354 202, 215, 
 
 217, 375, 602, 936 
 DuBois V. Kirk, 158 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. . . 96, 102, 305, 
 
 456, 673, 691 
 
 DuBois V. Railroad, 5 Fish. 208; Fed. Cas. 4109 894 
 
 Dubuque, Ex parte, 68 U. S. 69; 17 L. Ed. 514 138, 891 
 
 Dudley v. Munger, 50 Fed. 785 120 
 
 Dueber v. Robbins, 75 Fed. 17; 21 C. C. A. 198 385, 623, 636, 675 
 
 Duer V. Corbin, 149 U. S. 216; 37 L. Ed. 707; 13 S. Ct. 850. . 615, 635, 636, 
 
 App. 636 
 
 Duff V. Sterling, 107 U. S. 636; 27 L. Ed. 517; 2 S. Ct. 487 202, 211, 
 
 213, 215, 217, 229, 230, 375, 441, 477, 497, 507, 680, 768, 815, App. 205 
 
 Duffy V. Lyth, 5 Watts, 120 894 
 
 Dunbar v. Eastern, 81 Fed. 201; 26 C. C. A. 330 596, App. 653 
 
 Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 34. . . . 313, 323, 325, 341, 344, 
 
 437, 473, 591, 596, 599, 012, 617, 619, 653, 655, 667, 669, 708, 734, 799, 
 
 App. 341, 795 
 
 Dunbar v. Tack Co. 4 B. & A. 518; Fed. Cas. 4127a 672 
 
 Duncan v. Jandow, 82 U. S. 165; 2 L. Ed. 142 154 
 
 Dunham v. Dennison, 154 U. S. 103; 38 L. Ed. 924; 14 S. Ct. 986. .. . 468, 
 
 874 
 
 Dunham v. Railroad, 2 B. & A. 327; Fed. Cas. 4151 927 
 
 Dunlap V. Schofield, 152 U. S. 244; 38 L. Ed. 426; 14 S. Ct. 576. .336, 777 
 
 Dunlap V. Willbraiidt, 151 Fed. 223; 80 C. C. A. 575 47 
 
 Dunn V. Rector, 14 Johns. 118 156 
 
 Duplex V. Campbell, 69 Fed. 2.50; 16 C. C. A. 220 118, 544, App. 561 
 
 Durand v. Schulzc, 61 Fed. 819; 10 C. C. A. 97 240 
 
 Durant v. Essex, 101 U. S. 555; 25 L. Ed. 961 • 128 
 
 Eachus V. Broomall, 115 U. S. 429; 29 L. Ed. 419; 6 S. Ct. 229 224, 
 
 390, 394, 483, 795, App. 881 
 Eades v. Harris, 1 Younge. & C. 230 169
 
 TABLE OF CASES CITED CXxix 
 
 [ Referencea are to sections. " App." refers to Appendix 1 
 
 Eagleton v. West, 111 U. S. 490; 28 L. Ed. 493; 4 S. Ct. 593 55, 56, 
 
 207, 239, 300, 780, 809, 812, App. 780 
 
 Eagleton v. West, 2 Fed. 774 809, 812 
 
 Eames v. Andrews, 122 U. S. 40; 30 L. Ed. 1064; 7 S. Ct. 1073 59, 85, 
 
 98, 188, 426, 427, 598, 640, 679, 691, 819, 911, 916, App. 625, 691 
 Eames v. Godfrey, 68 U. S. 78; 17 L. Ed. 547. . . 202, 466, 473, 528, 612, 
 
 872, App. 456, 490, 503 
 Eames v. Worcester, 123 Fed. 67; 60 C. C. A. 37 468, 615, 665, App. 
 
 498 
 
 Eastern v. Continental, 142 Fed. 479 App. 65 
 
 Eastern v. Hope, 95 U. S. 297; 24 L. Ed. 477 736 
 
 Eastern v. Standard, 30 Fed. 63 856, App. 817 
 
 Eastman v. Mayor, 134 Fed. 844; 69 C. C. A. 628 .. . 614, 851, 855, App. 10, 
 
 899 
 
 Easton v. Salisbury, 21 How. 426; 16 L. Ed. 181 308 
 
 Eaton V. Lewis, 115 Fed. 635 335 
 
 Eaton V. Lewis, 127 Fed. 1018; 61 C. C. A. 562 335 
 
 Eby V. King, 158 U. S. 366; 39 L. Ed. 1018; 15 S. Ct. 972 878, 887 
 
 Ecaubert v. Appleton, 67 Fed. 917; 15 C. C. A. 73 21, 170 
 
 Eck V. Kutz, 132 Fed. 758 App. 97 
 
 Eclipse Mfg. Co. v. Adkins, 36 Fed. 554 324 
 
 Eddy V, Dennis, 95 U. S. 560; 24 L. Ed. 363 202, 375, App. 591 
 
 Edison v. Beacon, 54 Fed. 678 256, 561, 562, App. 562 
 
 Edison v. Columbia, 56 Fed. 496 561 
 
 Edison v. Kaufman, 105 Fed. 960 513, 744, 761 
 
 Edison v. Mt. Morris, 58 Fed. 572; 7 C. C. A. 375 568, 574 
 
 Edison v. Peninsular, 101 Fed. 831; 43 C. C. A. 479. . 476, 756, App. 476 
 
 Edison v. Peninsular, 95 Fed. 669 476 
 
 Edison v. Philadelphia, 60 Fed. 397 254 
 
 Edison v. Pike, 116 Fed. 863 474, 513, 744, 761 
 
 Edison v. Sawyer-Man, 53 Fed. 592; 3 C. C. A. 605 568, 729 
 
 Edison v. Thakara, 167 Pa. 530 755 
 
 Edison v. United States, 59 Fed. 501; 8 C. C. A. 200 539 
 
 Edmeston v. Lyde, 1 Paige, 637 157 
 
 Egbert v. Lippmann, 104 U. S. 333; 26 L. Ed. 755. . . 18, 74, 412, 413, 414, 
 
 415, 416, 851, 853, 854, 855, 856, 857 
 
 Elder V. McClaskey, 70 Fed. 557; 17 C. C. A. 251 116 
 
 Eldred v. Kirkland, 130 Fed. 342; 64 C. C. A. 588 222 
 
 Electric v. Boston, 139 U. S. 481; 35 L. Ed. 250; 11 S. Ct. 586. . . 871, 872, 
 
 876, 877, App. 207, 871 
 
 Electric v. Brush, 52 Fed. 130; 2 C. C. A. 682 350, 356, App. 354 
 
 Electric v. Brush, 44 Fed. 602 170, 587 
 
 Electric v. Carborundum, 102 Fed. 618; 42 C. C. A. 537 223 
 
 Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106 35, 256, 535. 539, 
 
 541, 561, 564 
 
 Electric v. Fuller, 59 Fed. 1003; 8 C. C. A. 442 486 
 
 Electric v. Hall, 114 U. S. 87; 29 L. Ed. 96; 5 S. Ct. 1069 46S, 473 
 
 Electric v. Hall, 6 Fed. 603 860 
 
 Electric v. Jamaica, 61 Fed. 655 654 
 
 Electric v. Julien, 47 Fed. 892 579 
 
 Electric v. McKeesport, 73 0. G. 1289 '814 
 
 Electric v. Pittsburg, 125 Fed. 926 506 
 
 Electric v. Westinghouse, 171 Fed. 83; 9 C. C. A. 187 App. 400 
 
 Electric Mach. v. Morris, 156 Fed. 972 App . 212 
 
 Electrical Accumulator v. Julien, 38 Fed. 117 App. 341, 344
 
 CXXX TABLE OF CASES CITED 
 
 [References are to sections. " App." refers to Appendix] 
 
 Elgin V. Marshall, 106 U. S. 578; 27 L. Ed. 249; 1 S. Ct. 484 894 
 
 Elizabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. . . 18, 82, 290, 298, 
 
 392, 412, 413, 414, 416, 417, 453, 459, 503, 529, 651, 779, 809, 827, 828, 
 
 829, 837, 838, 843, 844, 845, 846, 847, 851, 853, 854, 855, 856, 857, App. 
 
 838, 845, 851 
 
 Ellbert v. St. Paul, 50 Fed. 205 216 
 
 EUicott V. Wiltz, 107 U. S. 711; 27 L. Ed. 448; 2 S. Ct. 128 553 
 
 Ellis V. Roupell, 32 Beav. 303 App. 371 
 
 Elhthorpe v. Robertson, 4 Blatch. 307; Fed. Cas. 4408 860, 867 
 
 Emack v. Kane, 34 Fed. 46 924 
 
 Emerick v. Armstrong, 1 Ohio, 513 App. 144 
 
 Emerson v. Slater, 22 How. 41; 16 L. Ed. 365 176 
 
 Emerson v. Van Nort, 116 Fed. 974 68, App. 74 
 
 Emmons v. Sladden, 9 0. G. 354 418 
 
 Enoch Morgans v. Gibson, 122 Fed. 420; 59 C, C. A. 46 538 
 
 Enterprise v. Deisler, 46 Fed. 854 Apo. 253 
 
 Envelope v. Seymer, 28 L. J. (N. S.) C. P. 22 671, 676, 679 
 
 Erie v. American, 70 Fed. 58; 16 C. C. A. 632 207, 214 
 
 Ertel V. Stahl, 65 Fed. 517; 13 C. C. A. 29 572 
 
 Ertel V. Stahl, 65 Fed. 519; 13 C. C. A. 31 551, 567 
 
 Estey V. Burdett, 109 U. S. 633; 27 L. Ed. 1058; 3 S. Ct. 531 ... . 216, 304, 
 
 657, 662, 667, 679, 833 
 
 Estis V. Trabue, 128 U. S. 225; 32 L. Ed. 437; 9 S. Ct. 58 134 
 
 Eureka v. Bailey, 78 U. S. 488; 20 L. Ed. 209 510, 742, 764 
 
 Evans v. Eaton, 3 Wheat. 454; 4 L. Ed. 433 95, 418 
 
 Evans v. Eaton, 3 Wash. 443; Fed. Cas. 4611 905 
 
 Evans v. Kelly, 13 Fed. 903 223 
 
 Evans v. State Bank, 141 U. S. 107; 35 L. Ed. 654; 11 S. Ct. 885. .App. 129 
 
 Excelsior v. Brown, 74 Fed. 321; 20 C. C. A. 428 137 
 
 Excelsior v. Pacific, 185 U. S. 282; 46 L. Ed. 910; 22 S. Ct. 681 714, 
 
 App. 718 
 
 Excelsior v. Union, 32 Fed. 221 688, 770, 823 
 
 Expanded v. Bradford, 214 U. S. 366; 53 L. Ed. 1034; 29 S. Ct. 652. . App. 
 
 348 817 
 
 Eyve V. Potter, 15 How. 42; 14 L. Ed. 40 '425 
 
 Fabries Co. v. Smith, 100 U. S. 110; 25 L. Ed. 547 274 
 
 Facer v. Midvale, 38 Fed. 231 App. 559 
 
 Fahs V. Darling, 82 111. 142 App. 144 
 
 Fairbanks v. Stickney, 123 Fed. 79; 59 C. C. A. 209 342 
 
 Fairclough v. Marshall, L. R. 4 Ch. Div. 37 778 
 
 Falk V. Missouri, 103 Fed. 295; 43 C. C. A. 240 636 
 
 Fanning v. Grcgorie, 16 How. .524; 14 L. Ed. 523 156 
 
 Farley v. Kittson, 120 U. S. 303; 30 L. Ed. 684; 7 S. Ct. 534 141, 800 
 
 Farmers' Loan v. McClure, 78 Fed. 209 129, 544 
 
 Farmers' v. Spruks, 127 Fed. 691; 62 C. C. A. 447 631, 797 
 
 Farmers' v. Spruks, 119 Fed. 594 797 
 
 Farquhar v. National, 102 Fed. 714; 42 C. C. A. 600 App. 924 
 
 Farrington v. Board, 4 Fish. 216; Fed. Cas. 4687 524 
 
 l'as.sett V. Ewart, 62 Fed. 404; 10 C. C. A. 441 353 
 
 i'aulks V. Kamp, 3 Fed. 898 213, 384, 555, 766, 927 
 
 I'aurc's Appeal, 52 O. G. 754 . App. 672 
 
 Fay V. Cordesman, 109 U. S. 408; 27 L. Ed. 979; 3 S. Ct. 236 202, 206, 
 
 207, 211, 215, 217, 246, 374, 375, 380, 468, 612, 889, 905, App. 202, 374, 
 
 456 
 Feather v. Queen, 6 Best & S. 257 498
 
 TABLE OF CASES CITED CXXXl 
 
 [References are to sections. " App." refers to Appendix] 
 
 Featherstone v. Bidwell, 57 Fed. 631; 6 C. C. A. 487 871 
 
 Featherstone v. Ormonde, 53 Fed. 110 App. 505 
 
 Feeter v. Heath, 11 Wend. 482 807 
 
 Feibelmann v. Packard, 108 U. S. 14; 1 S. Ct. 138 134 
 
 Felix V. Ledos, 54 Fed. 163 190 
 
 Fenner v. Sanborn, 37 Bart). 610 151 
 
 Ferguson v. Dent, 46 Fed. 88 277 
 
 Ferguson v. Earl, 9 Clark & F. 251 481 
 
 Ferguson v. Wilson, L. R. 2 Ch. 77 151 
 
 Field V. Seabury, 19 How. 323; 15 L. Ed. 650 26 
 
 Fire Ins. Assn. v. Wickham, 128 U. S. 426; 32 L. Ed. 503; 9 S. Ct. 113. . 113 
 
 Fisher v. Boody, 1 Curt. 206; Fed. Cas. 4814 425 
 
 Fisk, Ex parte, 113 U. S. 713; 28 L. Ed. 1117; 5 S. Ct. 724 401 
 
 Fitch V. Bragg, 16 Fed. 243 298 
 
 Fleckner v. Bank, 8 Wheat. 338; 5 L. Ed. 338 156 
 
 Fleming, The Walter M. 9 Fed. 474 732 
 
 Flitcraft v. Com. Title, 211 Pa. 119 154 
 
 Flood V. Hicks, 2 Biss. 169; Fed. Cas. 4877 669 
 
 Florida Construction v. Young, 59 Fed. 721 539 
 
 Florsheim v. SchilUng, 137 U. S. 64; 34 L. Ed. 574; 11 S. Ct. 20. . . 49, 88, 
 437, 596, 597, 608, 612, 655, 671, 672, 696, App. 675 
 
 Flower v. Detroit, 127 U. S. 563; 32 L. Ed. 175; 8 S. Ct. 1291 871 
 
 Foley V. Harrison, 15 How. 448; 14 L. Ed. 433 26 
 
 Fond Du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 11 S. Ct. 98 404, 
 
 App. 679, 707, 7.34 
 
 Foote V. Silsby, 2 Blatch. 260; Fed. Cas. 4919 941 
 
 Forbush v. Cook, 2 Fish. 668; Fed. Cas. 4931 668 
 
 Force v. Sawyer, 143 Fed. 894; 75 C. C. A. 102 App. 840 
 
 Force v. Sawyer, 111 Fed. 902 App. 381, 384 
 
 Ford V. Bancroft, 98 Fed. 309; 39 C. C. A. 91 380 
 
 Forgay v. Conrad, 6 How. 201; 12 L. Ed. 200 116, 304, App. 117 
 
 Forncrook v. Root, 127 U. S. 176; 32 L. Ed. 97; 8 S. Ct. 1247. . . 612, 854 
 
 Forrelly v. Woodfolk, 60 U. S. 288; 15 L. Ed. 670 130 
 
 Forsyth v. City, 166 U. S. 506; 41 L. Ed. 1095; 17 S. Ct. 665 31 
 
 Forsyth v. Garlock, 142 Fed. 461; 73 C. C. A. 577 435 
 
 Foster v. Crossin, 44 Fed. 62 332, 635 
 
 Foster v. Goddard, 1 Black, 506; 17 L. Ed. 228 321, 807 
 
 Foster v. Lindsay, 3 Dill. 126; Fed. Cas. 4976 587 
 
 Foster v. Moore, 1 Curt. 279; Fed. Cas. 4978 380, 468 
 
 Fourgeres v. Murbarger, 44 Fed. 292 327 
 
 Fowle V. Park, 131 U. S. 88; 33 L. Ed. 67; 9 S. Ct. 658 513 
 
 Fowler v. City of New York, 121 Fed. 747; 58 C. C. A. 113 . . . 148, App. 653 
 
 Fowler v. City, 110 Fed. 749 323 
 
 Fox V. Perkins, 52 Fed. 205; 3 C. C. A. 32 431, 636, 646, 665 
 
 Foxley's Case, 5 Co. 109 926 
 
 Fraim v. Keen, 25 Fed. 820 630 
 
 Frank v. Bernard, 131 Fed. 269 213 
 
 Franks v. Martin, 1 Eden. 309 174 
 
 Frash v. Moore, 211 U. S. 1; 53 L. Ed. 65; 29 S. Ct. 6 App. 143 
 
 Frearson v. Loe, 9 Ch. Div. 48 764 
 
 Freeman v. Asmus, 145 U. S. 226; 36 L. Ed. 685; 12 S. Ct. 821 . . App. 871 
 
 Freeman, Ex parte, 109 O. G. 1339 App. 331 
 
 French v. Carter, 137 U. S. 239; 34 L. Ed. 664; 11 S. Ct. 90 .... 600, 667 
 
 French v. Hay, 89 U. S. 231; 22 L. Ed. 799 137 
 
 Frost V. Cohn, 119 Fed. 505; 56 C. C. A. 185 . . 631, 648, 697, App. 505, 693
 
 CXXXU TABLE OF CASES CITED \ 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Frost V. Cohn, 112 Fed. 1009 App. 693 
 
 Frow V. DeLaVega, 15 Wall. 552; 21 L. Ed. 60 305 
 
 Fuller V. Bartlett, 68 Wise. 73 151, App. 366 
 
 Fuller V. Berger, 120 Fed. 274; 56 C. C. A. 588 548, 574, 745, 935 
 
 Fuller V. Yentzer, 94 U. S. 288; 24 L. Ed. 103. . . 223, 426, 469, 473, 612, 
 
 651, 670, 672, 679, 686, 872, App. 91 
 Fullerton v. Anderson-Barngrover, 166 Fed. 443; 92 C. C. A. 295. . App. 212 
 
 Furbush v. Cook, 2 Fish. 668; Fed. Cas. 4931 603, 668 
 
 Furrer v. Ferris, 145 U. S. 132; 36 L. Ed. 649; 12 S. Ct. 821 129, 544, 
 
 App. 129 
 Gage V. Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819 187, 201, 
 
 202, 206, 207, 274, 280, 342, 374, 380, 466, 468, 473, 522, 532, 612, 874, 
 
 877, 883, 887, 889 
 
 Gage V. Kellog, 23 Fed. 891 688, 770 
 
 Galliher v. Cadwell, 145 U. S. 368; 36 L. Ed. 738; 12 S. Ct. 873 . . 728, 921 
 
 Gaily V. Colt, 30 Fed. 118 929 
 
 Gait V. Parlin, 60 Fed. 417; 9 C. C. A. 49 188, 427 
 
 Galvin v. City, 115 Fed. 511; 53 C. C. A. 165 431, 665 
 
 Gaines v. Rugg, 148 U. S. 228; 37 L. Ed. 432; 13 S. Ct. 611 128, 891 
 
 Gaisman v. Gallert, 105 Fed. 955 219 
 
 Gamewell, hi re, 73 Fed. 908; 20 C. C. A. Ill 790, 891 
 
 Game well v. Municipal, 61 Fed. 208; 9 C. C. A. 450 115, 123, 550 
 
 Gamewell v. Municipal, 77 Fed. 490; 23 C. C. A. 250 532, 579, 
 
 629, 807 
 
 Gandy v. Main, 143 U. S. 587; 36 L. Ed. 272; 12 S. Ct. 598 495, 598, 
 
 617, 622, 627, 634, 635, 671 
 
 Gandy v. Marble, 122 U. S. 432; 30 L. Ed. 1223; 7 S. Ct. 129 383, 727, 
 
 App. 26 
 
 Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158; 6 S. Ct. 1027 49, 596, 
 
 614, 662, 667, 696 
 
 Gardt v. Brown, 113 111. 475 544 
 
 Garretson v. Clark, 111 U. S. 120; 28 L. Ed. 371; 4 S. Ct. 291 279, 
 
 290, 297, 298, 837, 838, 839, 843, 844, 845, 846, App. 845 
 
 Gaskill V. Meyers, 81 Fed. 854; 26 C. C. A. 642 876, 889 
 
 Garst V. Harris, 177 Mass. 72 513 
 
 Gates V. Eraser, 153 U. S. 332; 38 L. Ed. 734; 14 S. Ct. 883. . 167, 437, 676 
 Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504 ... 10, 11, 71, 150, 151, 152, 
 
 154, 164, 165, 270, 391, 418, 532, 629, 750, 752, 762, 765, 796, 799, App. 
 
 759 
 
 G. & B. S. M. Co. V. Williams, 2 Fish. 133; Fed. Cas. 5847 554, 561 
 
 Geary v. Sheridan, 8 Ves. 192 305 
 
 Geist V. Stier, 134 Pa. 216 311 
 
 General v. Blackmore, 156 Fed. 968 App. 887 
 
 General v. Campbell, 137 Fed. 600 326 
 
 General v. International, 126 Fed. 755; 61 C. C. A. 329 937 
 
 General v. Yost, 139 Fed. 568; 71 C. C. A. 552 88, 615 
 
 Gen. Electric v. New England, 123 Fed. 310 App. 552 
 
 Gen. Electric v. New England, 128 Fed. 738; 63 C. C. A. 448 .. . App. 559 
 
 Gen. Sub-Construction v. Natcher, 167 Fed. 549 App. 195 
 
 Georgia v. Brailsford, 2 Dall. 402; 1 L. Ed. 400 549, 562 
 
 Germain v. Wilgus, 67 Fed. 597; 14 C. C. A. 561 371, 574 
 
 German v. United States, 148 U. S. 573; 37 L. Ed. 564; 13 S. Ct. 702 
 
 .... 498 
 
 German-American v. Loew, 103 Fed. 303 476, 477 
 
 Germania v. Boynton, 71 Fed. 797; 19 C. C. A. 118 167
 
 TABLE OF CASES CITED CXXXIU 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Germer v. Art, 150 Fed. 141 ; 80 C. C. A. 9 309, 904 
 
 Gerrich v. Sweetser, 4 Pink. 374 411 
 
 Giant V. California, 4 Fed. 720 871 
 
 Gibbons v. Wilson, 75 U. S. 269; 19 L. Ed. 453 498, 715 
 
 Gibbons v. Ogden, 9 Wheat. 1; 6 L. Ed. 3 920 
 
 Gibbs V. Hoefner, 19 Fed. 323 634, App. 635 
 
 Gifford V. Helms, 98 U. S. 248; 25 L. Ed. 57 532 
 
 Giles V. Austin, 62 N. Y. 486 App. 755 
 
 Gill V. United States, 160 U. S. 426; 40 L. Ed. 424; 16 S. Ct. 322 .. . 151, 
 
 366, 756, App. 366 
 Gill V. Wells, 89 U. S. 1; 22 L. Ed. 699. .. . 145, 310, 322, 468, 469, 472, 473, 
 
 604, 612, 804, 871, 872, 877, 905, App. 871 
 
 Gillespie v. Cummings, 1 B. & A. 587; Fed. Gas. 5434 804 
 
 Gillett V. Bate, 86 N. Y. 87 157 
 
 Gill's Case, 25 Ct. CI. 415 498 
 
 Gilman v. Philadelphia, 3 Wall. 713; 18 L. Ed. 96 920 
 
 Gilmore v. Anderson, 38 Fed. 846 558, 568 
 
 Glascott V. Lang, 3 Mylne & C. 455; 2 Phil. Ch. 310 425, 562 
 
 Glendale v. Smith, 100 U. S. 110; 25 L. Ed. 547 273 
 
 Glenn v. Liggett, 135 U. S. 533; 34 L. Ed. 262; 10 S. Ct. 867. .. . App. 386 
 
 Globe V. Walker, 210 U. S. 356; 52 L. Ed. 1096; 28 S. Ct. 726 744 
 
 Globe-Wernicke v. Brown, 121 Fed. 90; 57 C. C. A. 344 548 
 
 Globe- Wernicke v. Macey, 119 Fed. 696; 56 C. C. A. 304 App. 384 
 
 Glue Co. V. Upton, 4 Cliff. 237; Fed. Cas. 9607 774 
 
 Godden v. ffimmell, 99 U. S. 201; 25 L. Ed. 431 729 
 
 Godfrey v. Eames, 68 U. S. 317; 17 L. Ed. 684 3, 6, App. 9 
 
 Goeble v. American, 55 Fed. 825 324 
 
 Gold V. United States, 3 Fish. 489; Fed. Cas. 5508 587 
 
 Good V. Deland, 121 N. Y. 1 745 
 
 Goodyear v. Beverly, 1 Cliff. 348; Fed. Cas. 5557 450, 927 
 
 Goodyear v. Bishop, 4 Blatch. 438; Fed. Cas. 5558 765 
 
 Goodyear v. Congress, Fed. Cas. 5565 App. 714 
 
 Goodyear v. Day, 1 Blatch. 565; Fed. Cas. 5568 724 
 
 Goodyear v. Day, 2 Wall. Jr. 283; Fed. Cas. 5569 821 
 
 Goodyear v. Davis, 102 U. S. 222; 26 L. Ed. 149 ... . 54, 207, 375, 380, 
 
 671, 676, 696, 871, 889 
 
 Goodyear v. Jackson, 112 Fed. 146; 50 C. C. A. 159 App. 508 
 
 Goodvear v. Railroad Co. 2 Wall. Jr. 356; Fed. Cas. 5563 411, 821 
 
 Goodyear v. Rubber, 116 Fed. 363; 53 C. C. A. 583. . . 49, 224, 226, 599, 
 
 654, 904, 919, App. 598 
 
 Goodyear v. Rubber, 2 Cliff. 351; Fed. Cas. 5583 820 
 
 Goodyear v. Rubber, 4 Blatch. 63; Fed. Cas. 5586 714 
 
 Goodyear v. Union, Fed. Cas. 5586 App. 714 
 
 Gompers v. Bucks, 221 U. S. 418; 5,5 L. Ed. 797; 31 S. Ct. 492. . . App. 577 
 
 Gordon v. Anthony, 16 Blatch. 234; Fed. Cas. 5605 157 
 
 Gordon y. Ogden, 3 Pet. 33; 7 L. Ed. 592 22 
 
 Gordon v. Warder, 150 U. S. 47; 37 L. Ed. 992; 14 S. Ct. 32 86, 375, 
 
 502, 525, 618 
 
 Gorham v. White, 81 U. S. 511; 20 L. Ed. 731 331, 332, 334, 337 
 
 Gormlev v. Bunyan, 138 U. S. 623; 34 L. Ed. 1086; 11 S. Ct. 453 789 
 
 Goshen?;. Bissel, 72 Fed. 67; 19 C. C. A. 13 195, 598, 672, 911, 919, 
 
 App. 598 
 
 Goss Printing Press v. Scott, 103 Fed. 650 636 
 
 Gottfried v. Brewing, 5 B. & A. 4; Fed. Cas. 5633 223, 523 
 
 Gottfried v. Miller, 104 U. S. 521; 26 L. Ed. 851 766, 927
 
 CXXXIV TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Gottfried v. Seipp, 8 Fed. 322 524 
 
 Gould V. Banks, 8 Wend. 562 168 
 
 Gould V. Rees, 82 U, S. 187; 21 L. Ed. 39. See Rees v. Gould. 
 
 Gould V. Sessions, 67 Fed. 163; 14 C. C. A. 366 505, 536, 537 
 
 Gould Coupler v. Pratt, 70 Fed. 622 473 
 
 Goulds V. Cowing, 105 U. S. 253; 26 L. Ed. 987 282, 290, 298, 837, 
 
 838, 839, 845, App. 838 
 
 Gove V. Jennes, 19 Me. 53 778 
 
 Graham v. Mfg. Co. 11 Fed. 138 349, 350, 856, App. 349 
 
 Graham v. McCormick, 11 Fed. 859 349, 350 856, 857, App. 349 
 
 Graham v. Mason, 5 Fish. 1; Fed. Cas. 5671 188, 197, 407 
 
 Graham v. Merrill, 5 Cold. 631 539 
 
 Grand v. Winegar, 82 U. S. 373; 21 L. Ed. 170 372 
 
 Grand Trunks. Cummings, 106 U. S. 700; 27 L. Ed. 266; 1 S. Ct. 493 
 
 .... 407 
 
 Gramophone v. Gramophone, 107 Fed. 129 386 
 
 Grant v. Ins. Co. 106 U. S. 429; 27 L. Ed. 237; 1 S. Ct. 414 116 
 
 Grant v. Raymond, 6 Pet. 218; 8 L. Ed. 376. . . 7, 222, 263, 366, 745, 746, 
 
 837, 873, 903, 915, App. 741 
 
 Grant v. Walter, 148 U. S. 547; 37 L. Ed. 552; 13 S. Ct. 699 86, 202, 
 
 431, 437, 525, 616, 635, 636, 665, 670 
 
 Graves v. Fisher, 5 Me. 70 807 
 
 Gray v. Grinberg, 159 Fed. 318; 86 C. C. A. 328 496 
 
 Grayson v. Lynch, 163 U. S. 468; 41 L. Ed. 230; 16 S. Ct. 1064 129 
 
 Great Western v. Birmingham, 2 Phil. Ch. 602 562 
 
 Greeley, Ex parte, 6 Fish. 575; Fed. Cas. 5745 636 
 
 Green v. Barney, 19 Fed. 420 568 
 
 Green v. Campagnia, 82 Fed. 490 App. 371 
 
 Green v. Fisk, 103 U. S. 518; 26 L. Ed. 486 130 
 
 Green v. Mills, 69 Fed. 852; 16 C. C. A. 516 116, 302, 539, 544 
 
 Green v. Pathen, 13 Wend. 295 807 
 
 Green v. Richards, 23 N. J. Eq. 32 365 
 
 Green v. Terwilliger, 56 Fed. 384 398 
 
 Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70 207, 433, 525 
 
 Greene v. Buckley, 120 Fed. 955 797 
 
 Greist v. Parsons, 125 Fed. 116; 60 C. C. A. 34 673 
 
 Grier v. Wilt, 120 U. S. 412; 30 L. Ed. 712; 7 S. Ct. 718. .. . 389, 394, 795 
 Griswold v. Harker, 62 Fed. 389; 10 C. C. A. 435. . . . 374, 441, 507, 608, 
 
 631, App. 374 
 
 Griswold v. Wagner, 68 Fed. 494; 15 C. C. A. 525 646, 656 
 
 Grossmayer, /n re, 177 U. S. 48; 20 S. Ct. 535 723 
 
 Grove v. Hodge, 55 Pa. 504, 516 365 
 
 Guaranty v. Green, 139 U. S. 137; 35 L. Ed. 116; 11 S. Ct. 512 787 
 
 Guidet V. Brooklyn, 105 U. S. 550; 26 L. Ed. 1106. .596, 599, 600, 669, 908 
 
 Gunson v. Sewell, 1 Blatch. 244; Fed. Cas. 5881 344 
 
 Gutta Percha v. Goodyear, 3 Sawy. 542; Fed. Cas. 5879 567 
 
 Guyon v. Serrill, 1 Blatch. 245; Fed. Cas. 5881 343 
 
 Haberman, hi re, 147 U. S. 525; 37 L. Ed. 266; 13 S. Ct. 527 545 
 
 Hadden v. Spader, 20 Johns. Ch. 554 157 
 
 Hagood V. Southern, 117 U. S. 52; 29 L. Ed. 805; 6 S. Ct. 608 553 
 
 Hailes v. Albanv, 123 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 262 344 
 
 Hailes v. Van Wormer, 87 U. S. 353; 22 L. Ed. 241 .... 46, 47, 48, 49, 223, 
 
 261, 344, 440, 473, 594, 595, .596, 597, 601, 603, 607, 608, 609, 617, 629, 
 
 647, 656, 657, 674, 675, App, 597, 603 
 Haines v. McLaughlin, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. . . 734
 
 TABLE OF CASES CITED CXXXV 
 
 [References are to sections. " App." refers to Appendix ] 
 
 Hake v. Brown, 47 Fed. 783 App. 344 
 
 Hale V. World, 127 Fed. 964; 62 C. C. A. 596 207 
 
 Hall V. Bird, 3 Fish. 595; Fed. Cas. 5926 20 
 
 Hall V. Conder, 2 C. B. N. S. 22 384, App. 381 
 
 Hall V. General, 153 Fed. 907; 82 C. C. A. 653 567, App. 564 
 
 Hall V. MacNeale, 107 U. S. 90; 27 L. Ed. 367; 2 S. Ct. 73 89, 412, 
 
 414, 416, 596, 617, 662, 667, 671, 679, 851, 853, 856, 857 
 
 Hall V. Mister, Salk. 84 807 
 
 Hall V. Stout, 4 Del. Ch. 272 App. 371 
 
 Hall V. Wiles, 2 Blatch. 194; Fed. Cas. 5954 343, 344 
 
 Hallock V. Davison, 107 Fed. 482 622 
 
 Hamilton v. Kingsbury, 17 Blatch. 264; Fed. Cas. 5985 763 
 
 Hammacher v. Wilson, 26 Fed. 239 755, App. 755 
 
 Hammershley v. Scamoni, 7 Fed. 584 375 
 
 Hammond v. Hart, 4 B. & A. Ill; Fed. Cas. 6003 765, 798 
 
 Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767 751, 758 
 
 Hammond v. Stockton, 70 Fed. 716; 17 C. C. A. 356 332, 337 
 
 Hanifen v, Godschalk, 84 Fed. 649; 28 C. C. A. 507 59, App. 97 
 
 Hanifen v. Godschalk, 78 Fed. 811 82 
 
 Hanlon v. Primrose, 56 Fed. 600 324 
 
 Hapgood V. Hewitt, 119 U. S. 226; 30 L. Ed. 369; 7 S. Ct. 193 40, 366, 
 
 367, 368, 751, 756, App. 160, 365, 758 
 
 Hardin v. Boyd, 113 U. S. 756; 28 L. Ed. 1141; 5 S. Ct. 771 510 
 
 Harding v. Handy, 24 U. S. 103; 6 L. Ed. 103 807 
 
 Hardwick v. Masland, 71 Fed. 887 398 
 
 Harley v. U. S. 198 U. S. 229; 49 L. Ed. 1029; 25 S. Ct. 634 App. 498 
 
 Harmon v. Struthers, 57 Fed. 637 412, 856 
 
 Harper v. Holman, 84 Fed. 222 794 
 
 Harris v. Allen, 15 Fed. 106 377 
 
 Harris v. Bernhart, 97 Cal. 546 387 
 
 Harrison v. Foundry, 1 App. Cas. 574 ' 668 
 
 Harrison v. Glucose, 116 Fed. 304; 53 C. C. A. 484 744 
 
 Harrison v. Nixon, 9 Pet. 483; 9 L. Ed. 480 807 
 
 Hart V. Buckner, 54 Fed. 925; 5 C. C. A. 1 539 
 
 Hart V. Ten Eyck, 2 Johns. Ch. 108 841 
 
 Hartell v. Tilghman, 99 U. S. 547; 25 L. Ed. 357. .. . 176, 449, 714, 721, 
 
 724, 764, 765, 899, App. 714, 718, 755 
 
 Hartman v. Park, 145 Fed. 358 574 
 
 Hartshorn v. Saginaw, 119 U. S. 664; 30 L. Ed. 539; 7 S. Ct. 421 225 
 
 Hartshorn v. Tripp, 7 Blatch. 120; Fed. Cas. 6168 20 
 
 Harwood v. G. N. R., 11 H. L. Cas. 654 671, 672, 676, 679 
 
 Haskell v. Jones, 86 Pa. 173 920 
 
 Hatch V. Electric, 100 Fed. 975; 41 C. C. A. 133 257 
 
 Hatch V. Moffat, 15 Fed. 252 688, 770, 823 
 
 Hatch V. Reardon, 204 U. S. 152; 51 L. Ed. 415; 27 S. Ct. 188 550 
 
 Hathaway v. First National, 134 U. S. 494; 33 L. Ed. 1004; 10 S. Ct. 608 
 
 .... 131 
 
 Hat^Sweat v. Porter, 34 Fed. 745 510 
 
 Hausskenecht v. Claypool, 66 U. S. 431; 17 L. Ed. 172 921 
 
 Hawes v. Petroleum, 101 Mass. 385 App. 386 
 
 Hawkins v. Crook, 2 P. W. 556 305 
 
 Hawkins, Ex varte, 147 U. S. 486; 37 L. Ed. 251; 13 S. Ct. 512 142 
 
 Hawkins v. Glenn, 131 U. S. 319; 33 S. Ct. 184; 9 L. Ed. 739 .... App. 386 
 
 Hawkins v. Hunt, 14 111. 42 717 
 
 Hawks V. Swett, 4 Hun. 146 890
 
 CXXXVl TABLE OF CASES CITED 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Haworth v. Hardcastle, 1 Web. 480 222, 223 
 
 Hayden v. Oriental, 15 Fed. 605 921 
 
 Hayes v. Dayton, 8 Fed. 702 804 
 
 Hayes v. Fischer, 102 U. S. 121; 26 L. Ed. 95 537, 538, 577 
 
 Hayes- Young v. St. Louis, 137 Fed. 80; 70 C. C. A. 1 App. 5, 351 
 
 Hays V. Sulsor, 1 Fish. 532; Fed. Cas. 6271 629 
 
 Hayward v. Andrews, 106 U. S. 672; 27 L. Ed. 271; 1 S. Ct. 544 150, 
 
 165, 719, 765 
 
 Hayward v. Bank, 96 U. S. 611 ; 24 L. Ed. 855 729 
 
 Heald v. Carey, 11 C. B. 977 57 
 
 Heald v. Rice, 104 U. S. 737; 26 L. Ed. 910. . . .356, 404, 496, 596, 608, 617, 
 670, 671, 672, 674, 676, 734, 871, 872, 873, 877, App. 131 
 
 Heap V. Tremont, 82 Fed. 449; 27 C. C. A. 316 59, 616, 691 
 
 Heath v. Hay, 67 Fed. 246 603 
 
 Heath v. Unwin, 15 Sim. 552 508 
 
 Heaton v. Eureka, 77 Fed. 288; 25 C. C. A. 267. . . 474, 476, 477, 510, 513, 
 548, 574, 576, 645, 714, 744, 745, 756, 761, 837, App. 476, 714, 761, 
 
 Heaton-Peninsular v. Elliott, 58 Fed. 220 673 
 
 Heaton-Peninsular v. Schlochtermeyer, 69 Fed. 592 327 
 
 Heaton v. Schlochtermeyer, 72 Fed. 520; 18 C. C. A. 674 327 
 
 Heide v. Panoulias, 188 Fed. 914; 110 C. C. A. 656 App. 404 
 
 Hein, In re, 166 U. S. 432; 41 L. Ed. 1066; 17 S. Ct. 624 App. 25 
 
 Heine v. Smith, 43 Fed. 786 380 
 
 Heinze v. Butte, 107 Fed. 165; 46 C. C. A. 219 542 
 
 Henderson v. Carbondale, 140 U. S. 25; 35 L. Ed. 332; 11 S. Ct. 691 .. . 578 
 
 Henderson v. Mayor, 92 U. S. 259; 23 L. Ed. 543 920 
 
 Henderson v. Tompkins, 60 Fed. 758 324 
 
 Hendryx v. Fitzpatrick, 19 Fed. 810 App. 577 
 
 Hendy v. Golden, 127 U. S. 370; 32 L. Ed. 207; 8 S. Ct. 1275 .... 211, 221, 
 234, 313, 393, 595, 596, 602, 609, 658, 664, 667, 669, 672, 734, 795, 799 
 
 Henry v. Francestown, 2 B. & A. 221 ; Fed. Cas. 6382 857, App. 856 
 
 Henry v. Providence, 3 B. & A. 501 ; Fed. Cas. 6384 857 
 
 Henry v. Soapstone Co. 2 Fed. 78 856 
 
 Herbert v. Adams, 4 Mas. 15; Fed. Cas. 6394 152, 796 
 
 Herbert v. Rainey, 54 Fed. 248 924 
 
 Herdic v. Roessler, 109 N. Y. 27 920 
 
 Herman v. Brooklyn, Fed. Cas. 6703 804 
 
 Herman v. Youngstown, 191 Fed. 579; 112 C. C. A. 185 App. 344, 615 
 
 Herrick v. Giant, 60 Fed. 80; 8 C. C. A. 475 618 
 
 Herring v. Gage, 15 Blatch. 124; Fed. Cas. 6442 797 
 
 Herring v. Hall, 208 U. S. 554; 52 L. Ed. 616; 28 S. Ct. 350 154 
 
 Hermann v. Hermann, 29 Fed. 92 151, 752 
 
 Hicklin v. Marco, 56 Fed. 549; 6 C. C. A. 10 789 
 
 Hicks V. Kelsey, 85 U. S. 670; 21 L. Ed. 852. . . 261, 380, 629, 646, 655, 667, 
 
 671, 676, 696, 775, App. 697 
 
 Hicn V. Pungs, 68 0. G. 657 5 
 
 Higgin V. Murdock, 132 Fed. 810; 65 C. C. A. 466 88 
 
 Higgin Mfg. Co. v. Scherer, 100 Fed. 459; 40 C. C. A. 491 .. . 118, 323, 325 
 
 Hill V. Esplay, 31 Pa. St. 334 387 
 
 Hill V. Evans, 6 Law T. N. S. 90 320 
 
 Hill V. Hermang, 59 N. Y. 396 App. 144 
 
 Hill V. Thompson, 2 Maroli. 435; Fed. Cas. 15,297 3, 204, 931 
 
 Hill V. Thompson, 1 Wei). 232 489 
 
 Hill V. United States, 149 U. S. 593; 37 L. Ed. 862; 13 S. Ct. 1011 . . 498, 
 
 715
 
 TABLE OF CASES CITED CXXXVll 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Hill V. United States, 50 U. S. 386; 13 L. Ed. 385 553 
 
 Hill V. Whitcomb, 1 Holmes, 317; Fed. Cas. 6502 714 
 
 HiU V. Wooster, 132 U. S. 693; 33 L. Ed. 502; 10 S. Ct. 228 46, 584, 
 
 608, 612, 617, 646, 654, 671, 672, 679 
 
 Hillborn v. Hale, 69 Fed. 958; 16 C. C. A. 569 374, 459, App. 204 
 
 Himeley v. Rose, 9 U. S. 313; 3 L. Ed. Ill 140 
 
 Hiram, The, 1 Wheat. 440; 4 L. Ed. 440 411 
 
 Hitchcock V. Tremain, 9 Blatch. 550; Fed. Cas. 6540 61 
 
 Hoare v. Silverlock, 12 Ad. & El. (N. S.) 624 706 
 
 Hobbie v. Jermison, 149 U. S. 355; 37 L. Ed. 766; 13 S. Ct. 879 450, 
 
 505 523 524 
 Hobbs V. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 409 '. 54,' 222, 
 
 257, 435, 608, 612, 635, 640, 651, 671, 673, 700, 937, App. 622, 656, 671, 
 
 673 
 
 Hobbs V. Gooding, 111 Fed. 403; 49 C. C. A. 414 692 
 
 Hocke V. New York Central, 122 Fed. 467; 58 C. C. A. 627 698 
 
 Hocking v. Hocking, 4 Web. 434 . 384 
 
 Hockholzer v. Eager, 2 Sawv. 361; Fed. Cas. 6556 567 
 
 Hoe V. Knapp, 27 Fed. 204 371, 574, 645, 745 
 
 Hoe V. Miehle, 141 Fed. 112 574 
 
 Hoff V. Iron Clad, 139 U. S. 326; 35 L. Ed. 179; 11 S. Ct. 580 380, 696 
 
 Hogg V. Emerson, 11 How. 587; 3 L. Ed. 824 223 
 
 Hohorst V. Hamburg-American, 148 U. S. 262; 37 L. Ed. 443; 13 S. Ct. 590 
 
 ....304, App. 117, 133 
 
 Hohorst, In re, 150 U. S. 653; 37 L. Ed. 1211; 14 S. Ct. 221 579 
 
 Holabird v. Burr, 17 Conn. 563 827 
 
 Holland V. Shiplev, 127 U. S. 396; 32 L. Ed. 185; 8 S. Ct. 1089. . . 596, 667 
 
 Holliday v. Hunt, 70 111. 109 920 
 
 Holliday v. Mattheson, 24 Fed. 185 505 
 
 Hollister v. Benedict, 113 U. S. 59; 28 L. Ed. 901; 5 S. Ct. 717 216, 
 
 437, 498, 591, 592, 596, 614, 628, 629, 636, 646, 649, 654, 655, 659, 662, , 
 
 667, 679, 682 
 
 Holly V. Machine Co., 4 Fed. 74 476 
 
 Holmes v. Truman, 67 Fed. 542; 14 C. C. A. 517 845 
 
 Holzapfels v. Rahtjens, 183 U. S. 51; 46 L. Ed. 49; 22 S. Ct. 6 929 
 
 Holmes v. Metropolitan, 21 Fed. 458 420, 421, 422 
 
 Horner v. Graves, 7 Bing. 735 365 
 
 Horton v. Mabon, 12 C. B. (N. S.) 437 679 
 
 Horton v. N. Y. Central, 12 Abb. N. C. 30 App. 755 
 
 Hoskin V. Fisher, 125 U. S. 217; 31 L. Ed. 759; 8 S. Ct. 834. .397, 871, 876, 888 
 
 Hotchkiss V. Cupples, 53 Fed. 1018 App. 777 
 
 Hotchkissw. Greenwood, 11 How. 248; 13 L. Ed. 683. .. . 47, 261, 437, 
 
 593, 596, 629, 646, 653, 655. 656, 657, 667, 671, 672, 676, 679, 687, 696, 
 
 697, 775, App. 468 
 
 Houck V. Christy, 152 Fed. 612; 81 C. C. A. 602 App. 129 
 
 HousehiU V. Nelson, 1 Web. 685 230, 641, 688, 689, 768, 770, 815 
 
 Houston V. Stern, 74 Fed. 636; 20 C. C. A. 636 285 
 
 Hovey v. Stevens, 1 Wood. & M. 290; Fed. Cas. 6745 857 
 
 Howard v. Detroit, 150 U. S. 164; 37 L. Ed. 1039; 14 S. Ct. 68 614, 
 
 615, 636, 658, 904, 90S, 915 
 
 Howard v. St. Paul, 35 Fed. 743 797 
 
 Howe V. Abbott, 2 Story, 190; Fed. Cas. 6766 .... 473, 503, 616, 656, 657, 
 
 667, 670, 672, 687 
 Howe V. National, 134 U. S. 388; 33 L. Ed. 963: 10 S. Ct. 570. .. . 207, 223, 
 
 440, 592, 64G, 654, 662, 671
 
 CXXXVlll TABLE OF CASES CITED 
 
 [ References are to Bections. " App." refers to Appendix 7 
 
 Howe V. Neemes, 18 Fed. 40 442 
 
 Howe V. Underwood, 1 Fish. 160; Fed. Cas. 6775 811 
 
 Howe V. Williams, Fed. Cas. 6778 App. 247 
 
 Howell V. State, 10 Lea. 544 577 
 
 Howes V. Nutes, 4 Cliff. 173; Fed. Cas. 6790 - 223 
 
 Howland, Ex parte, 12 O. G. 889 375 
 
 Hewlett V. Tarte, 10 C. B. N. S. 813 894 
 
 Hoxie V. Carr, 1 Sumn. 173; Fed. Cas. 6802 21 
 
 Hoyt V. Computing, 96 Fed. 250 App. 777 
 
 Hoyt V. Home, 145 U. S. 302; 36 L. Ed. 713; 12 S. Ct. 922 215, 230, 
 
 375, 378, 435, 448, 453, 457, 459, 486, 503, 506, 529, App. 204 
 
 Hubbell V. United States, 179 U. S. 77; 45 L. Ed. 95; 21 S. Ct. 24 207, 
 
 App. 207, 213 
 
 Hubel V. Dick, 28 Fed. 132 871, 87S 
 
 Huber v. Myers, 34 Fed. 752 765 
 
 Huber v. Nelson, 148 U. S. 270; 37 L. Ed. 447; 13 S. Ct. 603. .. . 375, 420, 
 
 871, 877, 885, App. 871 
 
 Huber v. Nelson, 38 Fed. 830 420, 821, 822, 885 
 
 Hughes V. Alexander, 5 Duer, 488 893 
 
 Hughes V. Northern, 18 Fed. 106 717 
 
 Humiston v. Stainthorp, 2 Wall. 106; 17 L. Ed. 905 116, 130, 304, 
 
 891, 893 
 Huntington v. Saunders, 120 U. S. 78; 30 L. Ed. 580; 7 S. Ct. 356 .. . 807 
 
 Hunt V. Hallingsworth, 100 U. S. 100; 25 L. Ed. 569 720 
 
 Hurlbut V. Schillinger, 130 U. S. 456; 32 L. Ed. 1011; 9 S. Ct. 584 290, 
 
 298, 344, 837, 845, App. 845 
 
 Hutchings v. King, 68 U. S. 53; 17 L. Ed. 544 778 
 
 Hutter V. De Q. Bottle, 128 Fed. 283; 62 C. C. A. 652 481, 612 
 
 RUho, The, 93 U. S. 575; 23 L. Ed. 978 841 
 
 Ide V. Trorlicht, 115 Fed. 137; 53 C. C. A. 341 277, 342, 349, 468, 
 
 609, App. 2, 11, 277, 349 
 
 lUingsworth v. Spaulding, 43 Fed. 827 756 
 
 Illinois V. Illinois, 184 U. S. 77; 46 L. Ed. 440; 22 S. Ct. 300 ... . App. 893 
 
 Imhauser v. Buerk, 101 U. S. 647; 25 L. Ed. 945 374, 380, 468, 
 
 484, 612, 674, App. 68, 374 
 Incandescent Lamp Patent, 159 U. S. 465; 40 L. Ed. 221; 16 S. Ct. 75 
 
 .... 380, 904, 908 
 
 Indiana v. Case, 154 Fed. 365; 83 C. C. A. 343 574, 744 
 
 Indiana v. Crocker, 103 Fed. 496; 43 C. C. A. 287 203 
 
 Independent v. Jeffrey, 76 Fed. 981 350 
 
 Industrial v. Electric, 58 Fed. 732; 7 C. C. A. 471 120, 716 
 
 Industrial v. Wilcox, 112 Fed. 535; 50 C. C. A. 387 351, App. 358 
 
 Indianapolis v. Horst, 93 U. S. 291 ; 23 L. Ed. 898 921 
 
 Indurated Fiber v. Grace, 52 Fed. 124 324, 327 
 
 Ingels V. Mast, 6 Fish. 415; Fed. Cas. 7033 843 
 
 Ingersoll v. Jewett, 16 Blatch. 378; ^ed. Cas. 7039 36 
 
 Ingersoll v. Musgrove, Fed. Cas. 7040 App. 277 
 
 Inman v. Beach, 71 Fed. 420; 18 C. C. A. 165 459 
 
 Innis V. Boiler Works, 22 Fed. 780 856 
 
 Insurance Co. v. Bangs, 103 U. S. 780; 26 L. Ed. 608 894 
 
 Insurance Co. v. Norton, 96 U. S. 234; 24 L. Ed. 689 2 
 
 Insurance Co. v. Piaggio, 16 Wall. 378; 2 L. Ed. 358 App. 137 
 
 Interior v. Perkins, 80 Fed. 528; 25 C. C. A. 613 .... 593, 603, 668, 672 
 
 International v. Brammor, 138 Fed. 396; 71 C. C. A. 633 453 
 
 International v. Dey, 142 Fed. 736; 74 C. C. A. 68 603
 
 TABLE OF CASES CITED CXXXIX 
 
 [References are to sections. " App." refers to Appendix] 
 
 International v. Gaylord, 140 U. S. 55; 35 L. Ed. 347; 11 S. Ct. 716 
 
 .... 600, 855 
 
 International v. Kellogg, 171 Fed. 657; 96 C. C. A. 395 App. 2 
 
 International v. Maurer, 44 Fed. -618 327, 874 
 
 International v. Richmond, 30 Ged. 775 App. 812 
 
 Interurban v. Westinghouse, 186 Fed. 166; 108 C. C. A. 298. . App. 543, 561 
 
 Ireson v. Pierce, 39 Fed. 795 82 
 
 Ironclad v. Vollrath, 52 Fed. 143 570 
 
 Irwin V. Hasselman, 97 Fed. 964; 38 C. C. A. 587 626 
 
 Isaacs V. Cooper, 4 Wash. 259; Fed. Cas. 7096 242, 574 
 
 Ives V. Hamilton, 92 U. S. 426; 23 L. Ed. 494 230, 378, 435, 448, 453, 
 
 459, 499, 503, 651 
 
 Ives V. Sargent, 119 U. S. 652; 30 L. Ed. 544; 7 S. Ct. 436 871, 874, 
 
 875, 876, 877, 878 
 
 Jackson v. Lawton, 10 Johns. 23 26 
 
 Jackson v. Ludeling, 21 Wall. 616; 22 L. Ed. 692 App. 805 
 
 Jacobs V. Baker, 74 U. S. 295; 19 L. Ed. 200 684, App. 679 
 
 James v. Campbell, 104 U. S. 356; 26 L. Ed. 786 9, 26, 95, 223, 244, 
 
 310, 347, 348, 356, 498, 505, 747, 871, 872, 873, 877, 888, 903, App. 98 
 
 Javos V. Fleece, 60 Fed. 622 794 
 
 Jennings v. Keble, 10 Fed. 669 332, 635, App. 331 
 
 Jennings v. Pierce, 15 Blatch. 42; Fed. Cas. 7283 417 
 
 Jensen v. Norton, 64 Fed. 662; 12 C. C. A. 608 544, App. 544 
 
 Jerome, Ex parte, 3 O. G. 64 775 
 
 Jewell V. Jackson, 140 Fed. 340; 72 C. C. A. 304 .... 202, 574, App. 212 
 
 Jewell V. Knight, 123 U. S. 426; 31 L. Ed. 190; 8 S. Ct. 193 113 
 
 Johnson v. Flushing, 105 U. S. 539; 26 L. Ed. 1162 871, 872, 877 
 
 Johnson v. Foos, 141 Fed. 73; 72 C. C. A. 105 654, App. 277 
 
 Johnson v. Forty-Second St. R. 33 Fed. 499 604 
 
 Johnson v. Chisholm, 115 Fed. 625; 53 C. C. A. 123 616 
 
 Johnson v. McCullough, 4 Fish. 170; Fed. Cas. 7401 72 
 
 Johnson v. National, 106 Fed. 319 792 
 
 Johnson v. Root, 2 Cliff. 108; Fed. Cas. 7409 U 
 
 Johnson v. Tidewater, 50 Fed. 90 245 
 
 Johnson v. Toledo, 119 Fed. 885; 56 C. C. A. 415 616 
 
 Johnson v. Union, 59 Fed. 20 164, 165, 171 
 
 Johnson v. Wharton, 152 U. S. 252; 38 L. Ed. 429; 14 S. Ct. 608 . . 31, 532, 
 
 893 
 
 Joliet V. Dice, 105 III. 649 151 
 
 Jonathan v. Whitehurst, 72 Fed. 496 167 
 
 Jones V. Barker, 11 Fed. 597 74 
 
 Jones V. Berger, 58 Fed. 1006 753 
 
 Jones V. Morehead, 68 U. S. 155; 17 L. Ed. 662 298, 667, 671, 676, 
 
 679, 775 
 
 Jones V. Hunger, 49 Fed. 61 ; 1 C. C. A. 158 622, 936 
 
 Jones V. Munger, 50 Fed. 785; 1 C. C. A. 668 120, 130, 539, 544, 545, 
 
 893 
 
 Jones V. Pearce, 1 Web. 125 289 
 
 Jones V. Seawall, 3 Cliff. 563; Fed. Cas. 7495 2, 18, 857 
 
 Jordan v. Moore, L. R. 1 C. P. 624 679 
 
 Jordan v. Overseers, 4 Ohio, 295 920 
 
 Jourolmon v. Ewing, 85 Fed. 103; 29 C. C. A. 41 890 
 
 Judd V. Gibbs, 3 Grav, 539 753 
 
 Jupe V. Pratt, 1 Web. 146 230, 768, 815 
 
 Kahn v. Starrels, 136 Fed. 597; 69 C. C. A. 371 277, 342
 
 Cxl TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Kalamazoo v. Duff, 113 Fed. 264; 51 C. C. A. 221 App. 461, 622 
 
 Kalem v. Harper, 222 U. S. 55; 56 L. Ed. — ; 32 S. Ct. 20 . . . App. 476, 477 
 
 Kane v. Huggins, 44 Fed. 287 App. 559 
 
 Kansas City v. Devol, 127 Fed. 363 App. 277 
 
 Kaolatype v. Hoke, 30 Fed. 444 116, 324, 603, 792 
 
 Kay V. Marshall, 1 Mylne, 373 204 
 
 Kay V. Marshall, 0. & F. 245 672, 679 
 
 Keach, hi re, 14 R. I. 571 921 
 
 Kearney v. Denn, 15 Wall. 51; 21 L. Ed. 41 537 
 
 Kearney, Ex parte, 7 Wheat. 38; 5 L. Ed. 36. . . . 537, 577, 578, 725, 825 
 
 Kearney, In re, 160 U. S. 231; 40 L. Ed. 402; 16 S. Ct. 273 579 
 
 Kearney v. Railroad, 30 Fed. 330 860 
 
 Keasbey, In re, 160 U. S. 221 ; 40 L. Ed. 402; 16 S. Ct. 273 579 
 
 Keasby v. Carey, 139 Fed. 571 72 
 
 Keech v. Hall, 1 Doug. 21 778 
 
 Keeler v. Standard, 157 U. S. 659; 39 L. Ed. 848; 15 S. Ct. 738 505, 
 
 App. 718 
 
 Kelleher v. Darling, 4 Cliff. 424; Fed. Cas. 7653 857 
 
 Kelley v. Ypsilanti, 44 Fed. 19 299, 924, App. 924 
 
 Kelly V. Clow, 89 Fed. 297; 32 C. C. A. 205 593, 668, 672, 908 
 
 Kendall v. Winsor, 62 U. S. 322; 16 L. Ed. 165 3, 6, 7, 857, 932, 
 
 App. 2, 727 
 
 Kendrick v. Emmons, 1 Holmes, 234; Fed. Cas. 7694 448 
 
 Kendrick v. Emmons, 2 B. & A. 208; Fed. Cas. 7695 497, 506 
 
 Kennedy v. Hazleton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. . .56, 780, 
 
 App. 780 
 
 Kennedy v. Ins. Co. 3 H. & J. 367 156 
 
 Kennon v. Gilmer, 131 U. S. 22; 33 L. Ed. 110; 9 S. Ct. 696 138 
 
 Kent V. Simonds, 39 Fed. 606 692 
 
 Kerr v. Clampitt, 95 U. S. 188; 24 L. Ed. 493 537 
 
 Keshkonong v. Burton, 104 U. S. 668; 26 L. Ed. 886 921 
 
 Kessler v. Eldred, 206 U. S. 285; 51 L. Ed. 1065; 27 S. Ct. 611 . . . . 31, 250, 
 
 564, 573, 720, App. 31, 564 
 
 Ketchum v. Johnson, 8 Fed. 586 505 
 
 Key V. Marshall, 8 Clark & F. 245 656, 657 
 
 Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 772. .. . 366, 717, 
 
 732, 756, 793 
 
 Keyes v. Eureka, 45 Fed. 199 717 
 
 Keyes v. Grant, 118 U. S. 25; 30 L. Ed. 54; 6 S. Ct. 974 404, 406, 492, 
 
 App. 131 
 
 Keyes v. Pueblo, 31 Fed. 560 568, 730 
 
 Keystone v. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295 215, 
 
 298, 375, 622, 626, 635, 636, 692, 837, 842, 843, App. 622, 845 
 Keystone v. Martin, 132 U. S. 91 ; 33 L. Ed. 275; 10 S. Ct. 32. . . . 1 16, 117, 
 
 130, 304 
 Keystone v. Phcenix, 95 U. S. 274; 24 L. Ed. 344. . . 12, 195, 202, 204, 207, 
 
 211, 212, 219, 222, 223, 226, 244, 375, 377, 380, 598, 635, 671, 676, 
 
 837, 843, App. 201, 205, 420 
 
 Kilborn v. Liveright, 165 Fed. 902 817 
 
 Kill)orn v. Sunderland, 1.30 U. S. 509; 32 L. Ed. 1005; 9 S. Ct. 594 .. . 720 
 
 Kilborn v. Rewcs, 8 Gray, 415 169 
 
 Kilbourne v. Bingham, 50 Fed. 697; 1 C. C. A. 617. . . 096 
 
 Kihner v. Griswold, 67 Fed. 1017; d5 C. C. A. 161 120, 539 
 
 Kimbcrly v. Arms, 129 U. S. 512; 32 L. Ed. 764; 9 S. Ct. 355 . . . 129, 544, 
 
 578, 836, App. 129
 
 TABLE OF CASES CITED Cxli 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 King V. Anderson, 90 Fed. 500 700, 797 
 
 King V. Bilhofer, 127 Fed. 127; 62 C. C. A. 241 198 
 
 King V. Butler, 3 Lev. 220 26 
 
 King V. Cutter, 1 Stark. 354 242 
 
 King V. Gallun, 109 U. S. 99; 27 L. Ed. 870; 3 S. Ct. 202 216, 313, 646, 
 
 656, 657, 662, 667, 672, 679, 706, 707, 710 
 King V. Hubbard, 97 Fed. 795; 38 C. C. A. 423 . . 247, 459, 460, App. 376 
 
 King V. Wheeler, 2 B. & A. 345 222, 669 
 
 Kingsbury v. Buckner, 134 U. S. 650; 33 L. Ed. 1047; 10 S. Ct. 638 .. . 128 
 
 Kingston v. Preston, Den. 634 760 
 
 Kinloch v. Western, 113 Fed. 659; 51 C. C. A. 369. . 459, 544, 635, App. 459 
 
 Kinsman v. Parkhurst, 59 U. S. 289; 15 L. Ed. 385 385, 510, 513 
 
 Kirby v. Armstrong, 5 Fed. 801 App. 277 
 
 Kircliberger v. American, 128 Fed. 599; 64 C. C. A. 107 56, 309 
 
 Kisinger-Ison v. Bradford, 123 Fed. 91; 59 C. C. A. 221 790 
 
 Kittle V. Hall, 29 Fed. 508 5, 55, 568, 732 
 
 Kittridge V. Race, 92 U. S. 116; 23 L. Ed. 488 277 
 
 Klein v. Ins. Co. 104 U. S. 88; 26 L. Ed. 662 App. 755 
 
 Klein v. Russell, 86 U. S. 433; 22 L. Ed. 116 223, 375, 377, 857 
 
 Klein v. Seattle, 77 Fed. 200; 23 C. C. A. 114 635, 636 
 
 Knapp V. Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81 54, 86, 
 
 207, 208, 211, 215, 229, 234, 246, 376, 426, 468, 502, 525, 596, 597, 616, 
 
 618, 636, 651, 672, 690, App. 376 
 
 Knapp V. Railroad, 20 Wall. 177; 22 L. Ed. 328 537 
 
 Knease v. Bank, 4 Wash. 9; Fed. Cas. 7875 667 
 
 Kneeland v. Sheriff, 2 Fed. 901 108 
 
 Knickerbocker v. Rogers, 61 Fed. 297 App. 74 
 
 Knight V. Railroad, 3 Fish. 1 ; Fed. Cas. 7882 ; 775 
 
 Knox V. Mining Co. 6 Sawy. 430; Fed. Cas. 7907 459 
 
 Knoxville v. Africa, 77 Fed. 501 ; 23 C. C. A. 252 118, 544 
 
 Kohl V. United States, 91 U. S. 367; 23 L. Ed. 449 498 
 
 Kokomo V. Kitselman, 189 U. S. 8; 47 L. Ed. 689; 23 S. Ct. 521 . . 206, 378, 
 
 433, 469, 502, 525, 529, 614, 680 
 
 Kraatz v. Tieman, 79 Fed. 322 App. 65 
 
 Krajeuski v. Pharr, 105 Fed. 514; 44 C. C. A. 572 223 
 
 Krementz v. Cottle, 148 U. S. 556; 37 L. Ed. 558; 13 S. Ct. 719 .... 443, 
 615, 622, 626, 633, 634, 635, 671, 673, App. 693 
 
 Krick V. Jansen, 52 Fed. 823 324, 807 
 
 Krumbhaar v. Birch, 83 Pa. 426 11 
 
 Kountze v. Omaha, 107 U. S. 378; 27 L. Ed. 609; 2 S. Ct. 911 .. . App. 273 
 
 Lacroix v. Lyon, 33 Fed. 437 386 
 
 Ladd V. Cameron, 25 Fed. 37 579 
 
 Lake Shore v. National, 110 U. S. 229; 28 L. Ed. 129; 4 S. Ct. 33. . . . 214, 
 
 223, 550, 608, 717, 937 
 
 Lalance v. Haberman, 55 Fed. 292; 5 C. C. A. Ill 518 
 
 Lamb v. Lamb, 120 Fed. 267; 56 C. C. A. 247 .... 223, 634, 937, App. 381 
 
 Lamson v. Godehard, 59 Fed. 776; 8 C. C. A. 265 587 
 
 Lamson v. Hillman, 123 Fed. 416; 59 C. C. A. 510 506, 574, 673 
 
 Lander v. Cowles, 16 0. G. 405 82 
 
 Lane v. Locke, 150 U. S. 193; 37 L. Ed. 1049; 14 S. Ct. 78 . . 151, 366, 568, 
 
 730, 732, 756, 793 
 Lane v. Welds, 99 Fed. 286; 39 C. C. A. 528. .. . 31, 386, 622, 623, 627, 893 
 
 Langdon v. De Groot, 1 Pain, 203; Fed. Cas. 8059 775 
 
 Langford v. United States, 101 U. S. 341; 25 L. Ed. 1010 498 
 
 Lansdale v. Smith, 106 U. S. 391; 27 L. Ed. 219; 1 S. Ct. 350 729
 
 Cxlii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Lanyon v. Brown, 115 Fed. 150; 53 C. C. A. 354 159 
 
 Lapham-Dodge v. Severin, 40 Fed. 762 App. 201, 209 
 
 Lappin v. Corning, 94 Fed. 162 323 
 
 La Rue v. Electric, 31 Fed. 80 , 634 
 
 Last Chance v. Tyler, 157 U. S. 683; 39 L. Ed. 859; 15 S. Ct. 733. .. . 31, 
 
 532, 893, 894 
 
 Latta V. Shawk, Fed. Cas. 8116 App. 68 
 
 Lattimore v. Hardsocg, 121 Fed. 986; 58 C. C. A. 287 845 
 
 Lawes v. Purser, 38 Eng. L. & E. Rep. 48 764 
 
 Lawther v. Hamilton, 124 U. S. 1; 31 L. Ed. 325; 8 S. Ct. 342. .. . 435, 639, 
 
 692, 817 
 
 Lay V. Indianapolis, 120 Fed. 831; 57 C. C. A. 313 3 
 
 Lay V. Marshall, 7 Scott, 548 669 
 
 Leary v. Railroad, 139 Mass. 580 20 
 
 Lee V. Blandy, 1 Bond, 361 ; Fed. Cas. 8182 158, 376 
 
 Leeds V. Victor, 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495 . . App. 9, 193, 
 
 420, 421, 476, 561, 674, 817 
 
 Le Fort v. Delafield, 3 Edw. Ch. 22 796 
 
 Leggett V. Avery, 101 U. S. 256; 25 L. Ed. 865. . . 54, 207, 310, 770, 870, 
 
 871, 872, 889 
 
 Leggett, Ex parte, 2 0. G. 199 775 
 
 Leggett V. Standard, 149 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. .. . 355, 
 
 732, 871, 874, 889 
 
 Le Guen v. Gouveneur, 1 Johns. Ch. 500 141, 302, 371 
 
 Lehigh v. Kearney, 158 U. S. 461; 39 L. Ed. 1055; 15 S. Ct. 871 . . .207, 602 
 
 Lehigh v. Mellon, 104 U. S. 112; 26 L. Ed. 639 211, 212, 218, 222, 
 
 223, 244, 598, App. 420 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; 26 L. Ed. 939. .. . 71, 99, 332, 495, 
 
 560, 561, 598, 629, 634, 635, 638, App. 495, 635 
 
 Lennon, In re, 166 U. S. 548; 41 L. Ed. 1110; 17 S. Ct. 658 App. 577 
 
 Lenox v. Roberts, 2 Wheat. 373; 4 L. Ed. 371 720 
 
 Lepper v. Randall, 113 Fed. 627; 51 C. C. A. 337 485 
 
 LeRoy v. Tatham, 14 How. 156; 14 L. Ed. 367 ... 426, 593, 651. 683, 
 
 689, 775, 866, 903 
 
 Letson v. Alaska, 130 Fed. 129; 64 C. C. A. 463 435, 640 
 
 Lettelier v. Mann, 91 Fed. 917 412 
 
 Lewin v. Welsbach, 81 Fed. 904 924 
 
 Lewis V. Chapman, 3 Beav. 133 732 
 
 Lewis V. Pennsylvania, 59 Fed. 129; 8 C. C. A. 41 211 
 
 Lewis V. Premium, 163 Fed. 950; 90 C. C. A. 310 App. 212 
 
 License Cases, 5 How. 504; 12 L. Ed. 504 920 
 
 Lightner v. Boston, 1 Law Dcs. 338 751, 758 
 
 Lighter v. Brooks, 2 Cliff. 287; Fed. Cas. 8344 481 
 
 T>igowski V. American, 34 Fed. 328 3 
 
 Lind.say v. Stein, 10 Fed. 907 3, 5 
 
 Litchfield v. Goodnow's, 123 U. S. 549; 31 L. Ed. 199; 8 S. Ct. 210. .. . 893,- 
 
 App. 386 
 
 Little V. Barreme, 6 U. S. 170; 2 L. Ed. 168 498 
 
 Little V. liowers, 134 U. S. 547; 33 L. Ed. 1016; 10 S. Ct. 620 550 
 
 Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577 .... 152. 153, 160, 161, 163, 
 
 165, 282, 290, 298, 511, 714, 722, 765, 796, 798, 835, 837, 845, 846, App. 
 
 722 
 
 Livingston, ^.r parte, 20 0. G. 1746 5 
 
 Livingston v. Woodsworth, 15 How. 546; 14 L. Ed. 809. . . 290, 292, 298, 
 
 837, 839, 847
 
 TABLE OF CASES CITED Cxliii 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Livingstone v. Jones, 3 Wall. Jr. 330; Fed. Cas. 8414 292 
 
 Livingstone v. Van Ingen, 9 Johns. 507 920 
 
 Lockwood V. Cleveland, 20 Fed. 164 587 
 
 Lockwood V. Faber, 27 Fed. 63 904 
 
 Lockwood V. Wicks, 75 Fed. 118; 21 C. C. A. 257 550 
 
 Loew V. German-American, 107 Fed. 949; 47 C. C. A. 94 118, 476, 477, 
 
 App. 544 
 
 Loew V. Miller, 138 Fed. 886; 71 C. C. A. 266 436, 441 
 
 Long V. Pope, 75 Fed. 835; 21 C. C. A. 533 226, 378, 527 
 
 Loom Co. V. Higgins, 105 U. S. 580; 26 L. Ed. 1177 .. . 72, 76, 108, 222, 232, 
 
 321, 391, 392, 396, 440, 459, 469, 608, 611, 617, 622, 624, 626, 631, 635, 
 
 647, 648, 651, 655, 656, 663, 671, 673, 674, 692, 693, 700, 807, 809, 811, 
 
 860, 864, 865, 903, 917, App. 603, 608 
 
 Loom Co. V. Higgins, 15 Blatch. 446; Fed. Cas. 17,342 65 
 
 Lord V. Veazie, 8 How. 255; 12 L. Ed. 249 887 
 
 Lorraine v. Thurmond, 51 O. G. 1781 860 
 
 Losh V. Hague, 1 Web. 207 440 
 
 Louden v. Janesville, 148 Fed. 686; 78 C. C. A. 548 App. 212 
 
 Louisiana v. Jumel, 107 U. S. 711; 27 L. Ed. 448; 2 S. Ct. 128 553 
 
 Louisiana v. McComb, 92 U. S. 531 ; 23 L. Ed. 623 553 
 
 Lourie v. Lenhart, 130 Fed. 122; 64 C. C. A. 456 App. 459 
 
 Lovejoy v. Murray, 3 Wall. 1 ; 18 L. Ed. 129 894 
 
 Loveil V. Gary, 147 U. S. 623; 37 L. Ed. 307; 13 S. Ct. 472. ... 616, 636, 
 
 656, 672, 676, App. 599 
 
 Lowell V. Lewis, 1 Mas. 182; Fed. Cas. 8568 223, 285, 289, 440, 905 
 
 Ludington v. Leonard, 119 Fed. 937 App. 205 
 
 Lumber Co. v. Buchtel, 101 U. S. 638; 25 L. Ed. 1073 893, 894 
 
 Lupton V. White, 15 Ves. 432 841, 847 
 
 Lyman v. Lalor, 1 B. & A. 403; Fed. Cas. 8632 860 
 
 Lynch v. Murphy, 161 U. S. 247; 40 L. Ed. 688; 16 S. Ct. 523 161 
 
 Lyon V. Donaldson, 34 Fed. 789 283 
 
 Lyons v. Drucker, 106 Fed. 416; 45 C. C. A. 368 App. 325 
 
 Mabie v. Haskell, 2 Cliff. 507; Fed. Cas. 8653 473, 485, 600 
 
 Macauley v. White, 9 Fed. 698 577 
 
 Macbeth v. Gillinder, 54 Fed. 169 256, App. 201, 209 
 
 Macfarlane v. Price, 1 Stark. 199 242 
 
 IVIachesney v. Brown, 29 Fed. 145 171 
 
 Machine v. Pearce, Fed. Cas. 4132 App. 68 
 
 Mackey v. Daniel, 59 Md. 484 App. 144 
 
 Macnamara v. Hulse, Car. & M. 4 669 
 
 INIaddock v. Coxon, 45 Fed. 578 380 
 
 Magic V. Douglas, 2 Fish. 330; Fed. Cas. 8948 574 
 
 Magic V. Economy, 97 Fed. 87; 38 C. C. A. 56 209 
 
 Magic Ruffle v. Elm City, Fed. Cas. 8949 App. 714 
 
 Magin v. Karle, 150 U. S. 387; 37 L. Ed. 1118; 14 S. Ct. 153 103 
 
 Magoun v. New England, Fed. Cas. 8960 App. 366 
 
 Magowan v. New York, 141 U. S. 332; 35 L. Ed. 781 ; 12 S. Ct. 62 ... . 222, 
 
 612, 622, 624, 626, 631, 635, 655, 811, 864 
 
 Mahler v. Animarium, 111 Fed. 530; 49 C. C. A. 431 707 
 
 Mahn v. Harwood, 112 U. S. 354; 28 L. Ed. 665; 5S. Ct. 174; 6 S. Ct. 
 
 451. .. . 12, 204, 207, 222, 244, 308, 313, 393, 795, 799, 871, 872, 876, 
 
 877, 878, 885, 889, App. 26 • 
 
 Maitland v. Gibson, 63 Fed. 840; 11 C. C. A. 446 50 
 
 Malin v. Kinney, 1 Cai. 117 411 
 
 Malone v. Marriott, 64 Ala. 486 116
 
 Cxliv TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix j 
 
 Manghaum v. Sharpe, 17 C. B. (N. S.) 443 927 
 
 Mann v. Bank, 86 Fed. 51 ; 29 C. C. A. 547 129, 544 
 
 Manning v. Cape Ann, 108 U. S. 462; 27 L. Ed. 793; 2 S. Ct. 860. .. . 18, 103 
 
 Mann's v. Monarch, 34 Fed. 130 273, App. 666 
 
 Mfg. Co. V. Nairn, 7 Ch. Div. 834 928 
 
 Mfg. Co. V. Shakespear, 39 L. J. Ch. 36 928 
 
 Many v. Jagger, 1 Blatch. 372; Fed. Cas. 9055 440, 451, 795 
 
 Marble v. Ripley, 10 Wall. 339; 19 L. Ed. 955 App. 722 
 
 Marchand v. Emken, 132 U. S. 195; 33 L. Ed. 332; 10 S. Ct. 65 . . . . 636, 
 
 667, 671 
 
 Marden v. Campbell, 67 Fed. 809; 15 C. C. A. 26 116, 120, 123, 
 
 539, 893 
 
 Maryland v. Dorr, 46 Fed. 773 823 
 
 Market v. Rowley, 155 U. S. 621; 39 L. Ed. 284; 15 S. Ct. 224 .. . 380, 431, 
 
 496, 665, 712, 734 
 
 Marsh v. Keating, 1 Bing. N. C. 198 926 
 
 Marsh v. Marshall, 53 Pa. St. 396 322 
 
 Marsh v. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168 532, 827 
 
 Marsh v. Nichols, 140 U. S. 344; 35 L. Ed. 413; 11 S. Ct. 798 722 
 
 Marsh v. Sayles, 5 Fish. 610; Fed. Cas. 9119 3 
 
 Marsh v. Seymour, 97 U. S. 348; 24 L. Ed. 963 283, 839 
 
 Marsh v. Whitmore, 21 Wall. 178; 22 L. Ed. 482 729 
 
 Marshall v. Mee, Fed. Cas. 9129 App. 861 
 
 Marston v. Svvett, 66 x\. Y. 211 764 
 
 Martinton v. Fairbanks, 112 U. S. 670; 28 L. Ed. 862; 5 S. Ct. 321 .... 131 
 
 Martin v. Hazard, 93 U. S. 302; 23 L. Ed. 885 133 
 
 Martin v. Martin, 67 Fed. 786; 14 C. C. A. 642 385 
 
 Marvel v. Merritt, 116 U. S. 11; 29 L. Ed. 550; 6 S. Ct. 207 903 
 
 Mason v. Crosby, 3 Wood. & M. 258; Fed. Cas. 9236 836 
 
 Mason v. Graham, 90 U. S. 261 ; 23 L. Ed. 86 837, 845 
 
 Masseth v. Johnston, 59 Fed. 613 372, 574 
 
 Masseth v. Palm, 51 Fed. 824 448 
 
 Mast V. Dempster, 82 Fed. 327; 27 C. C. A. 191 2, 74, 197, 
 
 App. 74 
 Mast V. Stover, 177 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708. . . 73, 118, 122, 
 
 224, 250, 253, 540, 557, 593, 616, 656, 657, 661, App. 118, 253, 535, 652, 
 
 672 
 
 Mast V. Superior, 154 Fed. 45; 83 C. C. A. 157 841 
 
 Masten v. Hunt, 55 Fed. 78; 5 C. C. A. 42 194, 904 
 
 Masten v. Hunt, 51 Fed. 216 194 
 
 Masterson v. Herndon, 77 U. S. 416; 19 L. Ed. 953 134 
 
 Masury v. Anderson, 11 Blatch. 162; Fed. Cas. 9270 244 
 
 Match V. Rosber, 106 N. Y. 473 365 
 
 Matheson v. Campbell, 78 Fed. 910; 24 C. C. A. 284 903, 909 
 
 Matheson v. Campbell, 69 Fed. 597 909, 914 
 
 Mathews v. Flower, 25 Fed. 830 356 
 
 Mathews v. Lister, 154 Fed. 490 App. 381 
 
 Mathers v. Green, 34 Beav. 170 927 
 
 Mathis V. Meek, 1 Hcisk. 534 539 
 
 Matteson v. Caine, 17 Fed. 525 442 
 
 Matthews v. Boston, 105 U. S. 54; 26 L. Ed. 1022 877 
 
 Matthews v. Iron Clad, 124 U. S. 347; 31 L. Ed. 477; 8 S. Ct. 639. . . . 871, 
 
 872, 877, 885 
 
 Matthews v. National, 71 Fed. 518 548, App. 559 
 
 Matthews v. Spagenberg, 19 Fed. 823 App. 344
 
 TABLE OF CASES CITED Cxlv 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Mawman v. Tegg, 2 Russ. 390 App. 845 
 
 MaxweU v. Kennedy, 8 How. 222; 12 L. Ed. 210 732, 793 
 
 Maxwell Land Grant Case, 122 U. S. 365; 30 L. Ed. 1211; 7 S. Ct. 1271 
 
 .... 136, App. 25 
 
 Maxwell v. Schwartz, 57 N. W. 141 539 
 
 May V. Armstrong, 26 Ky. 261 App. 371 
 
 May V. Juneau, 137 U. S. 408; 34 L. Ed. 729; 11 S. Ct. 102 734, 
 
 App. 795 
 
 Mayor v. American, 60 Fed. 1016; 9 C. C. A. 336 158 
 
 Mayor v. Ransom, 64 U. S. 487; 16 L. Ed. 5l5 . . . 286, 288, 292, 295, 298 
 McAleer v. United States, 150 U. S. 424; 37 L. Ed. 1130; 14 S. Ct. 160 
 
 .... 151,366 
 McCarty v. Lehigh, 160 U. S. 110; 40 L. Ed. 358; 16 S. Ct. 240. . . 195, 216, 
 
 219, 220, 223, 646, 937 
 McClain v. Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76 12, 
 
 195, 201, 202, 203, 204, 211, 223, 226, 240, 245, 380, 473, 587, 592, 598, 
 
 615, 623, 626, 635, 636, 672, 673, 903, App. 636 
 
 McCleary v. Baker, 63 Fed. 841 ; 11 C. C. A. 451 601 
 
 McCloskey v. DuBois, 8 Fed. 710 775 
 
 McCluny v. Silliman, 28 U. S. 270; 7 L. Ed. 269 921 
 
 McClurgy. Kingsland, 1 How. 202; 11 L. Ed. 102. . . 151, 271, 347, 366, 
 
 367, 369, 429, 639, 751, 752, 756, 757, 759, 770, 850, 856, 857, App. 366 
 
 McComb V. Brodie, 1 Woods. 153; Fed. Cas. 8708 287 
 
 McComb V. Frink, 149 U. S. 629; 37 L. Ed. 876; 13 S. Ct. 993 894 
 
 McCormick v. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443 . . 887 
 McCormick v. Aultman, 69 Fed. 371; 16 C. C. A. 259. . . 188, 198, 221, 226, 
 
 234, 241, 376, 378, 380, 427, 435, 442, 468, 519, 532, 679, 919, App. 204 
 
 McCormick v. Aultman, 58 Fed. 778 602 
 
 McCormick v. MinneapoHs, 42 Fed. 152 App. 861 
 
 McCormick v. Minnesota, 42 Fed. 152 811 
 
 McCormick v. Seymour, 2 Blatch. 240; Fed. Cas. 8726 857 
 
 McCormick v. Talcott, 61 U. S. 402; 15 L. Ed. 930. . . 202, 224, 230, 375, 
 
 376, 378, 380, 441, 442, 456, 468, 497, 506, 507, 517, 587, 612, 641, 686, 
 
 768, 815, 871, App. 434, 441 
 
 McCrea v. Holdsworth, 6 Ch. Ap. L. R. 418 331 
 
 McCreary v. Pennsylvania, 141 U. S. 459; 35 L. Ed. 817; 12 S. Ct. 40 
 
 ....95, 843, 846, App. 845 
 
 McCune v. Baltimore, 154 Fed. 63; 83 C. C. A. 175 App. 717 
 
 McDermott v. Strong, 4 Johns. Ch. 687 157 
 
 McDonald v. Miller, 84 Fed. 344 App. 371 
 
 McDonald v. Whitney, 24 Fed. 600 485, 736 
 
 McDowell V. Ideal, 187 Fed. 814; 109 C. C. A. 574 App. 871 
 
 McDowell V. Kurtz, 77 Fed. 206; 23 C. C. A. 119 459, 544, 554 
 
 McElmoyle v. Cohen, 38 U. S. 312; 10 L. Ed. 310 921 
 
 McEwan v. McEwan, 91 Fed. 787 223 
 
 McFarland v. Hall, 17 Tex. 691 116 
 
 McGahey v. Virginia, 135 U. S. 662; 34 L. Ed. 304; 10 S. Ct. 972 553 
 
 McGourkey v. Toledo, 146 U. S. 536; 36 L. Ed. 1079; 13 S. Ct. 170. .. . Il6, 
 
 304, 893 
 
 McKay v. Dizer, 61 Fed. 102; 9 C. C. A. 382 380 
 
 McKay v. Jackman, 12 Fed. 615 688, 770 
 
 McKay v. Smith, 39 Fed. 556 755 
 
 McKay v. Smith, 29 Fed. 295 510 
 
 McKeeves v. United States, 14 Ct. CI. 414 287 
 
 McLaughlin v. Peoples, 21 Fed. 574 568, 719, 730, 732, 793
 
 Cxlvi TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 McLean v. Fleming, 96 U. S. 245; 24 L. Ed. 828 558, 568, 728, 921 
 
 McLish V. Roff, 141 U. S. 661; 35 L. Ed. 893; 12 S. Ct. 118 116 
 
 McMicken v. Perin, 59 U. S. 507; 15 L. Ed. 504 125, 836 
 
 McMillin v. Barclay, 5 Fish. 189; Fed. Cas. 8902 2, 18, 856, 857 
 
 McMullen v. Bowers, 102 Fed. 494; 42 C. C. A. 470 App. 714 
 
 McMurray v. Mallory, 111 U. S. 97; 28 L. Ed. 365; 4 S. Ct. 375. .. . 532, 
 
 612, 877, 887 
 
 McSherry v. Dowagiac, 101 Fee]. 716; 41 C. C. A. 627 228, 376, 378, 
 
 456, 459, 468, 841, App. 378, 435 
 
 McSherry v. Dowagiac, 160 Fed. 948; 89 C. C. A. 26 837, 845 
 
 Header v. Norton, 1 Wall. 442 308 
 
 Medsker v. Bonebrake, 108 U. S. 66; 27 L. Ed. 654; 2 S. Ct. 351 ... 836 
 
 Mellor V. Carroll, 141 Fed. 992 App. 381 
 
 Menasha v. Dodge, 85 Fed. 971 ; 29 C. C. A. 508 544 
 
 Menendez v. Holt, 128 U. S. 514; 32 L. Ed. 526; 9 S. Ct. 143 ... 558, 568 
 
 Mercantile Trust Co. v. Wood, 60 Fed. 346; 8 C. C. A. 658 129 
 
 Mergenthaler v. Press Publishing Co., 57 Fed. 502 603, 782 
 
 Mergenthaler v. Ridder, 65 Fed. 853 797 
 
 Merriam v. Whittemore, 5 Gray, 316 893 
 
 Merrill v. Yeomans, 94 U. S. 568; 24 L. Ed. 235. . . 196, 207, 219, 222, 223, 
 226, 244 473, 507, 521, 609, 688, 821, 824, App. 633 
 
 Merrill v. Yeomans, 1 B. & A. 47; Fed. Cas. 9472 820 
 
 Merrill v. Yeomans, 5 0. G. 267 775 
 
 Merrow v. Shoemaker, 59 Fed. 120 : 613 
 
 Meserole v. Paper, 6 Blatch. 356; Fed. Cas. 9488 714 
 
 Messinger v. Anderson, 171 Fed. 785; 96 C. C. A. 785 App. 893 
 
 MetaUic v. Brown, 104 Fed. 345; 43 C. C. A. 568 459, App. 378 
 
 Metallic v. Brown, 110 Fed. 665; 49 C. C. A. 147 274, 342 
 
 Metcalf V. City, 68 Fed. 859; 16 C. C. A. 37 128 
 
 Metcalf V. Watertown, 153 U. S. 671 ; 38 L. Ed. 861 ; 14 S. Ct. 947 .. . 921 
 
 Metropolitan v. Young, 14 Blatch. 46; Fed. Cas. 9508 607 
 
 Mevs V. Conover, 93 U. S. cxlii; 23 L. Ed. 1008 837 
 
 Michigan v. Consolidated, 67 Fed. 121; 14 C. C. A. 232 54, 56, 780 
 
 Michigan v. Rust, 168 U. S. 589; 42 L. Ed. 591 ; 18 S. Ct. 208 26 
 
 Miehle v. Read, 90 0. G. 426 3 
 
 Miles V. U. S. 103 U. S. 304; 26 L. Ed. 481 131 
 
 Milkman v. Ordway, 106 Mass. 232, 256 151 
 
 Millard v. Chase, 108 Fed. 399; 47 C. C. A. 429 194 
 
 Miller v. Brass Co., 104 U. S. 350; 26 L. Ed. 783 .. . 12, 200, 204, 222, 380, 
 
 473, 605, 609, 731, 871, 872, 873, 876, 877, 878, 883, 885, 886, 888, App. 
 
 378, 871 
 Miller v. Eagle, 151 U. S. 186; 38 L. Ed. 121; 14 S. Ct. 310 86, 188, 
 
 197, 215, 348, 349, 351, 353, 354, 355, 356, 357, 358, 359, 360, 361, 374, 
 
 375, 376, 378, 380, 426, 427, 435, 468, 496, 525, 528, 587, 598, 629, 672, 
 
 680, 860, 919, App. 188, 358, 376, 528, 598, 692 
 
 Miller v. Force, 116 U. S. 22; 29 L. Ed. 552; 6 S. Ct. 204 016, 671 
 
 Miller v. Handley, 61 Fed. 100 74 
 
 Miller v. M'Intyre, 6 Pet. 61 ; 8 L. Ed. 320 137 
 
 Miller v. Miller, 2 Pick. 570 807 
 
 Miller v. Schwarner, 130 Fed. 561 App. 717 
 
 Miller v. Tobacco Co, 7 Fed. 91 App. 386 
 
 Miller v. Taylor, 4 Burr, 2303 16, 920 
 
 Miller v. Whittier, 36 Me. 585 847 
 
 Milligan v. Upton, 97 IT. 8. 3; 24 L. Ed. 985. . . 313, 646, 667, 775, 795, 823 
 Milligan v. Upton, Fed. Cas. 9607 App. 679
 
 TABLE OF CASES CITED Cxlvii 
 
 [References are to sections. " App." refers to Appendix] 
 
 Mills V. Green, 159 U. S. 651; 40 L. Ed. 293; 16 S. Ct. 132 274, 550 
 
 Millward v. Banes, 11 0. G. 1060 811 
 
 Murphy v. Excelsior, 70 Fed. 491 ■ / ti 
 
 Milner v. Yesbera, 111 Fed. 386; 49 C. C. A. 397 118, 32o 
 
 Milwaukee v. Brunswick-Balke, 126 Fed. 171 ; 61 C. C. A. 175. . 436, 441, 673 
 
 Minter's Patent, 1 Web. 132 368 
 
 Mississippi V. Cromwell, 91 U. S. 643; 23 L. Ed. 368 174 
 
 Missouri V. Bell Tel., 23 Fed. 539 746 
 
 Missouri V. Texas, 38 Fed. 775 f 77 
 
 Mitchell V. Ewart, 81 Fed. 390; 26 C. C. A. 443 V ' nH 
 
 Mitchell V. International, 169 Fed. 145 App. 924 
 
 Mitchell V. Harmony, 13 How. 115; 14 L. Ed. 113 . . 481, 498 
 
 Mitchell V. Hawley, 83 U. S. 544; 21 L. Ed. 322. . . 150 165, 418, 450, 505 
 
 523, 765, 899, 927 
 
 Mitchell V. Tilghman, 86 U. S. 287; 22 L. Ed. 125. . . 212, 214, 223 409 
 
 904, 937 
 
 Moffat V. Blake, 145 Fed. 40; 75 C. C. A. 265 - v, ■ - ^PP- ^^J 
 
 Moffat V. United States, 112 U. S. 24; 28 L. Ed. 623; 5 S. Ct. 10 . . 26 
 
 Moffit V. Garr, 66 U. S. 273; 17 L. Ed. 207 --••-••• ^^2, 88/, 889 
 
 Moffit V. Rogers, 106 U. S. 423; 27 L. Ed. 76; 1 S. Ct. 70 872, 877 
 
 Moffit V. Rogers, 8 Fed. 147 r oor 
 
 Mohne V. Carson, 72 Fed. 387; 18 C. C. A. 606 App. 836 
 
 Montesquieu v. Sandys, 18 Ves. 302 --^ 4^5 
 
 Montross v. Mabie, 30 Fed. 4 366, 75b 
 
 Moody V. Fiske, 2 Mas. 112; Fed. Cas. 9745 242, 914 
 
 Moore v. Cheeseman, 23 Mich. 290 717 
 
 Moore v. Green, 19 How. 69; 15 L. Ed. 533 ■ ■ -^ '29 
 
 Moore v. Marsh, 74 U. S. 515; 19 L. Ed. 37 150, 750, 827 
 
 Moore v. Robbins, 96 U. S. 530; 24 L. Ed. 848 .^ .^^ • .^^ . .^^ . ■ 26 
 
 Morey v. Lockwood, 75 U. S. 230; 19 L. Ed. 339 ... . 459, 503 651, 871. 87o 
 
 Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 500; 14 S. Ct 627. . 54 207 
 
 208, 476, 477, 513, 523, 524, 771, App. 31, 207, 468 
 
 Morgan v. Alliance, 176 Fed. 100; 100 C. C. A. 30 . . . . App. 344, 400, 598 
 
 Do i 
 
 Morgan v. Daniels, 153 U. S. 120; 38 L. Ed. 657; 14 S. Ct 772^ . ... 59 
 ^ 74, 582, 587, 860, 895, App. 25, 30, 584 
 
 Morgan v. Seaward, 1 Web. 170 634, 649 
 
 Morgan v. United States, 81 U. S. 531 ; 20 L. Ed. 738 498, 715 
 
 Morley v. Hawkes, Y. & J. 520 >.■ ' oV^n om 
 
 Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299 . . 201, 
 224 229 241, 245, 375, 378, 380, 432, 442, 492, 497, 506, 519, 532, o87, 
 605^ 607, 640, 641 , 642, 643, 674, 686, App. 376, 497 
 
 Morris v. Barclay, 68 Pa. St. 173 ;.>;•-•• oi r 
 
 Morris v. McMilUn, 112 U. S. 244; 28 L. Ed. 702; 5 S. Ct. 218 .... ^ 216 
 
 596, 654, 657, 662, 667, 676, 679 
 
 Morse v. Elmendorf, 11 Paige, 277 ore i^l 
 
 Morse v. Morse, 103 Mass. 73 365, /44 
 
 Morton v. Infirmary, 2 Fish. 320; Fed. Cas. 9865 683 
 
 Morton v. Nebraska, 21 Wall. 660; 22 L. Ed. 639 308 
 
 Morton's Patent, 8 Op. Atty's. Gen. 269 ^^^ o83 
 
 Mosher v. Joyce, 51 Fed. 441 ; 2 C. C. A. 322 298, 845 
 
 Mosler v. Mosler, 127 U. S. 354; 32 L. Ed. 182; 8 S. Ct. 1148 ... . 348, 353 
 
 356, 596, 617, 820, App. 358 
 
 Mossberg v. Nutter, 124 Fed. 966; 60 C. C. A. 98 790 
 
 Mott V. Hicks, 1 Cow. 513 15b
 
 Cxlviii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Motte V. Bennett, 2 Fish. 642; Fed. Cas. 9884 574 
 
 Motteux V. Insurance, 1 Atk. 545 720 
 
 Mowry v. Barber, 1 McArthur, 563; Fed. Cas. 9892 3 
 
 Mowry v. Whitney, 81 U. S. 434; 20 L. Ed. 858 26, 837, App. 26 
 
 Mowry v. Whitney, 81 U. S. 620; 20 L. Ed. 860 282, 284, 285, 290, 
 
 298, 378, 597, 688, 770, 817, 835, 837, 840, 844, 845, 846, 847 
 
 Muller, In re, 7 Blatch. 23; Fed. Cas. 9911 577 
 
 Muller V. Lodge, 77 Fed. 621; 23 C. C. A. 357 .... 207, 221, 234, 376, 378, 
 
 435, 597, 603, 840 
 
 Hunger v. Connell, 1 0. G. 491 861 
 
 Munson v. Mayor, 124 U. S. 601; 31 L. Ed. 586; 8 S. Ct. 622. . .440, 647, 688 
 
 Muntz V. Foster, 2 Web. 93 674 
 
 Murphy v. Excelsior, 76 Fed. 965; 22 C. C. A. 658 376, 473 
 
 Murray v. Clayton, L. R. 10 Ch. 675 202, 466 
 
 Murray v. Clayton, 7 Ch. App. 577 668 
 
 Murray v. Orr, 153 Fed. 369; 82 C. C. A. 445 App. 578 
 
 Myers v. Brown, 102 Fed. 250; 42 C. C. A. 320 131 
 
 Myers v. Frame, 8 Blatch. 446; Fed. Cas. 9991 223, 343, App. 344 
 
 Mygatt, Ex parte, 121 0. G. 1676 App. 331 
 
 Nagle, Ex parte, C. D. 1870, 137 375 
 
 Nashua v. Boston, 61 Fed. 237; 9 C. C. A. 468 789 
 
 Nashville v. McConnell, 82 Fed. 65 924 
 
 Nassua v. Sprague, 95 Fed. 415; 37 C. C. A. 146 536, 537 
 
 Nathan v. Craig, 47 Fed. 522 ' 807 
 
 Nathan Mfg. Co. v. Craig, 49 Fed. 370 587 
 
 National v. Aikin, 163 Fed. 254; 91 C. C. A. 114 . . . App. 400, 604, 615, 655 
 National v. American, 53 Fed. 367; 3 C. C. A. 559. . . . 190, 251, 252, 374, 
 
 469, 603, 604, App. 68, 603 
 
 National v. Automatic, 105 Fed. 670; 44 C. C. A. 664 542 
 
 National v. Belcher, 71 Fed. 876; 18 C. C. A. 375 903 
 
 National v. Boston, 156 U. S. 502; 39 L. Ed. 511; 15 S. Ct. 434 435, 
 
 481, 616, 691 
 
 National v. Boston, 45 Fed. 481 252 
 
 National v. Boston, 41 Fed. 48 755 
 
 National v. Brown, 36 Fed. 317 860 
 
 National v. Buckeye, 171 Fed. 847; 96 C. C. A. 515 App. 376 
 
 National v. Connecticut, 73 Fed. 491 213, 797 
 
 National v. Daab, 136 Fed. 891 574 
 
 National v. Elsas, 81 Fed. 197 283 
 
 National, Ex parte, 201 U. S. 156; 26 L. Ed. 404 120, App. 118, 133 
 
 National v. Hcdden, 148 U. S. 482; 37 L. Ed. 529; 13 S. Ct. 680. . 356, 692 
 
 National v. Insurance Co., 104 U. S. 54; 26 L. Ed. 693 841 
 
 National v. Interchangeable, 106 Fed. 693; 45 C. C. A. 544. . . . 129, 375, 
 376, 378, 380, 435, 441, 442, 459, 468, 473, 506, 544, 587, 598, 609, 612, 
 622, 626, 635, 636, 671, 672, 675, App. 74, 188, 207, 208, 212, 223, 376, 
 441, 459, 497, 503, 598, 671 
 
 National v. Leland, 94 Fed. 502; 37 C. C. A. 372 481 
 
 National v. Quick, 67 Fed. 130; 20 C. C. A. 410 744 
 
 National v. Schlcgel, 128 Fed. 733; 64 C. C. A. 594 714 
 
 National v. Spiro, 78 Fed. 774; 24 C. C. A. 334 112 
 
 National v. Stecher, 81 Fed. 395; 26 C. C. A. 448 380 
 
 National v. Stolts, 174 Fed. 413; 98 C. C. A. 617 App. 325 
 
 National v. Thomson, 106 Fed. 531 916 
 
 National Folding v. American, 55 Fed. 488 152 
 
 National Folding v. Robertson, 99 Fed. 985 645
 
 TABLE OF CASES CITED Cxlix 
 
 [References are to sections. " App." refers to Appendix] 
 
 National Progress v. Williams, 44 Fed. 190 219 
 
 Nat. Recording v. International, 158 Fed. 824 App. 381 
 
 Nat. Surety v. Kansas, 182 Fed. 54; 104 C. C. A. 494 App. 128 
 
 Needham v. Oxley, 8 L. T. N. S. 604 7G4 
 
 Needham v. Washburn, 7 0. G. 651 795 
 
 Nellis V. Pennock, 13 Fed. 451 171 
 
 Nelson v. Hartford, 1 Web. 295 230, 375, 497, 639, 768, 815 
 
 Nelson v. Hartford, 1 Web. 331 688, 770, 903 
 
 Nelson v. Thompson, 1 Web. 275 686, 815 
 
 Nesbit V. Riverside, 144 U. S. 610; 36 L. Ed. 562; 12 S. Ct. 746 894 
 
 Nesbits Case, C. D. 1870, 106 6 
 
 Nesmith v. Sheldon, 6 How. 41; 12 L. Ed. 39 113 
 
 Nestor v. Brewing Co., 161 Pa. St. 473 744 
 
 New V. Walker, 108 Ind. 365 920 
 
 New Departure v. Be\an, 73 Fed. 469; 19 C. C. A. 534 596 
 
 New Departure v. Bevin, 64 Fed. 859 459, 468, App. 459 
 
 New Orleans v. Steamship, 20 Wall. 387; 22 L. Ed. 354 .. . 536, 537, 538, 
 
 577, 578, 725 
 New Process v. Maus, 122 U. S. 413; 30 L. Ed. 1193; 7 S. Ct. 1304. . 100, 
 
 148, 688, 770 
 
 Newall V. Wilson, 2 De G. M. & G. 282 256 
 
 Newark v. Newark, 23 N. J. Eq. 515 539 
 
 Newhall v. McCabe, 125 Fed. 919; 60 C. C. A. 629 567 
 
 Newhall v. Sanger. 92 U. S. 761; 23 L. Ed. 769 308 
 
 Newton v. Buck, 72 Fed. 777 164, 165 
 
 Newton v. Furst, 119 U. S. 373; 30 L. Ed. 442; 7 S. Ct. 369 202, 215, 
 
 602, 877, 885 
 
 New York v. Ambler, 103 Fed. 316 207 
 
 New York v. American, 42 Fed. 455 797 
 
 New York v. Buffalo, 18 Fed. 638 558, 568 
 
 New York v. Hollingsworth, 56 Fed. 224; 5 C. C. A. 490 371 
 
 New York v. New Jersey, 137 U. S. 445; 34 L. Ed. 741; 11 S. Ct. 193 
 
 ...324. 325,335,411,709 
 
 New York v. New York, 9 Fed.. 578 App. 371 
 
 New York v. Peoria, 21 Fed. 878 717 
 
 New York Central v. U. S. 212 U. S. 481; 53 L. Ed. 613; 29 S. Ct. 304 
 
 . . . .App. 777 
 
 New York Filter v. Chemical, 93 Fed. 827 548, App. 559 
 
 New York Filter v. Jackson, 91 Fed. 422 561 
 
 New York Filter v. Loomis, 91 Fed. 421 729 
 
 New York Filter v. Niagara, 80 Fed. 924; 26 C. C. A. 252 . . App. 253, 535 
 
 New York Life V. Statham, 93 U. S. 24; 23 L. Ed. 789 App. 755 
 
 New York Phonograph v. National, 163 Fed. 534 App. 381 
 
 Ney V. Ney, 69 Fed. 405; 16 C. C. A. 293 198, 376 
 
 Noonan v. Chester, 99 Fed. 90; 39 C. C. A. 426. . . .213, 384, 385, 442, 
 
 App. 381, 384 
 
 North V. Kirshaw, 4 Blatch. 70; Fed. Cas. 10,311 551 
 
 N. Am. Exploration v. Adams, 104 Fed. 404; 45 C. C. A. 185. . . . 129, 544 
 
 North Bloomfield, In re, 27 Fed. 795 577 
 
 North Carolina v. Temple, 134 U. S. 22; 33 L. Ed. 849; 10 S. Ct. 509. 553 
 
 Northern Trust Co. v. Snyder, 77 Fed. 818; 23 C. C. A. 480 277 
 
 Northup V. Adams, 2 B. & A. 567; Fed. Cas. 10,328 332, 337, 635 
 
 Northwestern v. New Haven, 28 Fed. 234 459 
 
 Northwestern v. Philadelphia, 1 B. & A. 177; Fed. Cas. 10,337 860 
 
 Northwood v. Dalzell, 100 Fed. 198; 40 C. C. A. 295 325
 
 Cl TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Norton v. Can Co. 45 Fed. 637 374, 448 
 
 Norton v. Eagle, 57 Fed. 929 568, App. 562 
 
 Norton v. Eagle, 59 Fed. 137 680 
 
 Norton v. Jensen, 49 Fed. 859; 1 C. C. A. 452 448, 456,.459, 506, 903 
 
 Norton v. Jensen, 90 Fed. 415; 33 C. C. A. 141 378, 448, 473 
 
 Norton v. San Jose, 79 Fed. 793; 25 C. C. A. 194 31 
 
 Nourse v. Allen, Fed. Cas. 459 804 
 
 Nudd V. Burrows, 91 U. S. 426; 23 L. Ed. 286 921 
 
 Nutter V. Brown, 98 Fed. 892; 39 C. C. A. 332 661 
 
 Odell V. Stout, 22 Fed. 159 860, 867, App. 552 
 
 Odorine v. Amesbury, 2 Mason, 28; Fed. Cas. 10,430 348, 356 
 
 Office V. Globe, 77 Fed. 465; 23 C. C. A. 242 624 
 
 Office V. Fenton, 174 U. S. 492; 43 L. Ed. 1058; 19 S. Ct. 641. . 49, 597, 
 
 675, 695, 707, 709, App. 597 
 
 Ogilvie V. Hearne, 13 Ves. 463 305 
 
 Ogle V. Ege, 4 Wash. 584; Fed. Cas. 10,462 574 
 
 Oldham v. James, 14 Irish Ch. 81 151 
 
 Ohn V. Timken, 155 U. S. 141; 39 L. Ed. 100; 15 S. Ct. 49 627, 636 
 
 Oliver v. Blair, 5 Pac. 917 App. 144 
 
 Oliver v. Piatt, 3 How. 333; 11 L. Ed. 332 167, 794, 804 
 
 Oliver v. Rumford, 109 U. S. 75; 27 L. Ed. 862; 3 S. Ct. 61. . . 40, 150, 
 
 165, 270, 271, 366, 751, 756, 762, 765, 899 
 
 Onderdonk v. Fanning, 4 Fed. 148 384, 555 
 
 O'Neal V. United States, 190 U. S. 36; 23 S. Ct. 776 538 
 
 O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. . 222, 230, 340, 341, 342, 
 377, 380, 424, 490, 506, 639, 679, 686, 688, 768, 770, 815, 817, 819, 880 
 
 Ormson v. Clarke, 13 C. B. (N. S.) 337 679 
 
 O'Rourke v. McMullen, 160 Fed. 933; 88 C. C. A. 115 App. 656 
 
 Orr V. Murray, 163 Fed. 54; 89 C. C. A. 492 App. 838 
 
 Osborn v. Bank, 22 U. S. 738; 6 L. Ed. 738 553 
 
 Osborne v. Glazier, 31 Fed. 402 630 
 
 Osgood V. Franklin, 2 Johns. Ch. 1 796 
 
 Osgood V. Metropolitan, 75 Fed. 670; 21 C. C. A. 491 616 
 
 Otis V. Portland, 127 Fed. 557; 62 C. C. A. 339 App. 358 
 
 Otley V. Watkins, 36 Fed. 323 377 
 
 Oval V. Sandy Creek, 60 Fed. 285 356, 380, 485 
 
 Overseers v. Sears, 39 Mass. 122 App. 758 
 
 Overweight v. Improved, 94 Fed. 155; 36 C. C. A. 125 198 
 
 Overweight v. Vogt, 102 Fed. 957; 43 C. C. A. 80 45, 49, 597, 599, 
 
 603, 674, 695, App. 675 
 
 Owens V. Twin City, 168 Fed. 259; 93 C. C. A. 561 App. 204, 208, 212 
 
 Packard v. Lacing, 70 Fed. 66; 16 C. C.-A. 639 68, 92, 93, 371, 
 
 App. 68 
 
 Packet V. Sickles, 86 U. S. 611; 22 L. Ed. 203 285, 292, 294, App. 
 
 292 
 
 Packet V. Sickles, 51 U. S. 440; 13 L. Ed. 417 842 
 
 Paddock v. Commercial, 104 Mass. 521 836 
 
 Page V. Land, 49 Fed. 936 937 
 
 Paillard v. Bruno, 29 Fed. 864 420, 421, 422 
 
 Paine v. Central, 118 U. S. 152; 30 L. Ed. 193; 6 S. Ct. 1019 131 
 
 Paine v. Trask, 56 Fed. 233; 5 C. C. A. 497 158 
 
 Palmer v. Corning, 156 U. S. 342; 39 L. Ed. 445; 15 S. Ct. 381. . 473, 595, 
 
 597 
 Pahner v. Lozier, 90 Fed. 732; 33 C. C. A. 255 .. . 349, 351, 353, 357, 598, 
 
 672, 919, App. 358, 598
 
 TABLE OF CASES CITED cH 
 
 [ References are to sections. " App." refers to Appendix ] * 
 
 Palmyra, The, 10 Wheat, 502; 6 L. Ed. 501 ' 116 
 
 Paper Bag Gases, 105 U. S. 766; 26 L. Ed. 959. .165, 274, 505, 686, 752, 
 
 796, 798 
 Paper Bag Case, 210 U. S. 405; 52 L. Ed. 1122; 28 S. Ct. 748. .. . App. 
 
 212, 376, 435, 574 
 
 Paper Bag Cases, 30 Fed. 63 426, 686 
 
 Paris V. Hill, 102 Fed. 148; 42 C. C. A. 227 App. 544 
 
 Parker v. Appert, 75 0. G. 1201 App. 421 
 
 Parker v. Haworth, 4 McLean, 370; Fed. Gas. 10,738. . 158, 396, 503, 903 
 
 Parker v. Hulmc, 1 Fish. 44; Fed. Gas. 10,740 45, 508, 689 
 
 Parker v. McKee, 24 Fed. 808 213, 384, 451, 555, 797 
 
 Parker v. Stiles, 5 McLean, 44; Fed. Gas. 10,749 223 
 
 Parker v. Yale, 123 U. S. 87; 31 L. Ed. 100; 8 S. Ct. 38 204, 222, 871, 
 
 872, 875, 876, 877, 885, 888, App. 871 
 
 Parkham v. American, 4 Fish. 468; Fed. Gas. 10,713 61 
 
 Parkhurst v. Kinsman, 1 Blatch. 488; Fed. Gas. 10,757 11 
 
 Parkinson, Ex parte, G. D. 1871, 251 337 
 
 Parkman's Admr. v. Aicardi, 34 Ala. 393 796 
 
 Parks V. Booth, 102 U. S. 96; 26 L. Ed. 54. . 73, 96, 282, 432, 604, 608, 835 
 
 Parks V. Stevens, L. R. Eq. 358 679 
 
 Parhn v. MoUne, 89 Fed. 329; 32 G. G. A. 221 633 
 
 Parramore v. Taylor, 114 Fed. 97; 52 G. C. A. 45 631 
 
 Parrish v. Ferris, 2 Black, 606 31 
 
 Parrv v. Hitchcock, 58 Fed. 402 234 
 
 Parsons v. Bedford, 3 Pet. 433; 7 L. Ed. 732 131 
 
 Parsons v. Robinson, 122 U. S. 112; 30 L. Ed. 1122; 7 S. Ct. 1153. ... 116 
 
 Patent v. Glover, 141 U. S. 560; 35 L. Ed. 858; 12 S. Ct. 79 636 
 
 Pattee v. Kingman, 129 U. S. 294; 32 L. Ed. 700; 9 S. Ct. 389. . . 667, 871 
 
 Pattee v. MoUne, 9 Fed. 821 App. 91 
 
 Patterson v. Commonwealth, 97 U. S. 501; 24 L. Ed. 1115.... 505, 645, 
 
 745, 746, 871, 920, 921 
 
 Paxson V. Brown, 61 Fed. 874; 10 G. G. A. 125 App. 129 
 
 Paxton V. Brinton, 107 Fed. 137 209 
 
 Peabody v. Norfolk, 98 Mass. 452 898 
 
 Pearce v. Mulford, 102 U. S. 112; 26 L. Ed. 93 440, 647, 671, 676 
 
 Pearl v. Ocean, 2 B. & A. 469; Fed. Gas. 10,876 380, App. 692 
 
 Peck V. Collins, 103 U. S. 660; 26 L. Ed. 512 532, 887 
 
 Peck V. Cooper, 112 111. 192 481 
 
 Peck V. Jones, 70 Pa. St. 83 322 
 
 Peer v. Humphrev, 2 Ad. & E. 495 418 
 
 Penfield v. Chambers, 92 Fed. 630; 34 G. G. A. 579. . . .376, 378, 435, 459, 
 
 App. 378, 435 
 
 Penfield v. Potts, 120 Fed. 475; 61 G. C. A. 371 31, 219, 937 
 
 Pennington v. King, 7 Fed. 462 447 
 
 Pennock v. Dialogue, 2 Pet. 1; 7 L. Ed. 327 6, 7, 366, 386, 387, 857 
 
 Pennoyer v. McConiiaughy, 140 U. S. 1; 35 L. Ed. 363; 11 S. Ct. 699 . . 553 
 
 Pennsjdvania v. Libbv, L. R. 3 Eq. 308 551 
 
 Pennsylvania Drill Go. v. Simpson, 29 Fed. 288 860, 867 
 
 Pennsylvania v. Locomotive, 110 U. S. 490; 28 L. Ed. 222; 4 S. Ct. 220 
 
 . . .206, 215, 596, 616, 617, 618, 635, 638, 651, 656, 662, 667, 670, 671, 
 
 672, 675, 676, 679, 687, 695, 858, App. 404 
 
 Pennsylvania. Steel v. Vermilve, 90 Fed. 493; 33 C. C. A. 619 805 
 
 Pentlarge v. Pentlarge, 19 Fed. 817 587 
 
 People V. Super. Xiag. 4 Hill. 23 834 
 
 Peoria v. Cleveland, 58 Fed. 227; 7 C. C. A. 197 877, 878
 
 Clii TABLE OF CASES CITED 
 
 * [ References are to sections. " App." refers to Appendix ] 
 
 Perkins v. Buchanan, 129 Fed. 134 506 
 
 Perkins v. Tourniquet, 6 How. 206; 12 L. Ed. 204 116 
 
 Perkins v. Hart, 24 U. S. 237; 6 L. Ed. 237 113 
 
 Perkins v. Nashua, 2 Fed. 451 412 
 
 Perrin v. Lepper, 72 Mich, 541 539 
 
 Perry v. Littlefield, 17 Blatch. 272; Fed. Cas. 11,008 510 
 
 Perry v. Revere, 103 Fed. 314; 43 C. C. A. 248 43 
 
 Perry v. Skinner, 1 Web. 253 343 
 
 Peters v. Active, 129 U. S. 530; 32 L. Ed. 738; 9 S. Ct. 389. .. . 86, 525, 
 
 671, 854 
 
 Peters v. Active, 130 U. S. 626; 32 L. Ed. 1057; 9 S. Ct. 643 591 
 
 Peters v. Active, 21 Fed. 319 525 
 
 Peters v. Hanson, 129 U. S. 541; 32 L. Ed. 742; 9 S. Ct. 393. .. . 591, 617, 
 
 671, App. 696 
 
 Peterson v. Wooden, 3 McLean, 248; Fed. Cas. 11,038 444 
 
 Pettibone v. Penn. Steel, 133 Fed. 730 App. 74 
 
 Phelps V. Oaks, 117 U. S. 236; 29 L. Ed. 888; 6 S. Ct. 714 921 
 
 Philadelphia t-. Edison, 65 Fed. 551; 13 C. C. A. 40 254, 561 
 
 Philip V. Nock, 84 U. S. 460; 21 L. Ed. 679 285, 286, 287, 292, 298 
 
 Phillips V. Detroit, 111 U. S. 604; 28 L. Ed. 532; 4 S. Ct. 580. . . 88, 216, 
 
 596, 597, 609, 657, 662, 666, 667, 672, 679, 696, 707, 710, App. 599 
 
 PhUlips V. Page, 65 U. S. 164; 16 L. Ed. 639. . . .47, 407, 440, 593, 596, 
 
 653, 067, 671, 676, 679, 775, 795 
 Phoenix v. Spiegel, 133 U. S. 360; 33 L. Ed. 663; 10 S. Ct. 409. .. . 54, 
 
 198, 207, 212, 224, 374, 468, App. 194, 201, 209 
 
 Piaget V. Headley, 108 Fed. 870; 48 C. C. A. 116 App. 385 
 
 Piatt V. Vattier, 9 Pet. 416; 9 L. Ed. 403 732 
 
 Pickering v. McCuUough, 104 U. S. 310; 26 L. Ed. 749. . .'.49, 89, 92, 93, 
 
 431, 437, 594, 595, 596, 597, 601, 603, 607, 608, 612, 617, 624, 669, 
 
 674, 782, App. 597 
 
 Pickhardt v. Packard, 22 Fed. 530 171 
 
 Pierson v. Eagle, 3 Story, 402; Fed. Cas. 11,156 857 
 
 Pine V. Bailey, 94 Fed. 258; 36 C. C. A. 229 166, 179 
 
 Pinney v. Bank, 68 Kan. 223 920 
 
 Pirkl V. Smith, 42 Fed. 410 330 
 
 Pitcher's Case, 1 Ct. CI. 7 715 
 
 Pitts V. Edmonds, 2 Fish. 52; Fed. Cas. 11,191 2, 18 
 
 Pitts V. Hall, 2 Blatch. 229; Fed. Cas. 11,192 261, 368, 629, 856, 857 
 
 Pitts V. Wemple, 1 Biss. 87; Fed. Cas. 11,194 372, 574, 746 
 
 Pitts V. Whitman, 2 Story, 609; Fed. Cas. 11,196. 472 
 
 Pittsburg v: Cowles, 55 Fed. 301 107 
 
 Pittsburgh v. Heck, 102 U. S. 120; 26 L. Ed. 58 138 
 
 Piatt V. Fire Extinguisher, 59 Fed. 897; 8 C. C. A. 357 App. 755 
 
 Plow V. Carson, 72 Fed. 387 129, 544 
 
 Plummer v. Sargent, 120 U. S. 442; 30 L. Ed. 737; 7 S. Ct. 640 353 
 
 Pohl V. Anchor, 134 U. S. 381; 33 L. Ed. 953; 10 S. Ct. 577 ,. . .420, 421, 
 
 422, App. 422 
 
 Poillon V. Shmidt, 6 Blatch. 299; Fed. Cas. 11,241 689 
 
 Pomeroy v. Bank, 1 Wall. 592; 17 L. Ed. 638 126 
 
 Pope V. Gormully, 144 U. S. 238; 36 L. Ed. 420; 12 S. Ct. 637 .. . 163, 165, 
 
 926 
 
 Pope V. Gormullv, 144 U. S. 254; 36 L. Ed. 426; 12 S. Ct. 643 174 
 
 Pope V. Owslev, 27 Fed. 100 213, 532, 732, App. 714 
 
 Porter v. National, 17 Fed. 536 App. 157 
 
 Portland v. Hermann, 160 Fed. 91; 87 C. C. A. 247 456
 
 TABLE OF CASES CITED cHii 
 
 I References are to sections. " App." refers to Apjjendii ] 
 
 Post V. Marsh, L. R. 16 Ch. Div. 395 151 
 
 Post V. Richards, 26 Fed. 618 801 
 
 Potter V. Crowell, 3 Fish. 112; Fed. Cas. 11,323 548, App. 559 
 
 Potter V. Fuller, 2 Fish. 251 ; Fed. Cas. 11,327 561 
 
 Potter V. Holland, 4 Blatch. 157; Fed. Cas. 11,572 164 
 
 Potter V. Holland, 4 Blatch. 206; Fed. Cas. 11,329 753 
 
 Potter V. Schenck, 1 Biss. 515; Fed. Cas. 11,337 459 
 
 Potts V. Craeger, 155 U. S. 597; 39 L. Ed. 275; 15 S. Ct. 194. .. . 88, 89, 
 
 94, 215, 222, 435, 459, 616, 617, 618, 622, 635, 655, 671, 672, 673, 696, 
 
 699, 709, App. 622, 656, 671, 672, 673 
 
 Potts, In re, 166 U. S. 263; 41 L. Ed. 994; 17 S. Ct. 520 138, App. 893 
 
 Powder v. Powder, 98 U. S. 126; 25 L. Ed. 77. . . . 734, 815, 821, 871, 872, 
 
 877, 881, 883, 888, App. 871, 881 
 
 Power Co. v. Allen, 120 Mass. 252 481 
 
 Pratt V. Paris, 168 U. S. 255; 42 L. Ed. 458; 18 S. Ct. 62. . . . 714, 718, 
 
 App. 718 
 
 Pratt V. Sencenbaugh, 64 Fed. 779 App. 74 
 
 Pratt V. Wright, 65 Fed. 99 App. 253 
 
 Prentiss v. Duluth, 58 Fed. 437; 7 C. C. A. 293 161 
 
 Pressed Steel v. Hanson, 137 Fed. 403; 71 C. C. A. 207 App. 160, 365 
 
 Presto Gear v. Orme, 18 R. P. C. 17 App. 420 
 
 Preston v. Manard, 116 U. 8. 661; 29 L. Ed. 763; 6 S. Ct. 695 .. . 672, 908 
 
 Price V. Berrington, 7 Eng. L. & Eq. 260 425 
 
 Price V. Steel Co. 46 Fed. 107 558, 568 
 
 Prindle v. Brown, 155 Fed. 531; 84 C. C. A. 45 860 
 
 Proctor V. Ackroyd, 6 0. G. 603 861 
 
 Proctor V. Bennis, L. R. 36 Ch. D. 740. .. . 230, 453, 507, 519, 605, 686, 
 
 768 815 
 
 Proctor V. Globe, 92 Fed. 357; 34 C. C. A. 405 544, App! 544 
 
 Prouty V. Ruggles, 16 Pet. 336; 10 L. Ed. 985. .. . 145, 198, 377, 456, 468, 
 
 473, 528, 577, 612, 872 
 
 Providence v. Goodyear, 76 U. S. 805; 19 L. Ed. 828 777, 821 
 
 Purcell V. Uliner, 4 Wall. 519; 18 L. Ed. 437 790 
 
 Purifier Co. v. Christian, 3 B. & A. 42; Fed. Cas. 307 541 
 
 Raffity V. King, 6 L. J. 93 798 
 
 Railroad v. Dubois, 79 U. S. 47; 20 L. Ed. 265 224, 390, 483, 795 
 
 Railroad, Ex parte, 95 U. S. 221; 24 L. Ed. 355 21 
 
 Railroad v. Fraloff, 100 U. S. 24; 25 L. Ed. 531 131 
 
 Railroad v. Huson, 95 U. S. 465; 24 L. Ed. 527 920 
 
 Railroad v. Ketchura, 101 U. S. 289; 25 L. Ed. 932 121 
 
 Railroad v. National, 102 U. S. 14; 26 L. Ed. 61 532, 893 
 
 Railroad v. Soutter, 2 Wall. 510; 17 L. Ed. 900 304 
 
 Raihoad v. Stirapson, 14 Pet. 448; 10 L. Ed. 535 317, 560, 629, 638, 
 
 795, 811 
 
 Railroad v. Swasey, 23 WaU. 405; 23 L. Ed. 136 116 
 
 Railroad v. Trimble, 77 U. S. 367; 19 L. Ed. 949 173, App. 806 
 
 Railroad v. Turrill, 94 U. S. 695; 24 L. Ed. 238 290, 295, 298, 827, 
 
 829 837 
 
 Railroad v. TurriU, 101 U. S. 836; 25 L. Ed. 1009 '835 
 
 Railroad v. Turrill, 110 U. S. 301; 28 L. Ed. 154; 4 S. Ct. 5 282, 835 
 
 Raihoad v. United States, 92 U. S. 733; 23 L. Ed. 634 308 
 
 Railway v. Monroe, 147 Fed. 241 ; 77 C. C. A. 383 574 
 
 Railway Register v. North Hudson, 23 Fed. 593 App. 26 
 
 Rainear v. Western, 159 Fed. 431; 86 C. C. A. 411 591, App. 602 
 
 Ralston v. Smith, 9 C. B. N. S. 117 343, 679
 
 Cliv TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Randall v. Baltimore, 109 U. S, 478; 27 L. Ed. 1003; 3 S. Ct. 322. . . 402, 
 
 734 
 Randolph v. AUen, 73 Fed. 23; 19 C. C. A. 353 . 136 
 
 Ransom v. N. Y., 1 Fish. 252; Fed. Cas. 11,573 ,," " 574 
 
 Ransome v. Hyatt, 69 Fed. 148; 16 C. C. A. 185 198, 484, 629 App 629 
 
 Rathbone v. Orr, 5 McLean, 131; Fed. Cas. 11,585. . ' 152 
 
 Read v. Schultze-Berge, 78 Fed. 493 380 
 
 Reckendorfer v. Faber, 92 U. S. 347; 23 L. Ed. 719. . . 46 47 48 595 596 
 597, 599, 601, 603, 607, 608, 609, 617, 629, 656, 657, 674,' 696' 774' 
 872, App. 594, 597, 603 > , , , 
 
 Red Jacket v. Davis, 82 Fed. 432; 27 C. C. A. 204 476 
 
 Reece v. Globe, 61 Fed. 958; 10 C. C. A. 194. . . 194, 207, 208, 212, 222 224 
 226, 228, 230, 245, 375, 378, 380, 453, 459, 497, 937 
 
 Reed v. Chase, 25 Fed. 94 212, 234 
 
 Reed v. Cutter, 1 Story, 590; Fed. Cas. 11,645 10, 71, 89, 318, '344 
 
 368, 391, 811, 860, App. 861 
 
 Reed v. Lawrence, 29 Fed. 915 298 435 
 
 Reed V. Stockmeyer, 74 Fed. 186; 20 C. C. A. 381. ' 20 
 
 Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109 473 532 887 
 
 Rees V. Gould, 82 U. S. 187; 21 L. Ed. 39. . . . 145, 201, 202, 374,'377,'459, 
 
 468, 473, 499, 608, 609, 612, 674, 872, App. 608 
 
 Reeves v. Bridge Co. 5 Fish. 456; Fed. Cas. 11,660 860, 867 
 
 Regan v. Pacific, 49 Fed. 68; 1 C. C. A. 169 163 926 
 
 Regent v. Penn. 121 Fed. 80; 57 C. C. A. 334 614, App.' 384 
 
 Regina v. Otto, 114 Fed. 505 App. 841 
 
 Registering Co. v. Sampson, L. R. 19 Eq. 462 365 746 
 
 Rein v. Clayton, 37 Fed. 354 '532 
 
 Renard v. Levenstein, 2 Ham. & M. 628 165 
 
 Renwick v. Pond, 10 Blatch. 39; Fed. Cas. 11,702 ' 476, 477 
 
 Rhodes v. Lincoln, 64 Fed. 218 App. 68 
 
 Rice V. Wheatley, 9 Dana, 272 140 
 
 Rich V. Baldwin, 133 Fed. 920; 66 C. C. A. 464 .'.'.'.'.' 198 
 
 Rich V. Lippincott, 2 Fish. 1; Fed. Cas. 11,758 10 152 
 
 Richards v. Chase, 158 U. S. 299; 39 L. Ed. 991; 15 S. Ct. 831 . . 49 '1I6 
 
 323, 325, 326, 389, 595, 597, 654, 707, 709, App. 325, 652, 653 
 
 Richards v. Chase, 159 U. S. 477; 40 L. Ed. 225; 16 S. Ct. 53. . . . 207, 692 
 
 Richards v. Todd, 127 Mass. 167 836 
 
 Richards v. Michigan, 186 U. S. 479; 46 L. Ed. 1259; 22 S. Ct. 942. 325 
 Richards v. Michigan, 179 U. S. 686; 45 L. Ed. 386; 21 S. Ct. 918. .. . 325 
 
 Richards v. Michigan, 102 Fed. 508; 42 C. C. A. 484 325 
 
 Richardson v. Noyes, 2 B. & A. 398; Fed. Cas. 11,792 476, 477 
 
 Richert v. Felps, 6 Wall. 160; 18 L. Ed. 849 308 
 
 Richmond v. Atwood, 48 Fed. 910; 1 C. C. A. 144 117, 130 
 
 Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. .. . 116, 118, 120, 302, 
 
 539, 544, 893 
 Richter v. Union, 115 U. S. 55; 29 L. Ed. 345; 5 S. Ct. 1162. . . . App. 371 
 
 Ricker v. Powell, 100 U. S. 104; 25 L. Ed. 527 790, 805 
 
 Riddell v. Mandevill, 5 Cranch. 322; 3 L. Ed. 321 720 
 
 Ries V. Barth, 136 Fed. 850; 69 C. C. A. 528 673, App. 497 
 
 Ripley V. Elson, 49 Fed. 927 332, 635 
 
 Risdon v. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 S. Ct. 7^5. . . 326, 426, 
 
 682, 686, 688, 709, 817, 819, 823 
 
 Risdon v. Trent, 92 Fed. 375 197, App. 477 
 
 Ritter v. Ulman, 78 Fed. 222; 24 C. C. A. 71 543, 544 
 
 Robbins v. Chicago, 4 Wall. 657; 18 L. Ed. 427 894, App. 386
 
 TABLE OF CASES CITED clv 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Robbins V. Dueber. 71 Fed. 186 V ' ' itl 
 
 Robbins V. Illinois, 78 Fed. 124 ^. App. 27/ 
 
 Roberts v. Cooper, 20 How. 467; 15 L. Ed. 969 App. 128 
 
 Roberts v. Harndek, 2 Cliff. 500; Fed. Cas. 11,903. . . . 374, 459, 473, 599 
 
 Roberts v. Nail, 53 Fed. 916 195, 432 
 
 Roberts V. Northern, 158 U. S. 1; 39 L. Ed. 873; 15 S. Ct. 756. . . 894 
 Roberts .. Ryer, 91 U. S. 150; 23 L. Ed. 267 188, 215, 379, 380, 427, 
 
 486 598, 601, 617, 651, 654, 655, 656, 670, 671, 672, 676, 679, 818, 
 
 919, App. 188, 598, 599, 616 
 Robertson TBlake, 94 U. S. 728; 24 L. Ed. 245... 297, 298 377, 608 
 
 670, 8o0, o4/ 
 Robertson v. Perkins, 129 U. S. 233; 32 L. Ed. 686; 9 S. Ct. 279. .. . 407 
 
 Robinson v. Bland, 2 Burrows, 1086 of7 
 
 Robinson v. Satterlee, Fed. Cas. 11,967 71b 
 
 Robinson v. Sutter, 8 Fed. 828 219 
 
 Robinson v. Sutter, 11 Fed. 798 Jl« 
 
 Rodwell V. Housman, 58 Fed. 870 W -A" ' ;o Ht 
 
 Roemer v. Bernheim, 132 U. S. 103; 33 L. Ed. 27/; 10 S. Ct. 12. . . . . 345 
 Roemer v. Peddie, 132 U. S. 313; 33 L. Ed. 382; 10 S. Ct. 98. . 54, 20/ 
 
 380, 871, 876, App. 20/ 
 Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. . . 82, 321, 396, 407, 795, 807 
 
 Roemer v. Simon, 91 U. S. 149; 23 L. Ed. 267 139, 890 
 
 Rogers v. Cox, 96 Ind. 157 -^ • • • • • 7bo 
 
 Rogers v. Fitch, 81 Fed. 959; 27 C. C. A. 23 672, App. 6o 
 
 Rogers v. Mergenthaler, 64 Fed. 799; 12 C. C. A. 422 60 
 
 Rogers v. Mergenthaler, 58 Fed. 693 570 
 
 Rogers v. U. S. 141 U. S. 548; 35 L. Ed. 853; 12 S. Ct. 91 131 
 
 Roosevelt v. Western Electric, 20 Fed. 724 75b 
 
 Root V. Ball, 4 McLean, 177; Fed. Cas. 12,035 ^ .^ . . . .... 503 
 
 Root V. Railway, 105 U. S. 189; 26 L. Ed. 975. .. . 279, 282, 285, 290, 292, 
 
 298, 299, 336, 371, 562, 568, 717, 718, 719, 730, 745, 764, 778, 807, 
 
 835, 837, 839, 847, App. 371, 717, 845 
 
 Root V. Sontag, 47 Fed. 309 o • X ' ' ; A;. 
 
 Rooty. Third Avenue, 146 U. S. 210; 36 L. Ed. 946; 13 S. Ct. 100 
 
 18, 412, 8oo 
 
 Rose V. Clark, 1 Yew. & C. Ch. 534 / • • I?? 
 
 Rose V. Hirsh, 94 Fed. 177; 36 C. C. A. 132 App. 841 
 
 Rose V. Woodruff, 4 Johns. Ch. 547 ^- -^ • -^^^ ^^5 
 
 Rosenthal v. Walker, 111 U. S. 185; 28 L. Ed. 395; 4 S. Ct. 382. . . 578 
 
 Ross V. Dowden, 157 Fed. 681; 85 C. C. A. 449 • . App. 6o2 
 
 Ross V. Ft. Wayne, 63 Fed. 466; 11 C. C. A. 288 21, ooO, 717 
 
 Ross V. Fuller, 105 Fed. 510 764 
 
 Ross V. Montana, 45 Fed. 424 V n^l 
 
 Ross V. Railway, Fed. Cas. 12,181 ApP- 722 
 
 Ross-Moyer v. Randall, 104 Fed. 355; 43 C. C. A. 578 211, o07 
 
 Rousseau v. Brown, 21 App. D. C. 73 143, App. 421 
 
 Rowan v. Ide, 107 Fed. 161; 46 C. C. A. 214 542 
 
 Rowbotham v. Steele, 71 Fed. 758 797 
 
 Rowe V. Blodgett, 112 Fed. 61; 50 C. C. A. 120 333, 335 
 
 Rowe V. Blodgett, 10-3 Fed. 873 <;• ??o^ 
 
 Rowell V. Lindsav, 113 U. S. 97; 28 L. Ed. 906; 5 S. Ct. 507. .. . 12, 198, 
 
 200, 202, 377, 379, 473, 577, 605, App. 456 
 
 Royal V. Art, 121 Fed. 128 335 
 
 Royer v. Coupe, 146 U. S. 524; 36 L. Ed. 1073; 13 S. Ct. 166. . . 54, 207, 
 
 208, 871, App. 194, 207
 
 Clvi TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Rover v. Coupe, 29 Fed. 358 287 
 
 Rover v. Roth, 132 U. S. 201; 33 L. Ed. 322; 10 S. Ct. 58. . .49, 595, 596, 
 
 603, 667, 671, 675 
 Rover v. Schultz, 135 U. S. 319; 34 L. Ed. 214; 10 S. Ct. 833. . . 404, 497, 
 
 App. 131, 404 
 
 Royer v. Schultz, 28 Fed. 850 456 
 
 Rubber v. Ewing, 9 Wall. 805; 19 L. Ed. 829 890 
 
 Rubber t;. Goodyear, 76 U. S. 788; 19 L. Ed. 566. . . .223, 288, 291, 310, 
 
 317, 532, 751, 777, 807, 821, 827, 828, 829, 830, 833, 837, 838, 841, 
 
 844, App. 845 
 
 Rubber v. Welling, 97 U. S. 7; 24 L. Ed. 942 46 
 
 Rubber Tip v. Howard, 87 U. S. 498; 22 L. Ed. 410. .. . 43, 261, 426, 629, 
 
 651, 656, 657, 661, 667, 696 
 
 Rubber Tire v. Milwaukee, 154 Fed. 358; 83 C. C. A. 336 574, 744 
 
 Rude V. Westcott, 130 U. S. 152; 32 L. Ed. 888; 9 S. Ct. 463 288, 
 
 292, 294, 842, App.- 292 
 
 Rumford v. Baking Co., 134 Fed. 385; 67 C. C. A. 367 648 
 
 Rumford v. Hygienic, 159 Fed. 436; 86 C. C. A. 416 476 
 
 Rumford v. Hygienic, 148 Fed. 862 476 
 
 Rumford v. Lauer, 10 Blatch. 122; Fed. Cas. 12,135 200 
 
 Rumsey v. Buck, 20 Fed. 697 451 
 
 Runnion v. Ramsey, 93 C. C. A. 410 App. 144 
 
 Rupp V. Elliott, 131 Fed. 730; 65 C. C. A. 544 510, 574, 744, 745, 
 
 App. 476, 477 
 
 Russell V. Cowley, 1 Web. 470 222, 903 
 
 RusseU V. Dodge, 93 U. S. 460; 23 L. Ed. 973 871, 873, App. 871 
 
 Russell V. Farley, 105 U. S. 433; 26 L. Ed. 1060 273, App. 579 
 
 Russell V. Kern, 69 Fed. 94; 16 C. C. A. 154 HI 
 
 Russell V. Place, 94 U. S. 606; 24 L. Ed. 214 31, 383, 561, 893, 894, 
 
 App. 31 
 
 Russell V. Mallory, 10 Blatch. 140; Fed. Cas. 12,166 857 
 
 Russell V. U. S. 182 U. S. 516; 45 L. Ed. 1210; 21 S. Ct. 899. .. . App. 498 
 
 Ryan v. Goodwin, 3 Sumn. 514; Fed. Cas. 12,186 223, 228, 668 
 
 Ryan v. Hard, 145 U. S. 241; 36 L. Ed. 691; 12 S. Ct. 919 671 
 
 Ryder v. Sclilichter, 126 Fed. 487; 61 C. C. A. 469 App. 189 
 
 Ryerson v. Eldred, 18 Mich. 12 539 
 
 Sadler v. Hoover, 48 U. S. 646; 12 L. Ed. 644 113 
 
 Safety Oiler v. Scovill, 110 Fed. 203 App. 207 
 
 St. Germain v. Bruaswick, 135 U. S. 227; 34 L. Ed. 122; 10 S. Ct. 822 
 
 .... 617, 651, 676 
 
 St. Louis V. American, 156 Fed. 574; 84 C. C. A. 340 603, App. 207 
 
 St. Louis V. Knapp, 104 U. S. 658; 26 L. Ed. 883 807 
 
 St. Louis V. Quincy, Fed. Cas. 12,240 App. 691 
 
 St. Louis V. Southern, 108 U. S. 24; 27 L. Ed. 638; 2 S. Ct. 6 116 
 
 St. Paul V. Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. . . .... 65, 
 
 108, 762, 809 
 
 St. Louis V, Terre Haute, 145 U. S. 393; 36 L. Ed. 738; 12 S. Ct. 953 
 
 App. 289 
 
 Sage V. Wyncoop, 104 U. S. 319; 26 L. Ed. 740 ; ' ' " i^^ 
 
 Saling V. Ger. Sav. Bk. 8 N. Y. 469 ^PP- 1^1 
 
 Saltmarsh v. Tuthill, 12 How. 387; 13 L. Ed. 385 537 
 
 Sand Creek v. Robbins, 41 Ind. 79 '}.' 
 
 Sanders v. Aston, 3 B. & A. 881 Wr.W aLo 
 
 Sanders v. Hancock, 128 Fed. 424; 63 C. C. A. 166. 603, b08 
 
 Sanders v. Logan, 2 Fish. 167; Fed. Cas. 12,295 »^^
 
 TABLE OF CASES CITED clvil 
 
 I References are to sections. " App." refers to Appendix ] 
 
 Sanford, Petitioner, 160 U. S. 247; 40 L. Ed. 414; 16 S. Ct. 291 . . 128, App. 893 
 
 Sanitas v. Voigt, 139 Fed. 551; 71 C. C. A. 535 646 
 
 Santa Maria, The, 10 Wheat. 431; 6 L. Ed. 359 140 
 
 Sapphire v. Napoleon, 85 U. S. 51; 21 L. Ed. 814 277 
 
 Sargent v. Hall, 114 U. S. 63; 29 L. Ed. 67; 5 S. Ct. 1021 .... 54, 202, 207, 
 
 211, 215, 380, 587, 889, App. 205 
 
 Sargent v. Larned, 2 Curt. 340; Fed. Cas. 12,364 600, App. 701 
 
 Sargent v. Seagrave, 2 Curt. 553; Fed. Cas. 12,365 532, 554, 857 
 
 Savary v. Lauth, Fed. Cas. 12,389 App. 727 
 
 Sarven v. Hall, 21 Fed. Cas. 512 448 
 
 Sawin v. GuUd, Fed. Cas. 12,391 App. 157 
 
 Sawyer v. Bixby, 1 O. G. 165; Fed. Cas. 12,398 775 
 
 Sawyer v. Carpenter, 143 Fed. 976; 75 C. C. A. 162 421 
 
 Sawyer v. Carpenter, 133 Fed. 238 421, App. 421 
 
 Sawyer v. Massey, 25 Fed. 144 587 
 
 Sawyer v. Turner, 55 Fed. 979 548, App. 559 
 
 Sayre v. Scott, 55 Fed. 971 ; 5 C. C. A. 366 219, 298 
 
 Saxby v. Gloucester, 7 Q. B. Div. 305 675 
 
 Saxe V. Hammond, 1 B. & A. 629; Fed. Cas. 12,411 477 
 
 Schenck v. Singer, 77 Fed. 841; 23 C. C. A. 494. . 633, 648, 673, App. 325 
 
 Schnectady v. Holbrook, 101 N. Y. 45 764 
 
 Schillinger v. Guenther, 17 Blatch. 66; Fed. Cas. 12,458 344, App. 344 
 
 SchiUinger v. United States, 155 U. S. 163; 39 L. Ed. 108; 15 S. Ct. 85 
 
 .... 498, 715, App. 498 
 
 Schillinger's Case, 24 Ct. CI. 278 498 
 
 Schlender v Corey, 30 Minn. 501 539 
 
 Schlict V. Sherwood, 36 Fed. 590 596 
 
 Schneider v. Lovell, 10 Fed. 666 904, 915 
 
 Schneider v. Missouri, 36 Fed. 582 477 
 
 Schneider v. Pountney, 21 Fed. 399 477 
 
 Schollenberger, Ex parte, 96 U. S. 369; 24 L. Ed. 853 723 
 
 Schrader v. Bank, 133 U. S. 67; 33 L. Ed. 564; 10 S. Ct. 238. . . App. 386 
 Schreiber ?;. Grimm, 72 Fed. 671; 19 C. C. A. 67. .380, 437, 599, 646, 656, 672 
 
 Schroeder v. Brammer, 98 Fed. 880 374, 378, 459, 468, 622 
 
 Schroeder v. Lahrman, 26 Minn. 87 386 
 
 Schumacher v. Cornell, 96 U. S. 549; 24 L. Ed. 676 456, 473, 605 
 
 Schwarzwalder v. New York, 66 Fed. 152; 13 C. C. A. 380 344 
 
 Schutz V. Jordan, 141 U. S. 213; 35 L. Ed. 705; 11 S. Ct. 906 578 
 
 Scott V. Xeeley, 140 U. S. 106; 35 L. Ed. 358; 11 S. Ct. 712 285 
 
 Scruggs V. Memphis, 108 U. S. 368; 27 L. Ed. 756; 2 S. Ct. 780 778 
 
 Seabury v. Johnson, 76 Fed. 456 203 
 
 Seal V. Bookkeeper, 130 Fed. 449; 64 C. C. A. 651 App. 762 
 
 Seaman, /n re, 4 0. G. 691 337 
 
 Seattle v. McXamara, 81 Fed. 863; 26 C. C. A. 652 285, 293 
 
 Seed V. Higgins, 8 El. & Bl. 767 341, 679 
 
 Seibert v. Michigan, 34 Fed. 33 579 
 
 Seitz V. Brewers, 141 U. S. 510; 35 L. Ed. 837; 12 S. Ct. 46 756 
 
 Sessions v. Gould, 49 Fed. 855 485, 579 
 
 Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 799. .. . 287, 
 290, 295, 497, 503, 532, 612, 672, 777, 846, App. 204, 845 
 
 Sewall V. Jones, 91 U. S. 171; 23 L. Ed. 275 95, 215, 223, 230, 375, 
 
 453, 454, 470, 516, 616, 671, App. 682 
 
 Sewing Machine v. Frame, 24 Fed. 596 4.54 
 
 Seymour v. McCormick, 16 How. 480; 14 L. Ed. 1024, . . . 280, 285, 292, 
 
 298, 843, 844, 845, 846, 857, App. 292
 
 Clviii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Seymour v. McCormick, 60 U. S. 96; 15 L. Ed. 557 340, 342 
 
 Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. . . . 26, 81, 85, 98, 105, 
 
 106, 187, 223, 229, 260, 261, 320, 374, 377, 409, 411, 432, 440, 468, 473, 
 
 488 560, 608, 609, 612, 629, 634, 647, 674, 745, 746, 779, 795, 804, 860, 
 
 871, 883, 888, 937, App. 212, 608, 635, 871, 880 
 
 Sharon v. Sharon, 67 Cal. 195 116 
 
 Sharp V. Riessner, 119 U. S. 631; 30 L. Ed. 507; 7 S. Ct. 417 212 
 
 Sharpies v. Mosley, 75 Fed. 595 App. 759 
 
 Shaw V. Cooper, 7 Pet. 292; 8 L. Ed. 689. .. . 3, 7, 371, 413, 851, 854, 857 
 
 Shaw V. Quincy, 145 U. S. 444; 36 L. Ed. 768; 12 S. Ct. 935 723 . 
 
 Shaw V. Worthington, 77 Fed. 992 App. 672 
 
 Sheffield v. Newman, 77 Fed. 787; 23 C. C. A. 459 ^ 789 
 
 Shelbyville v. Glover, 184 Fed. 234; 106 C. C. A. 376 App. 543 
 
 Shelton v. Darhng, 2 Conn. 435 156 
 
 Shepard v. Adams, 168 U. S. 618; 42 L. Ed. 602; 18 S. Ct. 214 110 
 
 Shepard v. Carrigan, 116 U. S. 593; 29 L. Ed. 723; 6 S. Ct. 493. .. . 48, 
 54, 202, 204, 207, 214, 380, 770, 871, 885, 889, App. 205, 207 
 
 Sherman v. Brick, 93 U. S. 209; 23 L. Ed. 949 308 
 
 Shinkle V. Covington, 83 Ky. 420 539 
 
 Shinkle v. Louisville, 62 Fed. 690 549 
 
 Shoe Co. V. Ferrell, 68 Tex. 638 753 
 
 Shoup V. Henrici, 2 B. & A. 249; Fed. Cas. 12,814 10 
 
 Shrewsbury v. Railroad, 1 Sim. (N. S.) 410 562 
 
 Shubert v. Woodward, 167 Fed. 47; 92 C. C. A. 509 App. 579 
 
 Shute V. Morley, 64 Fed. 368; 12 C. C. A. 356 305 
 
 Sibbald v. United States, 12 Pet. 488; 9 L. Ed. 485 138 
 
 Sickles V. Borden, 4 Blatch. 14; Fed. Cas. 12,833 292 
 
 Sickles V. Evans, 2 Cliff. 203; Fed. Cas. 12,839 880, 888 
 
 Sickles V. Falls, 4 Blatch. 518; Fed. Cas. 18,270 688, 770 
 
 Siddell V. Vickers, 9 Rob. Pat. Cas. 162 App. 845 
 
 Siebert v. Manning, 32 Fed. 625 7i> 
 
 Siemens v. Sellers, 123 U. S. 276; 31 L. Ed. 153; 8 S. Ct. 117. . . . 421, 422, 
 
 424, App. 421 
 
 Siemens-Halske v. Duncan, 142 Fed. 157; 73 C. C. A. 375 385, 767, 
 
 App. 381, 384 
 Silsby V. Foote, 14 How. 218; 14 L. Ed. 394. . . . 246, 343, 612, 734, 795 
 
 Silsby V. Foote, 61 U. S. 378; 15 L. Ed. 953 282, 284, 342, 835 
 
 Simmons v. Standard, 62 Fed. 928 447 
 
 Simonds V. Hathorn, 93 Fed. 958; 36 C. C. A. 24 /92 
 
 Simonds v. Hathorn, 90 Fed. 201 354 
 
 Simpson, Ex parte, Fed. Cas. 12,878 3 
 
 Sinclair v. Backus, 4 Fed. 539 ■■■■ ^^^ 
 
 Singer v. Brill, 54 Fed. 380; 4 C. C. A. 374 459, 603 
 
 Singer v. Cramer, 192 U. S. 265; 48 L. Ed. 437; 24 S. Ct. 291 ... . 198, 207, 
 
 ^ 375, 496, 937, App. 131 
 
 Singer v. Cramer, 109 Fed. 652; 48 C. C. A. 588 54 
 
 Singer v. June, 163 U. S. 169; 41 L. Ed. 118; 16 S. Ct. 1002 929 
 
 Singer v. Schenck, 68 Fed. 191 ftW^lo 
 
 Singer v. Springfield, 34 Fed. 393 477, 542 
 
 Singer v. Wilson, 38 Fed. 586 i^'^ 
 
 Singer v. Wright, 141 U. S. 696; 35 L. Ed. 906; 12 S. Ct. 103 ^^ • 550 
 
 Sipp V. Atwood-Morrison, 142 Fed. 149; 73 C. C. A. 367^. . .... . . 591, 9-9 
 
 Slawson v. Grand, 107 U. S. 649; 27 L. Ed. 576; 2 S. Ct 663 •; 46, 47, 
 216, 313, 323, 325, 440, 593, 616, 619, 647, 656, 657, 662, 666, 667, 
 669, 672, 679, 734, 795, 799
 
 TABLE OF CASES CITED clix 
 
 ( References are to sections. " App." refers to Appendix ] 
 
 Smead v. Fuller, 57 Fed. 626 197 
 
 Smead v. Union, 44 Fed. 614 190 
 
 Smeeth v. Perkins, 125 Fed. 285; 60 C. C. A. 199 459 
 
 Smith V. Au Ores, 150 Fed. 257: 80 C. C. A. 145 841 
 
 Smith V. Elliott, 9 Blatch. 400; Fed. Cas. 13,041 649, 671 
 
 Smith V. Ely, 5 McLean, 76; Fed. Cas. 13,043 689 
 
 Smith V. Goodyear, 93 U. S. 486; 23 L. Ed. 952 3, 47, 71, 76, 212, 427, 
 
 560, 561, 593, 622, 626, 629, 635, 636, 649, 671, 676, 692, 696, 700, 811, 
 
 864, App. 9, 623 
 
 Smith V. Meridan, 92 Fed. 1003 572 
 
 Smith V. Mottley, 150 Fed. 266; 80 C. C. A. 154 841 
 
 Smith V. Nichols, 88 U. S. 112; 22 L. Ed. 566 ... . 49, 261, 343, 344, 380, 
 
 431, 437, 440, 591, 596, 599, 601, 617, 629, 646, 647, 654, 656, 657, 
 
 665, 667, 671, 676, 695, 818. 823, App. 599, 601 
 
 Smith V. Putnam, 45 Fed. 202 377 
 
 Smith V. Ridgley, 103 Fed. 875; 43 C. C. A. 365 213, 385 
 
 Smith V. Sands, 24 Fed. 470 718 
 
 Smith V. Sheley, 12 Wall. 358; 20 L. Ed. 430 766, 927 
 
 Smith V. Sprague, 123 U. S. 249: 31 L. Ed. 141; 8 S. Ct. 122 18, 71, 
 
 412, 413, 414, 4113, 417, 851, 853, 855, 856, 857, App. 10, 856 
 
 Smith V. Stewart, 55 Fed. 481 336 
 
 Smith V. Vulcan, 165 U. S. 518; 41 L. Ed. 810; 17 S. Ct. 407. . . . 118, 304, 
 
 891, App. 118, 540, 893 
 
 Smith V. Weeks, 53 Fed. 758; 3 C. C. A. 644 139 
 
 Smith V. Whitman, 148 U. S. 674; 37 L. Ed. 606; 13 S. Ct. 768. .. . 331, 
 
 332, 334, 335, 337, App. 331 
 
 Smith & Davis v. Mellon, 58 Fed. 705; 7 C. C. A. 439 856 
 
 Smyth V. Sheridan, 149 Fed. 208; 79 C. C. A. 166 App. 616 
 
 Snow V. Railway, 121 U. S. 617; 30 L. Ed. 1004; 7 S. Ct. 1343. . 207, 215, 
 
 217, 223, 380, 899 
 
 Snow V. Lake Shore, 18 Fed. 602 456 
 
 Snydam v. Dequidre, Har. Rep. 347 796 
 
 Snyder v. Bunnell, 29 Fed. 47 477, 527 
 
 Societe v. Blount, 51 Fed. 610 545 
 
 Societe v. General, 97 Fed. 604 420 
 
 Societe v. Rehfuss, 75 Fed. 657 180, 374 
 
 Society v. Watson, 77 Fed. 512; 28 C. C. A. 263 890 
 
 Soehner v. Favorite, 84 Fed. 182; 28 C. C. A. 317. .. . 223, 437, 599, 937 
 Solomons v. United States, 137 U. S. 342; 34 L. Ed. 667; 11 S. Ct. 88 
 
 .... 151, 366, 429, 751, 756, 759, App. 160, 366 
 
 Somerby v. Buntin, 118 Mass. 279 168 
 
 Southard v. Russell, 16 How. 547; 14 L. Ed. 545 128, 891 
 
 Southern v. Earl, 82 Fed. 690; 27 CCA. 185 543, 544, App. 544 
 
 Southern Pacific v. United States, 168 U. S. 1; 42 L. Ed. 355; 18 S. Ct. 18 
 
 .... 37, 386 
 
 Spader v. Davis, 5 Johns. Ch. 280 157 
 
 Sparhawk v. Cloon, 135 Mass. 263 157 
 
 Sparhawk v. Yerkes, 142 U. S. 1; 35 L. Ed. 915; 12 S. Ct. 104 183 
 
 Speidel V. Henrici, 120 U. S. 377; 30 L. Ed. 718; 7 S. Ct. 610. . . 728, 921 
 
 Speidel v. Henrici, 15 Fed. 753 732 
 
 Spill V. Celluloid, 21 Fed. 631 671 
 
 Spill V. Celluloid, 28 Fed. 870 277 
 
 Spring V. Sewing, 4 B. & A. 427; Fed. Cas. 13,258 271 
 
 Sproull V. Pratt, 97 Fed. 807 App. 385 
 
 Squire, Ex parte, 3 B. & A. 133; Fed. Cas. 13,269 13
 
 Clx TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Stainthorp v. Humiston, 4 Fish. 107; Fed. Cas. 13,281 72 
 
 Standard v. Caster, 113 Fed. 162; 51 C. C. A. 109 376, 485, 615, 658, 
 
 App. 615, 658 
 
 Standard v. Crane, 56 Fed. 718; 6 C. C. A. 100 544, 551, 557, 564, 
 
 567 570 572 
 
 Standard v. Ellis, 159 Mass. 448 .' '755 
 
 Standard v. Leslie, 118 Fed. 557; 55 C. C. A. 323 213, 714 
 
 Standard v. National, 95 Fed. 291 App. 714 
 
 Standard v. Osgood, 58 Fed. 583; 7 C. C. A. 382 618 
 
 Standard v. Peters, 77 Fed. 630; 23 C. C. A. 367 App. 97, 862 
 
 Standard v. Southern, 48 Fed. 109 603 
 
 Standard v. Teague, 15 Fed. 390 375 
 
 Stanford v. Bates, 22 Vt. 546 411 
 
 Stanley v. Board, 121 U. S. 535; 30 L. Ed. 1000; 7 S. Ct. 1234 131 
 
 Stanley v. Hotel, 13 Me. 51 156 
 
 Stanley v. Roberts, 59 Fed. 836; 8 C. C. A. 305 App. 117 
 
 Star V. Crossman, 4 Cliff. 568; Fed. Cas. 13,321 440, 647 
 
 Star V. General, 111 Fed. 398; 49 C. C. A. 409 591, 603, 624, 633, 
 
 673, 674, App. 622 
 
 Stark V. Starr, 94 U. S. 477; 24 L. Ed. 276 37 
 
 State V. Cook, 107 Tenn. 499 920 
 
 State V. Lockwood, 43 Wis. 405 920 
 
 State of Delaware v. Delaware, 47 Fed. 633 746 
 
 State of Iowa v. Carr, 191 Fed. 257; 111 C. C. A. 271 App. 129 
 
 Stead V. Anderson, 4 C. B. 806 508 
 
 Stead V. Course, 8 U. S. 403; 2 L. Ed. 400 800 
 
 Steam Cutter v. Sheldon, 5 Fish. 477; Fed. Cas. 13,331 532, App. 714 
 
 Steam Gauge v. Ham, 28 Fed. 618 554, 555 
 
 Steam Gauge v. Kennedy, 41 Fed. 38. . . App. 344 
 
 Stearnes v. Page, 7 How. 819; 12 L. Ed. 818 729 
 
 Stearns v. Lawrence, 83 Fed. 738 31 
 
 Stearns v. Russell, 85 Fed. 218; 29 C. C. A. 121 ... . 95, 195, 380, 501, 597, 
 
 598, 616, 656, 661, 672, 673, 675, 919, App. 598 
 
 Stearns-Roger v. Brown, 114 Fed. 939; 52 C. C. A. 559 544, 729 
 
 Steers v. Rogers, 62 L. J. Ch. 671 927 
 
 Steiner v. Adrian, 59 Fed. 132; 8 C. C. A. 44 661, 672 
 
 Steinmetz v. Allen, 192 U. S. 543; 48 L. Ed. 555; 24 S. Ct. 416. .. . 143, 348, 
 
 App. 421 
 
 Stelle V. Carroll, 37 U. S. 201; 9 L. Ed. 200 778 
 
 Stephens v. Cady, 14 How. 528; 14 L. Ed. 528 157, 827, 920 
 
 Stephenson v. Brooklyn, 114 U. S. 149; 29 L. Ed. 58; 5 S. Ct. 777. .. . 594, 
 
 596, 609, 617, 662, 667, 669, App. 666 
 
 Stevens v. Cady, 2 Curt. 200; Fed. Cas. 13,395 336 
 
 Stevens v. Gladding, 58 U. S. 447; 15 L. Ed. 155 157, 336, 920 
 
 Stevenson v. McFassell, 90 Fed. 707; 33 C. C. A. 249 612 
 
 Stewart, Ex parte, 4 O. G. 665 3 
 
 Stewart v. Smith, 58 Fed. 580; 7 C. C. A. 380 336 
 
 Stewart v. Solomon, 97 U. S. 361; 24 L. Ed. 1044 138, 891 
 
 Stilwell-Bierce v. Eufaula, 117 Fed. 410; 54 C. C. A. 584.... 195,223, 
 
 598, 603, 608, 919, 937, App. 598 
 
 Stilwell V. Cincinnati, 1 B. & A. 610; Fed. Cas. 13,453 72 
 
 Stimes V. Franklin, 14 Wall. 22; 20 L. Ed. 846 138, 891 
 
 Stimpson V. Railroad, 4 How. 380; 11 L. Ed. 1020 317, 850, 889 
 
 Stimpson v. Railroad, 10 How. 329; 13 L. Ed. 441 145, 468, 473 
 
 Stimpson v. Rogers, 4 Blatch. 333; Fed. Cas. 13,457 926
 
 TABLE OF CASES CITED clxi 
 
 I References are to sections. " App." refers to Appendix 1 
 
 Stimpson v. Stimpson, 104 Fed. 893; 44 C. C. A. 241 929 
 
 Stimpson v. Woodman, 77 U. S. 117; 19 L. Ed. 866. .. . 261, 596, 629, 653, 
 
 656, 657, 667, 670, 671, 672, 679, 695, 775 
 
 Stirling v. St. Louis, 79 Fed. 80 _3 
 
 Stirrat v. Excelsior, 61 Fed. 980; 10 C. C. A. 216. . . . 12, 195, 204, 213, 214, 
 222, 223, 376, 378, 441, 442, 468, 507, 652, 657, 937, App. 441 
 
 Stitt V. Easton, 22 Fed. 649 10, 372 
 
 Stoddard v. Chambers, 2 How. 318; 11 L. Ed. 282 308 
 
 Stonecutter v. Shortsleeves, 16 Blatch. 381; Fed. Cas. 13,334 756 
 
 Stoner v. Todd, L. R. Ch. Div. 60, 46 L. J. Ch. 33 App. 4, 61 
 
 Storm y. U. S. 94 U. S. 76; 24 L. Ed. 42 App. 137 
 
 Story, Ex parte, 12 Pet. 339 891 
 
 Stott V. Rutherford, 92 U. S. 107; 23 L. Ed. 486 764 
 
 Stout V. Lye, 103 U. S. 66; 26 L. Ed. 428 31, 532, 893 
 
 Stover V. Mast, Fed. 333; 32 C. C. A. 231 250 
 
 Stow V. Chicago, 104 U. S. 547; 26 L. Ed. 816 188, 427, 598, 646, 651, 
 
 670, 671, 672, App. 188 
 
 Strait V. National, 51 Fed. 819 App. 744 
 
 Strang v. Railroad, 101 Fed. 511; 41 C. C. A. 474 App. 722 
 
 Strauss v. Meyer, 22 Fed. 467 277 
 
 Streator v. Wire-Glass, 97 Fed. 950; 38 C. C. A. 573. . . . 630, 634, App. 817 
 
 Streit V. Kaiper, 143 Fed. 981; 75 C. C. A. 167 207 
 
 Strom V. Weir, 83 Fed. 170; 27 C. C. A. 502 325, 696 
 
 Stuart V. Hayden, 72 Fed. 402; 18 C. C. A. 618 App. 129 
 
 Studebaker v. Illinois, 42 Fed. 52 327 
 
 Sturm V. Baker, 150 U. S. 312; 37 L. Ed. 1093; 14 S. Ct. 99 384 
 
 Suffolk V. Hayden, 70 U. S. 315; 18 L. Ed. 76. . . . 9, 285, 287, 292, 293, 
 294, 295, 348, 349, 350, 353, 356, 361, 551, 764, 837, 842, App. 349, 717 
 
 Sugar V. Yaryan, 43 Fed. 140 54 
 
 Sullivan v. Redfield, 1 Paine, 441 ; Fed. Cas. 13,597 574 
 
 Supply Co. V. McCready, 4 B. & A. 588; Fed. Cas. 295 476 
 
 Sutter V. Robinson, 119 U. S. 530; 30 L. Ed. 492; 7 S. Ct. 376 54, 
 
 204, 207, 244, 587, 770, 885, 889, App. 207 
 
 Suydam v. Williamson, 20 How. 427; 15 L. Ed. 978 App. 137 
 
 Swain v. Holyoke, 109 Fed. 154; 48 C. C. A. 265 412 
 
 Swain v. Ladd, 102 U. S. 408; 26 L. Ed. 184 t . . 870, 871, 885 
 
 Swain v. Seemens, 9 Wall. 254; 19 L. Ed. 554 753 
 
 Swan V. Frank, 148 U. S. 603; 37 L. Ed. 577; 13 S. Ct. 691 327 
 
 Swift V. United States, 196 U. S. 375; 49 L. Ed. 518; 25 S. Ct. 276. . . 163 
 
 Syone v. Marsh, 6 B. & C. 551 926 
 
 Taber v. Meriden, 106 Fed. 83 App. 376 
 
 Tabor v. Hoffman, 118 N. Y. 30 898 
 
 Tabor v. Photograph, 87 Fed. 871 198 
 
 Taft V. Stephens, 38 Fed. 28 App. 777 
 
 Tannage v. Adams, 77 Fed. 191 561 
 
 Tannage v. Zahn, 70 Fed. 1003; 17 C. C. A. 552 673 
 
 Tatham v. LeRoy, 2 Blatch. 474; Fed. Cas. 13,760 459 
 
 Tatham v. Lowber, 4 Blatch. 80; Fed. Cas. 13,765 797, 827 
 
 Tatum V. Gregory, 41 Fed. 142 380 
 
 Taylor v. Archer, 8 Blatch. 315; Fed. Cas. 13,778 341, 343 
 
 Taylor v. Sawyer, 75 Fed. 301; 22 C. C. A. 203 459, 558, 611, 612, 
 
 729 
 
 Teal V. Walker, 111 U. S. 242; 28 L. Ed. 415; 4 S. Ct. 420 778 
 
 Teese v. Huntington, 23 How. 2; 16 L. Ed. 479 789, 795 
 
 Telegraph v. Himmer, 19 Fed. 322 555, 797
 
 Clxii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Telephone Cases, 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778 60 77, 
 
 641, 686, 688, 770, 782, 817, 819, 860, 865, 917 
 
 Temple v. Goss, 58 Fed. 196; 7 C. C. A. 174 503, 504, 672, App. 817 
 
 Temple v. Goss, 30 Fed. 440 937 
 
 Terhune v. Phillips, 99 U. S. 592; 25 L. Ed. 293 47, 593,' 667,' 696^ 707, 
 
 708, 710 
 Terry v. Davy, 107 Fed. 50; 46 C. C. A. 141 . 327 
 
 Terry v. Sharon, 131 U. S. 40; 33 L. Ed. 94; 9 S. Ct. 705. .. . 116 
 
 Tetley v. Easton, 2 C. B. (N. S.) 70 679 
 
 Texas v. Marshall, 136 U. S. 405; 34 L. Ed. 385; 10 S. Ct. 84-6. . App. 722 
 Thatcher v. Burtis, 121 U. S. 286; 30 L. Ed. 942; 7 S. Ct. 1034. ... 49, 86, 
 
 525, 603, 608, 609, 636, 654 
 
 Thayer v. Hart, 20 Fed. 693 . . 65 80 
 
 Thibodeau v. Hildreth, 124 Fed. 892; 60 C. C. A. 78 160 365 
 
 Thomas v. Rocker, 77 Fed. 420; 23 C. C. A. 211 207, 352, App. 201, 
 
 209 
 
 Thomas, The Joseph B., 158 Fed. 559 App. 273 
 
 Thompson v. Boisselier, 114 U. S. 1; 29 L. Ed. 76; 5 S. Ct. 1042. . . . 322, 
 592, 596, 608, 612, 614, 617, 636, 646, 654, 655, 662, 664, 667, 671, 672 
 
 Thompson v. Nelson, 71 Fed. 339; 18 C. C. A. 137 544 
 
 Thompson v. Second Ave. 93 Fed. 824; 35 C. C. A. 620 . . . 459 
 
 Thompson v. Railroad, 6 Wall. 134; 18 L. Ed. 765 720 
 
 Thomson v. Bank, 53 Fed. 250; 3 C. C. A. 518. . . . 374, 608, 609, 612, 624, 
 
 631, 655, 674, App. 608 
 Thomson v. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. .. . 290, 
 
 337, 717, 837, 839 
 
 Thomson-Houston v. Capitol, 56 Fed. 849 166, 179 
 
 Thomson-Houston v. Elmira, 71 Fed. 396; 18 C. C. A. 145 273, '348, 
 
 349, 350, 352, 354, 611, App. 277, 354 
 
 Thomson-Houston v. Hoosick, 82 Fed. 461; 27 C. C. A. 419 351, 360, 
 
 App. 358 
 
 Thomson-Houston v. Jeffrey, 101 Fed. 121; 41 C. C. A. 247 351 
 
 Thomson-Houston v. Kelsey, 75 Fed. 1005; 22 C. C. A. 1 475, 476, 
 
 477 559 
 
 Thomson-Houston v. Kelsey, 72 Fed. 1016 477, 527, App! 477 
 
 Thomson-Houston v. McLean, 153 Fed. 883; 82 C. C. A. 629 App. 421 
 
 Thomson-Houston v. Nassau, 110 Fed. 646 190 
 
 Thomson-Houston v. National, 65 Fed. 427; 12 C. C. A. 671. . . . 188, 427 
 Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. A. 107. . . . 349, 351, 353, 
 
 476, 477, 506, 559, App. 354, 544, 577 
 
 Thomson-Houston v. Ohio, 130 Fed. 549 506 
 
 Thomson-Houston v. Ohio, 78 Fed. 139 477 
 
 Thomson-Houston v. Rahway, 95 Fed. 660 App. 672 
 
 Thomson-Houston v. Western, 70 Fed. 69; 16 C. C. A. 642 531 
 
 Thomson-Houston v. Western, 65 Fed. 615 698 
 
 Thomson-Houston v. Winchester, 71 Fed. 192 3, 561 
 
 Thorn v. Washburn, 159 U. S. 423; 40 L. Ed. 205; 16 S. Ct. 94 760 
 
 Tiemann v. Kraatz, 85 Fed. 437; 29 C. C. A. 257 437 
 
 Tift, In re, 11 Fed. 463 577 
 
 Tilghman v. Proctor, 102 U. S. 707; 26 L. Ed. 279 .. . 93, 107, 197, 222, 
 
 223, 230, 245, 375, 497, 518, 605, 639, 640, 686, 688, 768, 770, 815, 817, 
 
 819, 914 
 Tilghman v. Proctor, 125 U. S. 136; 31 L. Ed. 664; 8 S. Ct. 894 . . 129, 153, 
 
 285, 286, 288, 290, 544, 829, 833, 836, 837, 844, 847, App. 129, 299, 
 
 817,845
 
 TABLE OF CASES CITED cbdll 
 
 [References are to sections. " App." refers to Appendix] 
 
 425 
 
 Tillinghast V. Champlain, 4 R- 1-173^ • ^^r '^^^l ggV, 384 
 
 Time Telegraph v. ^Va^ey 19 Fed 322 *oi, ^i" ' ^^^ 
 
 Titley v. Easton, 2 C. B. (JN . bj /U g20 
 
 Tod V. Wick, 36 Ohio, 370 924 
 
 Toledo V. Penn. 54 Fed. 730 • ;^ •■•••■>;•••;; Xoo 223 
 
 Tompkins .. Gage, 5 Blatch^268; Fed Gas. 14,088^. . ^^ • • • -^^ 
 
 Tompkins v. New York, 159 Fed. 133; SQ C. L. A. 6Z6 ^PP^ ^^^ 
 
 Tondeur v. Stewart, 28 red. 5bi. . . . • • • ■ • • • • • • • • • -jj- 'A: Wc,k 04 107 
 
 872', 873, App. 91. 622 673 -.g^ 
 
 Toppan V. Tiffany, 39 Fed. 420 .^^ -^ -^^ -^^ • • ■ • - - ^ - - • ; ^^^ 
 
 Torrent ?;. Rodgers, 112 U. b. bo J, /» i^- ^2,- ^^-t- 130 
 
 Tom-niquest v. Perkins, 57 U. S. 82; 14 L. Ed. 854 ^^^ 
 
 Townsend t;. Masterson 15 N Y. 58/ • - ^^^ g^^ 
 
 Travers v. Cordage, 64 led. 7/i ^^g 477 
 
 Traverse v. Beyer, 26 Fed. 450. • • ^- - „• • • • • • • • „ / / 833 
 
 Tremaine v. Hitchcock, 90 U S. 518; 23 L. Ed. 97 
 
 Trent .. Risden, 102 Fed. 635; 42 C. C. A. 529 ^^^ 
 
 Tripp j;. Vincent, ^ Barb^^h ^13 . . • ^^ • • • • • • • • • • • • - ^70, 271, 366, 
 
 Troy V. Cornmg, 14 How. 19d, 14 i.. £.a. 000. . . , ^^.^^ ^^^^ ^^2 
 
 Troy .. Corning, 7 Blatch. 16; Fed Qis. 14,197 • • • • • • • • • • -^ - fj^ 
 
 Trotman v. Wood, 16 C. B y^-^-\ '^'^\ ' V/r: ' • 571 
 
 Truly V. Wanzer, 5 How. 141; 12 L. Ed. 140 ^^^ 
 
 Tubular v. O'Brien 93 Fed. 200 . . ••;•••• ,2, 3 .* .' . . 343, 344 
 
 Tuck V. BramhiU, 6 Blatch ^o; Fed ^^s 14 213. . . . ..^^ • • '^^^ 
 
 Tucker .. Spalding, 80 U. S. ^^^l ^^^%f^,^^^^^^^^^ ^ 
 
 Turner v. Cameron's, 5 Exch. 932 , AS9 
 
 Turner v. Winter, 1 Web. 77^ 156 
 
 Turnpike v. Hay, 7 Mass. 102^. .• ■■■■■ ■■•■ • • • • • - ; ; ; ' 497 506 
 
 Turrell v. Spaeth, 3 B. & A. 4o8; Fed. Cas. 14^69 3^^ 
 
 Turrill V. Railroad, 68 U. S 491; 17 L. Ed. 668 ^^^ PP ^93 
 
 Tuttle V. Claflin, 76 Fed. 227; 22 C. C. A. 138. .^ 299 
 
 Tuttle V. Matthews, 28 Fed. 98^ . ._ . • -^^ • ■• • • p p* V ' \.q App. 207 
 
 Twentieth Century ^vTaplm 181 Fed. 96; 104 C. C. A. 15b. . . PP ^^. 
 
 Tyler .. Boston, 74 U. S. 327; 19 L. Ed. 93 » . > 34^ 
 
 Tyler v. Gallowav, 12 Fed. ob7 48q 
 
 Tyler v. Galloway, 13 Fed. 477^ . ._^ • ■■_ ; • 795 
 
 Tyler v. Tuel, 6 Cranch, 324; 3 L- Ed. ^3/^. .^^ ..^^; • -^ • • -^^^ g^^ 70^ 
 Underwood v. Gerber, 149 U. S. 224, 37 l.. n^a.^^i^u,^^^^ ^^^^ ^^^^ ^^^^ ^^. 
 
 Underwood w. Hitchcox, 1 Ves. 279 • -{g 334^ 451 
 
 Underwood v. Warren, 21 Fed. 573 . ... - • x " V " Vqq 467, 526 
 
 Union V. Battle Creek, 104 Fed. 337; 43 CO. A. 5bU . ^^^ 
 
 Union V. Binney, 5 Fish. 166; Fed Cas. 14,387^ . . ■ ■ ^. •^. • — • • • ^^^ 
 Union .. Botsford 141 U S. 250; 3o L. Ed. 734 11 ^2^% 0201,- 202, 207, 
 Un.on . Desper, 101 U- «. 332, o ^-^ ^^ Vg%V3 ; 490; 609, 872, App 374 
 
 Union .. Diamond i62 Fed. 148; '89 C a A. 172 App- 376 456 
 
 Union V. Johnson, 61 Fed. 940; 10 C. C. A. 176. . ^. ■ _^-. • i^^". ' 
 Union.. Keith, 139 U. S. 530; 35 L. Ed. 261; 1115^^671 675, 676, 903 
 Union .. Matthieson, 2 Fish. 600; Fed. Cas. 14,399. ...'...•' 261, 377, 433
 
 Clxiv TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Union v. Murphy, 97 U. S. 120; 24 L. Ed. 935. .. . 222 247 322 373 374 
 
 f^n' ^?' S?' ■*^"' ^^^' ^^^' •*^^' ^99, 500, 501, 503, 529, 909, App. 64! 
 4o9, 503, /Ol ' ft- , 
 
 Union V. Ozan, 179 Fed. 710; 103 C. C. A. 584 Add <)on 
 
 Union V. Philadelphia, 75 Fed. 1004 ^^' 5^9 
 
 Union v. Selchow, 112 Fed. 1006 696 ' 697* Add 697 
 
 Union .. U. S. 112 U. S. 624; 28 L. Ed. 828; 5-S. Ct. 475 '. 54, 207,* 375, 
 
 871 SSQ 
 
 Union V. Vandeusen, 90 U.'S. 530; 23^L. Ed. 128 310, 469, 667,'672, 
 
 Union v. Vandeusen, 10 Blatch. 109; Fed. Cas. 14,395 >. " ' 775 
 
 Lnion Mill v. Dangberg, SI Fed. 73 ' 31 
 
 Union Pacific v. U. S. 173 Fed. 737; 97 C. C. A. ' 578*. '. ". '.'.'.'■ App 744 
 Union Paper Bag i^ Waterbui^.^ 39 Fed. 389.... 426, 686, App. 344 817 
 Union btock \ ards v. Western, 59 Fed. 49; 7 C. C. A. 660 ' 753 
 
 U. S. V. Am. Bell Tel. 29 Fed. 17. . ^^^" ' '746 
 
 U. S. V. Bailey, 9 Pet. 257; 9 L. Ed. 234 II3 
 
 U. S. V. Berdan, 156 U. S. 552; 39 L. Ed. 530; 15 S. Ct. 420. . . . 380,' 429, 
 TT a T3 • - Tx 498, 506, App. 498 
 
 U. b. y. Briggs, oHow. 208; 12L. Ed. 119.... 113 
 
 U. S. V. Burns, 79 U. S. 246; 20 L. Ed. 388 429, 498, 714 
 
 U. S. V. Caifornia, 14S U. S. 31; 37 L. Ed. 354; 13 S. Ct. 458. . . App! 893 
 U. S. V. California, 192 U. S. 355; 48 L. Ed. 476; 24 S. Ct. 266. . . . App. 31 
 U. b. V. Dawson, 101 U. S. 569; 25 L. Ed. 791 131 
 
 U. S. V. DeWitt, 9 Wall. 41; 19 L. Ed. 593. . 920 
 
 U. S. V. Duell, 172 U. S. 576; 43 L. Ed. 559; 19 S. Ct. 286. . . . App. 128 
 U. S. V. Ehason, 16 Pet. 291; 10 L. Ed. 968 136 
 
 U. S. V. Griffith, 141 U. S. 212; 35 L. Ed. 719; ii S. Ct. 1005. ....'.■ 123 
 U. S. V. Great Falls, 112 U. S. 645; 28 L. Ed. 846; 5 S. Ct. 306 . . 498, 715 
 U. S. V. Harvey, 196 U. S. 310; 49 L. Ed. 492; 25 S. Ct. 240. .. . 213 897 
 U. b. V. HopeweU, 51 Fed. 798; 2 C. C. A. 510 789 
 
 U. S. V. Hughes, 52 U. S. 552; 13 L. Ed. 551 ... . * * " 26 
 
 U. S. V. Hughes, 71 U. S. 232; 18 L. Ed. 303 96 
 
 U. S. V. Jones, 131 U. S. 1; 33 L. Ed. 90; 9 S. Ct. 669 498 
 
 U. S. V. Jose, 63 Fed. 951 "577 
 
 U. S. V. Lee, 185 U. S. 213; 46 L. Ed. 878; 22 S. Ct". 629.". 923 
 
 U. S. V. McLemore, 45 U. S. 286; 11 L. Ed. 284 553 
 
 U. S. V. Minnesota, 18 How. 241; 15 L. Ed. 347 123 
 
 U. S. V. Minor, 114 U. S. 233; 29 L. Ed. 110; 5 S. 'Ct.*836 ".'."." '."'"" 26 
 U. b. V. Palmer, 128 U. S. 262; 32 L. Ed. 441; 9 S. Ct. 104. .. . 26,' 429, 
 
 TT o T^ , 49S, 715, 847, App. 498 
 
 U. S. V. Peck, 102 U. S. 64; 26 L. Ed. 46 764 
 
 U. S. V. San Jacinto, 125 U. S. 273; 31 L. Ed. 747; 8 S. Ct. 750. 26 
 
 U. S. V. Schurtz, 102 U. S. 378; 26 L. Ed. 167 26 745 
 
 U. S. V. Standard Sanitary Co. 191 Fed. 172 App' 744 
 
 U. S. V. Stone, 2 Wall, 525; 17 L. Ed. 765 96 
 
 U. S. V. Union, 98 U. S. 569; 25 L. Ed. 143 796 
 
 U. S. V. Union, 215 U. S. 50; 54 L. Ed. 87 App 777 
 
 U. S. Condensed v. Smith, 101 X. Y. Supp. 129 App 777 
 
 U. S. Consolidated v. Griffin, 126 Fed. 364; 61 C. C. A. 334. . 574 920
 
 TABLE OF CASES CITED cLxV 
 
 [ References are to sections. " App." refers to Apjjendix ] 
 
 U. S. Credit v. American, 59 Fed. 139; 8 C. C. A. 49 698 
 
 U. S. Fastener v. Bradley, U9 Fed. 222; 79 C. C. A. 180 . .' 574 
 
 U. S. Gramophone v. Seaman, 113 Fed. 745; 51 C. C. A. 419 544 
 
 U. S. Hog V. North, 158 Fed. 818; 86 C. C. A. 78 378, 620 
 
 U. S. Mitis V. Midvale, 135 Fed. 103 717, 777 
 
 U. S. Repair v. Ass>Tian, 183 U. S. 591; 46 L. Ed. 342; 22 S. Ct. 591 
 
 .... App. 207 
 
 U. S. Repair v. AssjTian, 100 Fed. 965; 41 C. C. A. 123 App. 207 
 
 United Nickel v. California, 25 Fed. 475 190, 756, App. 193 
 
 United Nickel t-. Worthington, 13 Fed. 392 481 
 
 Universal v. Comptograph, 146 Fed. 981; 77 C. C. A. 227 App. 727 
 
 Van Camp v. Cruikshanks, 90 Fed. 814; 33 C. C. A. 280 567 
 
 Vance i-. Campbell, 66 U. S. 427; 17 L. Ed. 168. . . 145, 201, 202, 223, 224, 
 228, 322, 340, 377, 389, 390, 456, 469, 473, 483, 598, 604, 612, 634, 
 795, 872, 921, 937 
 
 Vance v. Campbell, 1 Fish. 483; Fed. Cas. 16,837 223, 634 
 
 Van Epps v. United, 143 Fed. 869; 75 C. C. A. 77 App. 691 
 
 Van Ness v. Hvatt, 38 U. S. 294; 10 L. Ed. 292 778 
 
 Van Norden v. Morton, 99 U. S. 378; 25 L. Ed. 453 720 
 
 Vasuini v. Paine, 1 Har. 64 746, 920 
 
 Vavasseur v. Krupp, L. R. 9 Ch. Div. 351 498 
 
 Victor V. American, 145 Fed. 350; 76 C. C. A. 180 App. 812 
 
 Victor V. American, 151 Fed. 601 ; 81 C. C. A. 145 207 
 
 Victor V. The Fair, 123 Fed. 424; 61 C. C. A. 58. . . . 474, 510, 513, 574, 
 
 714, 744, 745, 935 
 Vinton V. Hamilton, 104 U. S. 485; 26 L. Ed. 807. . . . 216, 60S, 617, 654, 
 
 657, 662, 667, 671, 676, 679 
 
 Voigtmann v. Weis, 148 Fed. 848; 78 C. C. A. 538 591, App.^SS 
 
 Von Wittberg v. Carson, 44 Conn. 289 753 
 
 Vose V. Singer, 4 Men, 226 927 
 
 Voss V. Fisher, 113 U. S. 213; 28 L. Ed. 975; 5 S. Ct. 511 473, 605 
 
 Vrooman v. PenhoUow, 179 Fed. 296; 102 C. C. A. 484 App. 207, 378 
 
 Vulcan V. American, 58 Atl. 290 898 
 
 Vulcanite i'. Folsom, 3 Fed. 509 716 
 
 Wade V. Lawder, 165 U. S. 624; 17 S. Ct. 425 724, App. 714 
 
 Wade I'. Metcalf, 129 U. S. 202; 32 L. Ed. 661; 9 S. Ct. 271. . . . 366, 512, 
 
 756, 763 
 
 Wagner v. Wycoff, 151 Fed. 585; 81 C. C. A. 129 App. 376 
 
 Wales V. Waterbury, 101 Fed. 126; 41 C. C. A. 250. .. . 841, ^5, 846, 
 
 App. 838 
 
 Walker v. Brooks, 125 Mass. 241 720 
 
 Walker v. Derxnlle, 12 Wall, 442; 20 L. Ed. 429 720 
 
 Walker v. Powers, 104 U. S. 245; 26 L. Ed. 729 804 
 
 Wallace i-. Holmes, 9 Blatch. 65; Fed. Cas. 17,100 476, 477, 524, 559, 
 
 App. 477 
 
 Walsh V. Colclough, 56 Fed. 778; 6 C. C. A. 114 411 
 
 Walton V. Lavator. 29 L. J. C. P. 275 384 
 
 Walton V. Potter, 1 Web. 585 459, 616 
 
 Wanzer v. Truly, 17 How. 584; 15 L. Ed. 216 311 
 
 Warren i-. Burt, 58 Fed. 101; 7 C. C. A. 105 129, 544, App. 129 
 
 Warren v. Casev, 93 Fed. 963; 36 C. C. A. 29 207 
 
 Warren v. Keep, 155 U. S. 265; 39 L. Ed. 144; 15 S. Ct. 83. . . . 830, 846, 
 
 App. 845 
 
 Warren v. Landauer, 151 Fed. 130 App. 924 
 
 Warren v. Rosenblatt, 80 Fed. 540; 25 C. C. A. 625 629
 
 Clxvi TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Wasatch v. Cresent, 148 U. S. 293; 37 L. Ed. 454; 13 S. Ct. 600. . 396, 803 
 Washburn v. Beat Em All, 143 U. S. 275; 36 L. Ed. 154; 12 S. Ct. 443 
 
 . . .9, 74, 77, 80, 222, 349, 350, 356, 390, 408, 435, 493, 561, 562, 617, 
 
 622, 624, 631, 632, 635, 641, 655, 663, 672, 692, 850, 860, App. 65, 71, 74 
 
 Washburn v. Gould, 3 Story, 122; Fed. Cas. 17,214 59, 71, 
 
 811, 860,' 861 
 
 Washburn v. Southern, 37 Fed. 428 App. 510 
 
 Waterman v. Lockwood, 125 Fed. 497; 60 C. C. A. 333 216 
 
 Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334 
 
 .... 150, 163, 165, 171, 763, 765, 778, 926 
 
 Waterman v. Shipman, 55 Fed. 982; 5 C. C. A. 371 398 
 
 Waterman v. Thomson, 2 Fish. 461; Fed. Cas. 17,260 413 
 
 Watson V. Cincinnati, 132 U. S. 161; 33 L. Ed. 295; 10 S. Ct. 45 54, 
 
 207, 591, 600, 617, 667, 671 
 Watson V. Stevens, 51 Fed. 757; 2 C. C. A. 500. . . 435, 486, 616, 626, 630, 
 
 631, 691 
 
 Wattles, Ex parte, 3 0. G. 291 775 
 
 Wayman v. Southard, 10 Wheat. 20; 6 L. Ed. 4 113 
 
 Weatherhead v. Coupe, 147 U. S. 322; 37 L. Ed. 188; 13 S. Ct. 312. . . 473 
 
 Webber v. Virginia, 103 U. S. 344; 26 L. Ed. 565 920, 921 
 
 Webster v. Carpet Co. 5 0. G. 522; Fed. Cas. 17,337 861 
 
 Webster v. Cooper, 10 How. 54; 13 L. Ed. 54 113 
 
 Webster v. Dunham, 181 Fed. 836; 104 C. C. A. 346 App. 672 
 
 Weir V. Barnett, 3 Exch. Div. 32 481 
 
 Weir V. Bell, 3 Exch. Div. 238 481 
 
 Weir V. Gas Co. 91 Fed. 940 794 
 
 Weir V. Morden, 125 U. S. 98; 31 L. Ed. 645; 8 S. Ct. 869. .. . 221, 222, 
 
 234, 602 
 
 Weir V. Morden, 21 Fed. 243 5 
 
 Weirraan v. Shaw, 157 Fed. 928; 85 C. C. A. 222 775 
 
 Welch V. Mandeville, 1 Wheat. 233; 4 L. Ed. 231 765 
 
 Welling V. Crane, 14 Fed. 571 904, 915 
 
 Wellman v. Midland, 106 Fed. 221 937 
 
 Wells V. Curtis, 66 Fed. 318; 13 C. C. A. 494. . . . 226, 363, 374, 376, 378, 
 
 442, 598, 908, App. 205 
 
 Wells V. Gill, 1 B. & A. 77; Fed. Cas. 17,393 497, 506 
 
 Wells V. Jacques, 5 0. G. 364; Fed. Cas. 17,398 379, 598 
 
 Wells-Fargo v. Oregon, 19 Fed. 20 577 
 
 Welsbach v. Apollo, 96 Fed. 332; 37 C. C. A. 508 17 
 
 Welsbach v. Cosmopolitan, 104 Fed. 83; 43 C. C. A. 418 543, 544, 704 
 
 Werner v. King, 96 U. S. 218; 24 L. Ed. 613 375, App. 207, 208 
 
 Wessel V. United, 139 Fed. 11; 71 C. C. A. 423 196, 817 
 
 West V. Smith, 101 U. S. 263; 25 L. Ed. 809 411, 753 
 
 West V. Rae, 33 Fed. 45 325 
 
 Western v. American, 131 Fed. 75; 65 C. C. A. 313 506 
 
 Western v. Ansonia, 114 U. S. 447; 29 L. Ed. 210; 5 S. Ct. 447. .. . 202, 
 
 244, 671 
 
 Western v. Citizens, 106 Fed. 215 App. 421 
 
 Western v. Home Tel. 85 Fed. 649 App. 91 
 
 Western v. LaRue, 139 U. S. 601; 35 L. Ed. 294; 1 S. Ct. 70. . . 49, 89, 
 
 226, 375, 435, 461, 486, 495, 598, 635, 655, 672, 673, 691, App. 204, 
 
 468, 656 
 
 Western v. North, 135 Fed. 80; 67 C. C. A. 553 608 
 
 Western v. Sperry, 58 Fed. 186; 7 C. C. A. 164. . . 2, 54, 55, 188, 427, 504, 
 
 598, 672, App. 2
 
 TABLE OF CASES CITED clxVll 
 
 [ References are to sections. " App." refers to Appendix 1 
 
 Wpstern v Sperry, 59 Fed. 295; 8 C. C. A. 129 • • • • • V ' ' q-« 
 
 Western v. Williams-Abbott, 108 Fed. 952; 48 C. C. A. 159 App. 3o8 
 
 Western & Wells v. Rosenstock, 30 Fed. 67 ^'' 
 
 Western Tel. v. Stromberg, 66 Fed. ooO ^^^ 
 
 ^ssgi;^t^.^&i?|f|A.55^^^^^ 
 
 641,' 688, 690, 81?', 937, App. 195, 201, 490, 500, 817 ^^^ 
 
 Westinghouse v. Burton, 70 Fed. 619 . .^ 
 
 Westinghouse v. Burton, 77 Fed. 301 ... ^ ...••;• •• • • ■ • „. 
 
 Westinihouse v. CatskiU, 121 Fed. 831; 58 C. C. A. 167 ^60 
 
 Westinghouse v. Chartiers, 43 Fed o82 _ " • ^ p p" V ' qo 542 
 
 Westinghouse v. Christensen, 104 Fed. 622; 44 C. C A. '^^_-- ■ ■ ■ ■ ■ • •.„ ^]- 
 Wellinlhoase .. Dayton, 106 Fed. 724 . 349, 3o0, App. 348, 349 
 
 Westinghouse v. Electric Appliance, 142 Fed. o4o . - . •;•.•• -J^PP- ^^J 
 Westinihouse .. Montgomery, 139 Fed. 868; 71 C. C. A. o82. . . . App. o64 
 
 Westinghouse v. Mutual Life, 129 Fed. 213. ■•■••• • • • • ; • • • ' ^^q' c^Ar 
 
 Westinghouse .. New York, 140 Fed. 545; 72 C. C. A. 61. . . . 279 , 8^4| , 
 
 Westinghouse v. New York, 59 Fed. 581 ' J^g 
 
 Westinghouse v. Press, 127 Fed. 822 . 65 74 
 
 Westincfhouse v. Saranac, 108 Fed. 221 •••••••••• • • • ' • " ocn Ar^r^' 9^ 
 
 Westinihouse .. Stanley, 133 Fed 167 68 C.C. A. 523^^ 60 8^^^^^ 
 
 Westinihouse v. Stanley, 138 Fed. 823; 71 C. C. A. 189. . . 421, App. 4.1 
 
 Westinghouse v. Stanley, 116 Fed 641 . . _. .^. -^ ■ ^^^ ^^ 
 
 Westinghouse .. Union, 117 Fe^. f-i ^5 C. C. A. 230^^^ -^^^ ^ 
 
 Westinghouse v. Wagner, 173 Fed. 361, 97 U. L.. A. D/i ^w ^^^ 
 
 Westlake v. Carter, Fed. Cas 17,451 . . ... --••„• a d „ 691 
 
 Westmoreland ., Hogan, 167 Fed 327; 93 C. C. A. 31 ^^^ ApP- 691 
 
 Weston v. Empire, loo Led 301 •■•-•■ --^ Wo 344 688 770 
 
 Weyeth v. Stone, 1 Story, 273; Fed. Cas. 18,107 222, 344, b»», uu 
 
 Wharton v. Fisher, 2 Serg. & R. 182 ■•••■■•■••• ••,„., 440 §60 
 
 Wheeler ..Clipper, 10 Blatch 181; Fed. Cas. 17,493^ ........ • 448, «w 
 
 Wheeler .. Jackson, 137 U. S. 245; 34 L. Ed 659; 11 S. Ct. 76. . . .^ y^i 
 
 Whipple V. Mfg. Co. 4 Fish. 29; Fed. Cas. 17,514 4J/, ouo 
 
 ^rl: ^^?c^^f2^4;|d.;c.: ^^35. .: ^i:8ii;86o; app^,|6i 
 
 White .. Hunter 47 Fed. 819 .•;;.•.■.■.■.■.■ 7'55,App.'714, 755 
 
 Wliite V. Lee, 3 Fed. 222 ^ jq4 
 
 \\aiite V. Lee, 14 Fed. 789 ... 574 
 
 White V. Peerless, 111 Fed. 190 . . . - ■ • • • • . • • • • ' • ^.^ A. ' jWa ' ' 714 
 
 Wliite .. Rankin, 144 U. S. 628; 36 L. Ed. 569, 12^^ g^ App.' 714, 718 
 
 ' 299 
 
 White V. Spettigue, 13 Mus. & W. 603 ^^4 
 
 White V. Surdara, 41 Fed. 790 54g 
 
 White V. Walbridge, 46 Fed o26^ ■ \Wt"-c^aVqq 629 811 
 
 miteley .. Swayne 74 U S. 685^^ 19 L. Ed^ 199. . . ...... 6A 8^. 
 
 Whiting V. Graves, 3 B. & A. 222 Led. e.as i/,o/ , 
 
 Whitney v. Emmett, 1 Bald. 303; Fed Cas 17 o85 ^^^ 
 
 Whitney v. Mowry, 4 Fish. 207; Fed^ Cas,^ ^^'f^^am 289 796 
 
 mittemore .. Cutter, 1 Gall. 429; Fed. Cas. 17,600 289, / J^> 
 
 Whittemore v. Cutter, 1 Gall. 478; Fed. Cas. 17,601
 
 Clxviii TABLE OF CASES CITED 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Whitwell V. Continental, 125 Fed. 454; 60 C. C. A. 290. . App 744 
 
 Wicke V. Ostrum, 103 U. S. 461; 26 L. Ed. 409. .. . 374, 686, App 817 
 
 Wickelmau v. Dick, 88 Fed. 264; 31 C. C. A. 530 107, 673 
 
 Wickes V. Lockwood, 65 Fed. 610 App. 74 
 
 Wicks V. Stevens, 2 Woods, 310; Fed. Cas. 17,616 260, 871 
 
 Wiggin V. Heygood, 118 Mass. 514 ' 157 
 
 Wilbur V. Beecher, Fed. Cas. 17,634 App 635 
 
 Wilce V. Busch, 134 Fed. 389; 67 C. C. A. 371 . . ' App 599 
 
 Wilch V. Phelps, 14 Neb. 134 "920 
 
 Wilde V. Gibson, 1 H. L. Cas. 620 425 
 
 Wilder v. Kent, 15 Fed. 217 App. 157 
 
 Wilgus V. Germain, 72 Fed. 773 ^ ' 629 
 
 Wilkins v. Spafford, 3 B. & A. 274; Fed. Cas. 17,659 366 367 
 
 Wilkins v. Webb, 89 Fed. 982 626 
 
 Willcox V. Ewing, 141 U. S. 627; 35 L. Ed. 882; 12 S. Ct. 94. 764 
 
 Willcox V. Merrow, 93 Fed. 206; 35 C. C. A. 269 273, 350, App 277 
 
 Williames v. McNeeley, 64 Fed. 766 672 
 
 Williams v. American, 86 Fed. 641; 30 C. C. A. 318 614 
 
 Williams v. Breitling, 77 Fed. 285; 23 C. C. A. 171 551 
 
 Williams v. Corwin, Hop. Cli. 471 305 
 
 Williams v. Hadley, 21 Kan. 350 753 
 
 Williams v. McNeeley, 56 Fed. 265 567 
 
 Williams v. Merle, 11 Wend. 80 926 
 
 Williams v. Morgan, 111 U. S. 684; 28 L. Ed. 559; 4 S. Ct. 638. ..'.'.. 116 
 
 Williams v. Rome, 2 Fed. 702 290 
 
 Williams v. Steam, 47 Fed. 322 ] 936 
 
 Williams v. Field, 2 Barb. Ch. 281 116 
 
 Willis V. McCullen, 29 Fed. 641 476 
 
 Wilmington v. Alsbrook, 146 U. S. 279; 36 L. Ed. 972; 13 S. Ct. 72 894 
 
 Wilson V. Barnum, 8 How. 258; 12 L. Ed. 1070 113 
 
 Wilson V. City, 84 U. S. 473; 21 L. Ed. 723 923 
 
 Wilson V. Consolidated, 88 Fed. 286; 31 C. C. A. 533 554, 561 620 
 
 Wilson V. Coon, 6 Fed. 611 223 
 
 Wilson V. Deen, 121 U. S. 525; 30 L. Ed. 980; 7 S. Ct. 1004. . . .V 893, 894 
 
 Wilson, Ex parte, 114 U. S. 417; 29 L. Ed. 89; 5 S. Ct. 935 923 
 
 Wilson V. McCormick, 92 Fed. 167; 34 C. C. A. 280 195 
 
 Wilson V. Peto, 6 Moore, 47 481 
 
 Wilson V. Rousseau, 4 How. 646; 11 L. Ed. 1141 . . . 150, 154, 222^ 418, 450, 
 
 505, 712, 745, 746, 764, 769, 837 
 
 Wilson i^. Sanford, 10 How. 99; 13 L. Ed. 344 714, 724, App. 151, 
 
 714, 718, 755 
 
 Wilson V. Simpson, 9 How. 109; 13 L. Ed. 66 476, 523, 524, App. 474 
 
 Wilton V. R. R. 1 Wall Jr. 192; Fed. Cas. 17,857 795 
 
 Winans v. Denmead, 15 How. 330; 14 L. Ed. 717 54, 208, 219 223 
 
 375, 435, 453, 457, 459, 460, 485, 487, 497, 519, 529, 600, 601, 602, 605, 
 
 616, 651, 686, App. 204, 212, 378, 459, 468 
 
 Winans v. Railroad, 21 How. 88; 16 L. Ed. 68 587 
 
 Winans v. Railroad, 4 Fish. 2; Fed. Cas. 17,864 497, 506, 860 
 
 Winans v. Railroad, 2 Story, 412; Fed. Cas. 17,858 687, 775 
 
 Winch V. Railway, 13 L. & E. 506 482 
 
 Winchester v. American, 54 Fed. 703 App. 559 
 
 Windham's Case, 5 Coke, 76 753 
 
 Wing V. Anthony, 106 U. S. 142; 27 L. Ed. 110; 1 S. Ct. 93. . . 821, 871, 877 
 
 Winslow V. Grindal, 2 Greenl. 64 36 
 
 Wintermute v. Redington, 1 Fish. 239; Fed. Cas. 17,896 574
 
 TABLE OF CASES CITED clxix 
 
 [ References are to sections. " App." refers to Appendix ] 
 
 Winthrop v. Meeker, 109 U. S. 180; 27 L. Ed. 898; 3 S. Ct. Ill 116 
 
 Wirt V. Hicks, 46 Fed. 71 .' 574 
 
 Wisner v. Brown, 122 U. S. 214; 30 L. Ed. 1205; 7 S. Ct. 1156 532 
 
 Withington v. Kinney, 68 Fed. 500; 15 C. C. A. 531 759, App. 366 
 
 Wollensak v. Reiher, 115 U. S. 87; 29 L. Ed. 355; 5 S. Ct. 1132 ... . 204 
 Wollensak v. Reiher, 115 U. S. 96; 29 L. Ed. 350; 5 S. Ct. 1137 .. . 204, 222, 
 
 871, 875, 876, 877, 879 
 
 Wollensak v. Reiher, 28 Fed. 427 548 
 
 Wollensak v. Sargent, 151 U. S. 221 ; 38 L. Ed. 137 ; 14 S. Ct. 291 . . 651, 690, 876 
 
 Wood V. Carpenter, 101 U. S. 135; 25 L. Ed. 807 729 
 
 Wood V. Deering, 66 Fed. 547 207 
 
 Wood V. Rolling Mill, 4 Fish. 550; Fed. Cas. 17,941 10 
 
 Wood y. Underhill, 5 How. 1; 12 L. Ed. 23 814,905,915 
 
 Wood V. Weisner, 104 U. S. 786; 26 L. Ed. 779 273 
 
 Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939 ... . 3, 6, 8, 13, 19, 87, 
 
 261, 308, 671, 676, App. 64 
 
 Woodcock V. Parker, 1 Robb. 37; Fed. Cas. 1813 860 
 
 Woodman v. Stimson, 3 Fish. 98; Fed. Cas. 17,979 108, 188, 197 
 
 Woodward v. Boston, 60 Fed. 283; 8 C. C. A. 622 213, 797, App. 381 
 
 Woodward v. Stone, 3 Story, 749; Fed. Cas. 18,021 871, App. 559 
 
 Woodworth v. Wilson, 4 How. 712; 11 L. Ed. 1171 796 
 
 Wooster v. Calhoun, 11 Blatch. 215; Fed. Cas. 18,035 431, "823 
 
 Worden v. Searles, 121 U. S. 14; 30 L. Ed. 853; 7 S. Ct. 814. . . . 537, 538, 
 
 877, 885 
 Workingman's Council v. New Orleans, 57 Fed. 85; 6 C. C. A. 258. . . . 539 
 
 World's Columbian v. Republic, 96 Fed. 687; 38 C. C. A. 483 131 
 
 Worley v. Loker, 104 U. S. 340; 26 L. Ed. 821 103, 396, 412, 851, 857 
 
 Worswick v. Buffalo, 20 Fed. 126 375 
 
 Worswick v. Steiger, 17 Fed. 250 App. 68 
 
 Wright V. Bales, 67 U. S. 535; 17 L. Ed. 264 921 
 
 Wright V. Clinton, 67 Fed. 790; 14 C. C. A. 646 376, 378, 598 
 
 Wright V. Herring-Curtiss, 180 Fed. 110; 103 C. C. A. 31 App. 560 
 
 Wright V. Postal, 44 Fed. 352 811 
 
 Wright V. Randel, 8 Fed. 591 161 
 
 Wright V. Yuengling, 155 U. S. 47; 39 L. Ed. 64; 15 S. Ct. 1. . . . 198, 204, 
 
 211, 217, 376, 380, 456, 473, 654, 675 
 
 Writing Mach. v. Elliott, 106 Fed. 507 350 
 
 Wvatt V. Wallace, 67 Ark. 575 920 
 
 Wyckoff V. Wagner, 88 Fed. 515 574, 792 
 
 Wyllie V. EUice, 6 Hare, 505 841 
 
 Yale V. Berkshire, 135 U. S. 342; 34 L. Ed. 108; 10 S. Ct. 884. . . 54, 207, 
 
 871, App. 885 
 Yale V. Greenleaf, 117 U. S. 554; 29 L. Ed. 952; 6 S. Ct. 846. . . 223, 244, 
 
 322, 662, 664, 667 
 
 Yale V. James, 125 U. S. 447; 31 L. Ed. 807; 8 S. Ct. 967 872 
 
 Yale V. Sargent, 117 U. S. 373; 29 L. Ed. 950; 6 S. Ct. 931 .. . 12, 217, 375 
 Yale V. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S. Ct. 934 .... 288, 298, 
 
 608, 874, App. 274, 299 
 
 Yates V. Russell, 17 Johns. 468 ' 807 
 
 Yost V. Perkins, 179 Fed. 511 ; 103 C. C. A. 116 App. 655 
 
 Young V. Foerster, 37 Fed. 203 App. 31 
 
 Young V. Keighly, 16 Ves. 348 790 
 
 Young V. Wolfe, 120 Fed. 956 631 
 
 Zane v. Soffe, 110 U. S. ^00; 28 L. Ed. 119; 3 S. Ct. 562 807 
 
 Zwack, Ex parte, 76 O. G. 1885 App. 421
 
 A BRIEF SURVEY OF THE FIXED 
 LAW OF PATENTS' 
 
 INTRODUCTORY. — This chapter is a bird's-eye view of the 
 main body of the work. It takes up, in order, the main titles and 
 aims to state the general conclusions which are evidenced by the 
 collocation of appellate rulings. Its value lies in affording a com- 
 parison of views. The user of the book may examine a question 
 in the light of the quotations from the law. He may draw his own 
 conclusions and then compare them with those of the author. 
 Such a comparison will be helpful whether the conclusion of the 
 one tallies with that of the other or not. What is sought is the true 
 vision — to extricate ourselves from the inert mass of decision 
 and digest and get to higher ground. The aim of this chapter is to 
 enable the practitioner — not the patent specialist alone, but the 
 every-day lawyer, to gather up the living forces of the law and 
 apply them to the solution of immediate problems. 
 
 The principles of the patent law are not so difficult or recondite 
 as they are commonly regarded. The common hesitation in 
 approaching a question of patent law is a traditional fear rather than 
 a substantial reality. This book would fail of a main purpose if 
 it did not enable the lawyer in general practice to meet and 
 effectually dispose of the ordinary questions arising in the realm of 
 patents. 
 
 This survey should serve another purpose: It should make 
 evident the fact that the patent law of today is the result of a 
 natural, progressive development along broad, sane lines; that 
 it is, in the main, natural, logical, and therefore simple. It should 
 make it evident that the great principles are fixed; and being 
 fixed, that Congress should be slow, very slow, in disturbing the 
 structure by tampering with the statutory foundation upon which 
 it is builded. 
 
 ABANDONMENT, §§ 1-20. 
 
 It is to be observed at the outset that a patent creates nothing 
 that did not before exist. The patent secures to the inventor, for 
 
 > The references to cases and sections in this chapter are inclusive of the Appendix Chapter, 
 which has section numbering identical with the body of the work.
 
 2 THE FIXED LAW OF PATENTS 
 
 a definite period, the exclusive right to enjoy what has been created 
 in his own mind, that which already exists; it secures to the public 
 a full disclosure of that which already exists. The common law 
 recognizes no quality of property in such a creation, and conse- 
 quently there could be no abandonment of that which had no 
 existence as property. The Constitution and .the statutes give to 
 invention the character of an inchoate right which the inventor 
 may, by compliance with the statutes, transform into a substantial 
 property right. It follows, then, that abandonment must reside 
 in the acts of the inventor by which he has deprived himself of the 
 right to establish or enjoy the monopoly which he might have 
 secured. 
 
 Since abandonment is a forfeiture which places a right beyond 
 possible recall, and since courts do not favor forfeitures, the evi- 
 dence must be clear and convincing beyond doubt. An invention 
 may be abandoned either before or after application for patent, or 
 even after the patent issues; but there is a wide difference between 
 abandonment of an invention and abandonment of an application. 
 The latter does not necessarily constitute abandonment of the in- 
 vention at all. An application may be abandoned or forfeited, and 
 renewed repeatedly, so long as the applicant remains within the time 
 and terms of the statute. 
 
 While abandonment may occur either in the active or passive 
 voice, it is rare that the evidence shows a positive act. Usually 
 it is a case of sleeping on one's rights or of unconscionable delay 
 under cover of experimental use; and occasionally, just after the 
 close of the eleventh hour, the inventor essays to recover a monopoly 
 in a thing which his foresight was not clear enough to appreciate 
 and which was revealed to him only by the sagacity of others. 
 An inventor may not sit with folded hands to let others prove the 
 utility of his invention; nor may he, under cover of experimental 
 use, prolong the life of his monopoly. On the other hand, the courts 
 are gentle with the struggling inventor who is acting in good 
 faith; and they give wide margin for experimental use (see Eliza- 
 beth V. American, 97 U. S. 126; § 414) where the invention requires 
 the test of time or use to demonstrate its utility. 
 
 It has been said repeatedly, as stated above, that abandonment 
 may occur either before or after application; but it must be borne 
 in mind that the statute makes a distinction between public use 
 and abandonment (Sec. 4886). While it is true that public use hao 
 been regarded as constructive abandonment pince the act of 1836, 
 National v. American, 176 Fed. 79, § 2, it is also true that, as aban- 
 donment is purely constructive or presumptive under the statute,
 
 BRIEF SURVEY d 
 
 and has nothing to do with the question of intent, Western Glass v. 
 Schmertz, 185 Fed. 788, § 2, it is a question of law, and not a question 
 of fact, Corrington v. Westinghouse, 178 Fed. 711, § 2. Public use 
 for two years is an absolute bar which cannot be excused and which 
 operates without reference to the intent of the inventor or any con- 
 struction of his conduct. It is not uncommon for the courts to use 
 the term abandonment where the condition is one of public use for 
 more than two years. 
 
 Abandonment by failure to claim or by amendment of application 
 and acquiescence in the ruling of the Patent Office in restricting 
 the scope of a claim is true abandonment (§§ 199-215); and here 
 the inventor is often deprived of a substantial right by the conduct 
 of his solicitor in following the line of least resistance in the prosecu- 
 tion of an application. 
 
 ABATEMENT, §§ 21-23. 
 
 While it is true that a sole plaintiff or complainant, suing in his 
 own right, having disposed of his entire interest in the patent and 
 controversy is unable to further prosecute the cause, it is equally 
 true that, where there is a successor capable of assuming the burden, 
 and who promptly takes steps so to do, the action does not neces- 
 sarily abate. The question is one of continuity rather than per- 
 sonality; and the courts are little disposed to hang the fate of a 
 cause upon so uncertain an event as the life of a person, real or 
 artificial. 
 
 ACTIONS, §§ 24-27. 
 
 Actions for infringement are separately considered under in- 
 fringement, injunction, defenses and pleading. (§§ 447, 535, 308, 
 and 789). Qui tam actions or actions for false marking need not 
 be considered. 
 
 Actions to compel issue of a patent Ue under Sec. 4915; and the 
 action must be brought within the jurisdiction including the official 
 residence of the Commissioner of Patents. In such case the court 
 will pass upon the entire question of patentability and right to a 
 patent; and the mandate of the court when filed in the Patent 
 Office, unless stayed by appeal, becomes binding upon the Com- 
 missioner. Since appeal lies to the Court of Appeals, D. C, and 
 since such appeal does not involve a patent right, it is not appeal- 
 able to the Supreme Court. Dunham v. Seymour, 161 U. S. 235, 
 § 143. Such an action may grow out of the ordinary rejection of 
 an application, or out of a decision in interference, or out of the 
 issue of a patent to the wrong person. Three important rules have 
 been estabfished in Greenwood v. Dover, 194 Fed. 91, § 25:
 
 4 THE FIXED LAW OF PATENTS 
 
 1. That an action to compel issue is an original proceeding and is 
 in no sense an appeal from the Department, or from the Court of 
 Appeals, D. C. 
 
 2. That the complainant may carry his date of invention back 
 of that of the Patent Office proceeding and that in evidence before 
 the Court of Appeals, D. C. 
 
 3. That to overcome the decision of the Patent Office as affirmed 
 by the Court of Appeals, D. C, the complainant must introduce 
 evidence which will overcome the presumption of priority of the 
 decision of that court, and more. 
 
 Actions to cancel letters patent can be brought only by the 
 Government. A grant once issued by the Commissioner can not 
 be recalled; nor can a patent be cancelled in a collateral proceed- 
 ing. The Bell Telephone Case, 167 U. S. 224, clearly established 
 the conditions under which such an action will lie. 
 
 Actions under Sec. 4918 for delimiting the rights under issued 
 patents having conflicting or overlapping claims are considered 
 under § 587, interfering patents. 
 
 ADJUDICATIONS, §§ 28-37. 
 
 It would seem that a prior adjudication should be conclusive 
 between parties and privies to the suit; but the possibility of pre- 
 senting new defenses, under cover of newly-discovered evidence, 
 and the restrictions laid upon the question of privity (§ 386), render 
 a prior adjudication devoid of true finality in most cases. 
 
 The utter chaos into which we have fallen with reference to the 
 finality of a prior adjudication as determining the status of a patent 
 is well illustrated by Consolidated v. Diamond, 157 Fed. 677, and 
 the other cases involving the Grant patent. This patent has been 
 held valid in the Southern District of New York, the Southern 
 District of Ohio, the Northern District of Georgia, and by the 
 Circuit Court of Appeals of France. The Circuit Court of Appeals 
 for the Sixth Circuit held the patent void for want of invention. 
 Squarely in the face of the last-named decision the Circuit Court 
 of Appeals for the Second Circuit held the patent valid. Here we 
 have the case of a grant of the Government held void in certain 
 parts of the United States, held valid in other parts, and thereby 
 under a cloud throughout the rest of the land. And no right of 
 appeal lies. That the framers of the Constitution and the authors 
 of the patent statutes never contemplated such a condition is evi- 
 dent. The utter failure of comity between our circuit courts of 
 appeals presents a situation, relatively speaking, as repugnant to 
 the spirit of the Constitution as the secession of a state from the
 
 BRIEF SURVEY 
 
 Union. But with the precedent of the certification of this case to 
 the Supreme Court and its final decision (220 U. S. 428) and the 
 plain provision now existing for such certincation (Jud. Code, Sec. 
 239), this evil should disappear. 
 
 And the decision in Kessler v. Eldred, 206 U. S. 285, is a step 
 which does little more than add confusion to uncertainty. In that 
 case Eldred, the owner of a patent, sued Kessler, a manufacturer 
 of electric cigar lighters, in the district of Indiana. The court 
 found non-infringement and dismissed the bill. Subsequently 
 Eldred sued Kirkland, another manufacturer of similar cigar 
 lighters, in the Western District of New York, was defeated at 
 circuit, but prevailed in the Circuit Court of Appeals. Eldred next 
 sued Breitweiser, a user of Kessler lighters, in the same district 
 (W. D. N. Y.). WhiFe this last suit was pending, Kessler filed a 
 bill in the Northern District of Illinois against Eldred to enjoin him 
 from prosecuting any suit against him for alleged infringement of 
 the patent by purchase, use or sale of any cigar lighter manufac- 
 tured by Kessler and identical with the lighter in evidence before 
 the court in the first suit. The Supreme Court held that the original 
 judgment conclusively settled the right of Kessler to manufacture 
 and sell his manufactures free from all interference from Eldred 
 by virtue of the patent there adjudicated, and granted the relief 
 prayed for. Here, then, is the situation, in part at least: If one 
 buys a cigar lighter from Kessler in Illinois or anj'Avhere else he 
 may use it anywhere, even in the Second Circuit where the patent 
 has been held valid. If one buys that cigar lighter from any other 
 maker than Kessler, he may use it in the Seventh Circuit and not 
 infringe; but if he brings it into the Second Circuit and uses it 
 he at once infringes. If one makes such a lighter in the Second Cir- 
 cuit he infringes; but he may carry it into the Seventh Circuit and 
 use it freely. If a user of such cigar lighters were sued in the Sec- 
 ond Circuit by Eldred for infringement of his patent a,nd an injunc- 
 tion asked, the court would have to exclude from its restriction (as 
 was done in the case of Consolidated v. Diamond) all lighters made 
 by Kessler. What might happen in any one of the other seven 
 circuits one may onlj^ surmise. With all respect for the Supreme 
 Court, the author submits that the mark was entirely missed in 
 the failure of that court to recognize that this unspeakable chaos 
 has its origin in the utter repugnancy to common rights of that 
 portion of the act which closes the right of appeal to the Supreme 
 Court. The Circuit Court of Appeals has recognized the great 
 uncertainty of this ruling (Hurd v. Seim, 191 Fed. 832, 835) and has 
 indicated that it should be further reviewed by the Supreme Court.
 
 6 THE FIXED LAW OF PATENTS 
 
 However, there are certain holdings co-related to adjudications 
 which are more harmonious. These are considered under comity, 
 § 250, and res judicata, § 893. 
 
 ADMINISTRATOR, EXECUTOR, OR COMMITTEE OF AN 
 
 INSANE INVENTOR, §§38-41. 
 
 Prior to the amendment to Sec. 4896 on May 23, 1908, there 
 was no provision for application by the legal representative of an 
 insane person. Even as thus amended the statute does not cover 
 the case of an inventor living and sane, but incapacitated for making 
 application; and since the two-year limit of public use is absolute, 
 rigid, a case might well arise where an application would be barred 
 by two years public use while the inventor was incapacitated by a 
 passing illness. 
 
 A license, personal in its nature, does not pass to the represent- 
 atives of a deceased licensee; but an assignment or license, alien- 
 able during the life of the holder, does so pass; and an executor 
 or administrator entrusted with an interest in a patent upon which 
 the deceased might have brought suit, may sue for infringement. 
 
 AGGREGATION, §§42-51. 
 
 The distinction between an aggregation and a true combination 
 is not always clear. The main test lies in examination of the result 
 — the function performed. If that result is the sum of the several 
 actions of the elements, it is an aggregation; if it is the product 
 of those actions — if the action of one element so modifies the 
 action of another that the resultant action differs from the sum 
 of the separate actions — it is a true combination. Of the cases 
 quoted under this title the most interesting and instructive are 
 Dunbar v. Eastern Elevating Co. and Goss v. Scott (§§ 48 and 45). 
 In the Dunbar case, an elevator with a fixed leg for entering the 
 hold of a vessel was old. A movable elevator with a leg capable of 
 entering the hold of a vessel was old. Dunbar took an elevator 
 of the stationary type and mounted a movable leg on a track in 
 front of the stationary elevator, so that when a vessel came along- 
 sid-e the elevator and the fixed leg was entered at one hatch, the 
 movable leg could be moved to enter another hatch at whatever 
 distance from the former, and thus the cargo could be unloaded 
 from two points into a common elevator. That the invention was 
 of large value and was licensed generally no one questioned: but 
 the Circuit Court of Appeals for the Second Circuit reversed the 
 court below without hesitation on the ground that there was no 
 modification of function, the one by the other, and that the result
 
 BRIEF SURVEY 7 
 
 was aggregation and mere mechanical skill. The printing press case 
 is especially interesting because there we find the court holding 
 one patent valid and another patent void in the same suit on the 
 ground that the one covered a true combination while the other 
 was for a mere aggregation. 
 
 There are patents covering so-called " systems," such as systems 
 of electrical operation or control, which present serious problems 
 in aggregation. Manj^ of these patents show a fine quality of 
 mechanical and engineering skill, but are destitute of that quality 
 which characterizes true invention. The holding of the Second 
 Circuit in Western v. Rochester, 145 Fed. 41 (§ 698) is indicative 
 of the trend of future decisions in such cases. 
 
 Of course the Rubber Tip Pencil Case (Reckendorfer v. Faber, 
 92 U. S. 347) is standard authority on this question as related to 
 articles of manufacture; but the writer has always regarded that 
 case as involving mechanical skill, pure and simple. It did not 
 rise, in his opinion, even to the dignity of a clever aggregation. 
 
 AMENDMENT, §§52-57. 
 
 In view of the remarks made in § 53, only brief comment need 
 be made here. The underlying principle governing the question 
 of broadening the scope of a patent by amendment to the body of 
 the specification is this: If the original description disclosed the 
 subject-matter of the amendment, then the amendment, if justified 
 by the state of the art, is proper. If, on the other hand, the original 
 description did not so disclose the subject-matter of the amendment, 
 there is no foundation for the amendment. The statute makes no 
 provision for the filing of a supplemental oath to justify the intro- 
 duction of new matter, although the Supreme Court had inferen- 
 tially approved of it. Steward v. American, 215 U. S. 161, § 780. The 
 Patent Office Rules do make such provision. Whether such practice 
 is justifiable or not the appellate courts have not j'et determined. 
 
 The most serious problems are those where the applicant has 
 injected into the specification matters of improvements, after- 
 thoughts, and statements to broaden the scope of the patent. When 
 such amendments are made after long delay and after the accruing 
 of intervening rights, as in the case of Mayo v. Jenckes, 133 Fed. 
 527 (§ 54) they are unwarranted. These common attempts to 
 broaden the patent consist both in amendment to the description 
 and to the claims. While the applicant may always amend to 
 make his description and his claim as broad as his disclosure, the 
 grant may never go beyond that point; for the moment it does, 
 the applicant exceeds the statute, which requires, as a condition
 
 8 THE FIXED LAW OF PATENTS 
 
 of the grant, a disclosure of the exact monopoly sought, in such 
 full, clear and exact terms as will enable a person skilled in the art 
 to make and use the same. This question arises and is considered 
 more fully under the title of claims — construction, §§ 188-230. 
 
 ANTICIPATION, §§ 58-108. 
 
 The grant of a patent is prima facie evidence of novelty, and 
 conversely, that it is not anticipated. The weight of this pre- 
 sumption is not great. It may be re-inforced somewhat by evidence 
 of large utility and use, but nevertheless the judicial mind 
 approaches this question with little predilection in favor of the 
 patent. And so it should be; for both the patentee and the public 
 are entitled to an adjudication, which shall be exhaustive of the 
 state of the art and broadly conclusive of the questions in con- 
 troversy. As has been so well said by the First Circuit in Millard 
 V. Chase, 108 Fed. 399, (§ 681), it is the duty of the court, unham- 
 pered by the framing of the issues by the parties, to pass upon the 
 scope and validity of the claims in the interest of the public. 
 
 Since no general test of anticipation exists, or can exist, we must 
 content ourselves with aids like the following: 
 
 1. As an invention in order to receive the protection of the law 
 must be so described as to enable one, ^vithout experiment, assist- 
 ance or advice to make and use the same, so an alleged anticipation 
 must disclose the invention so clearlj^ that it may be made or used 
 by those skilled in the art without resort to the patent under attack 
 for necessary information. 
 
 2. Anticipation may not be read out of the patent in question 
 and into the alleged anticipation. It is easy to do so after the 
 fact (see § 693). 
 
 3. Anticipation cannot be made out by finding one element 
 here, and one there; nor can it be made out by the ingenious eluci- 
 dation of doubtful and uncontemplated fm^ctions of an old device 
 by expert testimom\ 
 
 4. The analogousness of an anticipation is " proportioned in- 
 versely to the distance from which it is brought." 
 
 5. The " infringement-if-later " rule is not of universal applica- 
 tion. Infringement is not the unqualified antithesis of anticipation. 
 
 An abandoned experiment can never anticipate. So long as it 
 is an experiment it is not an invention. If it is reduced to practice, 
 made operative, it is no longer an experiment. Experimental use 
 is quite a different thing. An abandoned device to be an anticipa- 
 tion must disclose the idea of means to such a degree that nothing 
 more than ordinary mechanical skill is necessary to make it per-
 
 BRIEF SURVEY 
 
 form the required function. A mere conception, however complete 
 and exact, is not enough. On the other hand, it is immaterial that 
 the anticipating device, so long as it was complete and operative, 
 never was used practically. But it happens not infrequently that 
 an alleged anticipation is brought out of a scrap-heap, attic, or 
 store-room and clothed with the dignity of perfect anticipation. 
 Such devices must be viewed with a conservatism commensurate 
 with the enthusiasm or complacency with which they are produced. 
 Nevertheless, if the anticipation is evident, the non-use cannot 
 discredit the showing. 
 
 Anticipation, once fairly established, the burden of proof shifts 
 to the complainant, and in addition to this burden is the obhgation 
 to establish invention anterior to the anticipating exhibit with no 
 less certainty than is required to establish anticipation. 
 
 Combining old elements is a favorite expedient of the expert. 
 He dissects the patent in suit to break up and destroy its entirety. 
 Having done this, it is ordinarily easy to find one element or sub- 
 combination in one patent, another in another, and so on. The 
 danger in such an attack lies not so much in the building-up of 
 combinations from old de\aces and patents as in the clever and 
 misleading dissection of the patent in suit which reduces it to a 
 mere aggregation, where " anticipation on the installment plan " 
 may be applied with much show of sincerity. 
 
 A more complete and condensed statement of the general rule 
 upon evidence of anticipation than that in Coffin v. Ogden, 85 U. S. 
 120, (§71), is not to be found. Nor can anything be added to the 
 statement of Judge Coxe in American v. Wagner, 151 Fed. 576, 
 (§ 72), upon the evidential value of models. Expert evidence of 
 anticipation, like expert evidence in general, divides under two 
 heads: First, that class which elucidates the constructions and 
 enables the court the more readily to form a correct judgment. 
 Second, that class of e\'idence which, concluding ^vith a jurat, elu- 
 cidates nothing, and having settled the law and the fact, leaves 
 nothing for the court to decide. 
 
 Parol e^^dence of anticipation must be certain, clear, and free 
 from suspicion. Since the Barbed Wire Case, 143 U. S. 275, the 
 courts have been properly suspicious of oral proofs of anticipation 
 — suspicious of fading memory and conscious or unconscious bias. 
 Yet there are cases, Hke that of National v. Stolts, 157 Fed. 392, 
 (§ 74), where parol evidence alone is sufficient to defeat a patent 
 on the ground of anticipation. Whether the proof be in the form 
 of a tangible device, a prior patent, or the oral testimony of wit- 
 nesses, it must be sufficient to carry the question clear of doubt.
 
 10 THE FIXED LAW OF PATENTS 
 
 A patent is a substantial right, and the evidence to destroy it must 
 be, in its way, no less substantial. 
 
 Foreign use alone does not anticipate. It is only when such 
 use is brought to this country in the form of definite knowledge 
 prior to the date of the domestic invention — only when it becomes 
 " known " in the sense required by Sec. 4886 — that it can operate 
 as an anticipation. Mere knowledge of the fact that a certain 
 thing is done abroad is not enough. 
 
 A patent or publication in a foreign country, in order to become 
 an anticipation, must be a full and clear disclosure which will en- 
 able one to practise the invention of the patent in suit without 
 its use as a side-light. The loose methods which obtain in many 
 foreign countries as to the drafting of specifications and claims 
 render it necessary to view such disclosures with much suspicion. 
 Loose and general statements may be twisted into seeming antici- 
 pation. 
 
 An interesting question of carrying the date of invention back 
 of a foreign patent is raised in Welsbach v. American, 98 Fed. 613, 
 (§82). 
 
 As aboye stated, the " infringe-if-later " rule is not of universal 
 application. It rarely happens that the alleged anticipation is a 
 Chinese copy of the device of the patent under fire. Questions of 
 equivalency, identity, diversity, transposition of parts, and many 
 other questions are usually present to complicate the examination. 
 
 The rule as to anticipation by a prior inoperative device is this: 
 If the inoperativeness is a mere matter of lack of mechanical de- 
 velopment, the essence of the invention being clearly present, such 
 defect will not prevent anticipation; but if the inoperativeness 
 resides in an inherent defect and lack of elements in necessary com- 
 binative relation, then the anticipation fails. 
 
 Since every inventor is charged with knowledge of the prior 
 art, so a witness claiming knowledge which will anticipate is 
 charged with that exactness of knowledge which enables him, 
 wholly independently of the patent in suit, to disclose the invention 
 in operative completeness. Anything short of this is insufficient. 
 Mere knowledge of the scientific principles involved will not answer; 
 the knowledge must be of the means essential to put them to 'use. 
 Nor will knowledge of a similar device in another art performing a 
 different function do. The knowledge must match up with the 
 vital features of the invention, else it fails. 
 
 Anticipation by a mere paper patent is a subject upon which the 
 circuit courts of appeals are not in perfect accord. A reading of the 
 cases under §§ 92-99 will show the different leanings. Neces-
 
 BRIEF SURVEY 11 
 
 sarily, a clear showing, whether the patent be paper or otherwise, 
 must be anticipation; but when the paper patent must be con- 
 strued, explained, and made to fit the case, it clearly has not the 
 same weight as a patent which has gone into use and demonstrated 
 its practical utility. And this, too, is as it should be; for w^hen we 
 must rest anticipation partly upon a prior patent and partly upon 
 the construction we must place upon it, we have the right to insist 
 that our construction shall rest upon a substantial thing, and not 
 upon something that has a doubtful standing in the realm of realities. 
 
 The earlier idea that a process cannot be anticipated by a machine 
 which discloses the process is doubtful, Johnson v. Chisholm, 115 
 Fed. 123; Model Bottling Mach. v. Anheuser-Busch, 190 Fed. 573, 
 §100. 
 
 As a single use for more than two years is an absolute bar to a 
 patent, so a single prior use is sufficient to anticipate. Neither 
 number of uses nor number of persons knowing to such use matters. 
 A single use by a single person, if duly proved, anticipates. But 
 a mere accidental use, or the fact that the prior device might, 
 in the light of the patent in suit, have been put to the use in question, 
 is not anticipation. 
 
 Finally, the question of a doubtful anticipation may be resolved, 
 in many cases, from surrounding circumstances. A well organized 
 showing of anticipation may be so utterly repugnant to ordinary 
 human conduct and condition as to discredit itself. On the other 
 hand, while it may be impossible to find absolute, item for item 
 anticipation in the prior art, it may be so evident that the inventor 
 was nothing more than a borrower from prior or analogous arts 
 that his invention merits scant respect. Generally speaking, an- 
 ticipation is a problem demanding a careful analysis of the subject- 
 matter, a careful balancing of the proofs adduced, and the exercise 
 of a sound common sense which recognizes the human element and 
 the personal equation. 
 
 APPEALS, §§ 109-144. 
 
 Only such matters relating to appeals are considered in this 
 work as relate particularly to patent causes. There are excellent 
 general works on the subject, and anything more than a very brief 
 review of the rules peculiar to patents would be out of phace. 
 
 Appeals from orders granting injunctions are so intimately con- 
 nected with the subject of injunctions that they are preferably 
 there considered. (§§ 535-545). 
 
 While the Circuit Court of Appeals Act cut off appeal to the 
 Supreme Court in patent causes, except appeals from the Court of
 
 12 THE FIXED LAW OF PATENTS 
 
 Appeals, D. C, and while the Judicial Code repealed § 699, R. S., 
 thus cutting off appeals from the Court of Appeals, D. C, and thus 
 raised that tribunal to the position it deserved — on a par with the 
 nine circuit courts of appeals — a question of jurisdiction is appeal- 
 able to the Supreme Court from any of these courts. 
 
 Assignments of error are too often based upon the opinion of 
 the court. This is bad practice. The assignments should be directed 
 to that which the court decreed or refused to decree as raised by 
 the pleadings. A general assignment would seem to be good; and 
 the appellate court may, of its own motion, raise a question not 
 assigned, when an error by the court belov/ is evident. The assign- 
 ments should raise the issues on appeal in an orderly manner and 
 without prolixity; and the brief and argument should be directed 
 thereto. Where an appellant sets forth a number of assignments 
 and fails to refer in any manner, either in his brief or upon the argu- 
 ment, to certain of his counts, such counts will be assumed to have 
 been abandoned. When a multitude of unnecessary assignments 
 is made, the court will not consider them seriatim. 
 
 Certification to the Supreme Court must be upon a definite, 
 stated proposition of law upon which the court specifically asks 
 instruction. 
 
 A cross-appeal from a decree holding certain claims valid and 
 infringed and certain other claims void or not infringed cannot be 
 filed by the complainant until final hearing. 
 
 Appeals in law actions are strictly limited to a review of ques- 
 tions of law raised by exceptions regularly taken. Questions of 
 fact \vill not be considered; and this holds when a jury has been 
 waived. 
 
 ARBITRATION, § 145. 
 
 There is no statutory provision for trial by arbitration, and 
 but one ruling of the appellate courts strictly relating thereto. It 
 would seem that, as parties are generally bound by stipulations of 
 counsel and as a stipulated record on appeal is good. In re Grove, 
 180 Fed. 62, § 136, a stipulation, regularly made upon the record, 
 to try out an infringement cause before an arbitrator should give 
 his decision substantially the same force and effect as that of a judge 
 sitting in circuit. 
 
 ART, §§ 146-148. 
 
 As stated in § 147, the term " art " has had a beneficent use 
 in the patent law. Nothing is to be added to what is said under 
 that section except to raise the following question: If the Supreme
 
 BRIEF SURVEY 13 
 
 Court held Bell's telephone invention to be an " art " and capable 
 of the broad construction given it (Telephone Cases, 126 U. S. 1, 
 § 148), why should that court hold Westinghouse's air-brake in- 
 vention not to be an " art " and patentable only as a mechanical 
 improvement? (Westinghouse v. Boyden, 170 U. S. 537, § 686). 
 
 ASSIGNMENT, §§ 149-176. 
 
 The patent is an entirety and can be subdivided only as authorized 
 by law. Joint owners are, unless the assignment specifically pro- 
 vides to the contrary, tenants in common. The owner of the 
 smallest fractional part holds, so far as the enjoyment of the 
 monopoly is concerned, as much as the holder of all the rest. No 
 accounting can be had between common tenants. A patent cannot 
 be divided by claims. A title interest in a patent is either, — 
 
 1. The whole patent, 
 
 2. An undivided share of that exclusive right, or, 
 
 3. An exclusive territorial right. 
 
 The first and third holders may sue alone. The second must join 
 co-o%vners. Anything short of these three is a mere license. Water- 
 man V. Mackenzie, 138 U. S. 252, § 150. 
 
 An invention is assignable either before or after patent. An 
 assignment of an application is recordable in the Patent Office, 
 but an assignment of future inventions is not. An assignment 
 may contain conditions and reservations; and, when recorded, 
 such conditions and reservations are notice to a subsequent pur- 
 chaser either when set out in the assignment or referred to as con- 
 tained in another and unrecorded writing. An action to compel 
 assignment will lie, and an interest in a patent may be reached by 
 a creditor's bill. Under Sec. 5046 a trustee in bankruptcy acquires 
 title to a patent interest. A copartnership or corporation may hold 
 title to a patent; but the assignment of an interest merely for the 
 benefit of the copartnership terminates with the copartnership. 
 An assig-nment by a corporation need not be under seal. 
 
 The Supreme Court has settled a question long dubious in hold- 
 ing that a state court maj' pass upon a question of ownership and 
 compel an assignment, even though the complaint asks for injunctive 
 relief, New Marshall Engine v. Marshall, 223 U. S. 473, § 151. And 
 the decision in Nat. Wire Bound Box v. Healy, 189 Fed. 49, § 151, is 
 a wise application of the broad principles of equity compelling as- 
 signment to preserve the patent monopoly in a case of warring fac- 
 tions. 
 
 But by far the most significant ruling of recent years is that of 
 the Supreme Court in Hem-v v. Dick, 224 U. S. 1, § 157, which holds
 
 14 THE FIXED LAW OF PATENTS 
 
 clearly that the physical property and the monopoly property in a 
 patented thing are distinctly separable, and that the one may be 
 sold without the other. 
 
 The evidential value of a recorded assignment underwent a 
 severe shock in the decision of Mayor v. American, 60 Fed. 1016, 
 (§158). The Second Circuit therein reversed the rule in Brooks 
 V. Jenkins, 3 McLean, 432, which was established in 1844, and which 
 had been generally followed as establishing an assignment as 
 primary evidence and prima facie proof of the execution and 
 genuineness of the original document. In Standard v. Crane, 76 
 Fed. 767 (§ 158) the Seventh Circuit disapproved the holding of 
 the Second Circuit and reaffirmed the rule of Brooks v. Jenkins. 
 The amendment of Mar. 3, 1897, to Sec. 4898 appears to have met 
 this situation of conflict; at least it shifts the burden to the party 
 questioning the validity of an assignment duly verified as therein 
 provided. 
 
 A bare license is unassignable, and does not pass to legal repre- 
 sentatives. A license may be parol or may arise by implica- 
 tion. 
 
 A territorial right, unless specifically restricted, gives the owner 
 the right to sell the product made under the patent outside the 
 territory to which his manufacture is restricted. 
 
 As to notice, the recording of an assignment has the effect, in 
 most cases, intended by Congress; but a full reading of Waterman 
 V. Mackenzie, 138 U. S. 252; Waterman v. Shipman, 55 Fed. 982; 
 and National v. New Columbus, 129 Fed. 114, are commended to 
 put one on his guard. 
 
 ATTORNEYS, §§ 177-181. 
 
 Possibly quite enough has been said on this subject under § 140. 
 The appHcant is bound by the acts and omissions of his solicitor; 
 and while he is not bound by his arguments, he is prejudiced thereby 
 if they partake of the nature of admissions. Most of us have, at 
 some time, had the disagreeable duty of informing a client that he 
 has no claim which would enable him to prosecute an infringement 
 of the invention he had actually made and which he supposed was 
 protected by the claims of his patent. 
 
 BANKRUPTCY, §§ 182-183. 
 
 There have been no appellate holdings under the present bank- 
 rupt act, and no discussion of the rulings upon the former act is 
 necessary.
 
 BRIEF SURVEY 15 
 
 CLAIMS, §§ 184-248. 
 
 The claim marks the boundary of the close of the patent. It 
 not only marks the line between the new and the old, but it marks 
 the advance as well. Not only must the claim indicate where the 
 progress begins, but it must disclose the limit of the advance made, 
 else the patentee might close the door to future progress. Duff 
 V. Forgie, 59 Fed. 772, § 204. 
 
 It is about the claim that the conflict centers, from its filing in 
 the Patent Office to the final decree of the appellate court. This 
 is necessarily so because the claim, though it may be likened to 
 the description in a deed which marks the bounds of a parcel of 
 land, deals not with a tangible thing, but with an idea of means — 
 a mental product. The inexactness of mind and language always 
 leaves the claim what it is — merely an approximation, more or 
 less remote, to an exact disclosure of what a certain mind has ac- 
 complished. 
 
 It is a reasonable rule of construction that the claim should be 
 as broad as the invention. Wagner v. Wycoff, 151 Fed. 585, § 222. 
 But it does not follow in the least that, when the claim is clear, 
 unmistakable and definitive of something less than the description 
 and dramngs show, it can be expanded to become co-extensive 
 therewith. It is only when the claim clearly indicates such an 
 intended construction and intent on the part of the patentee, to- 
 gether with clear proof of the generic importance of the invention, 
 that the courts are in the least disposed to vary the rule that the 
 claim may be restricted, but not broadened, by reference to the 
 description. 
 
 While it is a general rule that greater liberality of construction 
 is applied to a generic claim than to an improvement claim (§ 197), 
 there are exceptions. There are those improvements which are 
 in a very proper sense generic, improvements which, in the long 
 fine of attempts, cancel prior failures and accomplish a long-sought 
 end. An invention may be broad and generic — advancing a 
 broad forefront; or it may be narrow and yet generic — going far 
 but not wide in the art. Bell's discovery was broad and generic; 
 but it was the improved transmitter which made long distance 
 telephony possible. 
 
 A claim may be limited by the active or passive act of the 
 appficant. He may fail to claim, or he may — perhaps even in 
 his attempt to claim broadly — employ terms of limitation. (§ 229). 
 It is a common error to suppose that the use of such expressions 
 as " means " for doing this or that broadens the claim. Such is 
 not the case; for we must first translate the " means " into the
 
 16 THE FIXED LAW OF PATENTS 
 
 specific element or combination disclosed in the specification or 
 drawing, and then, and then only, if it be permissible, apply the 
 doctrine of equivalents. But by far the most common form of 
 limitation is by amendment of the claim. Limitations imposed 
 by the Patent Office and submitted to by the applicant, broadly 
 speaking, are conclusive. (§ 207). But it must not be assumed 
 that all amendments are limitations. (§ 208). An amendment 
 may define or specify the more clearly and yet not limit. More 
 than this, an amendment may broaden the claim; and an amend- 
 ment may so broaden the claim as to have much the same eifect 
 as broadening the claim b}- reissue. (§ 199). 
 
 The claim must be construed in view of the prior art, (§ 224), 
 and it is chiefly this factor which determines the spirit in which 
 the rules of construction shall be applied. And the construction 
 of the claim in the light of the description and drawings and of 
 the prior art has been a source of great confusion, notwithstanding 
 the repeated plain statements of the courts. As the Supreme 
 Court has said, " some persons seem to suppose that a claim in a 
 patent is like a nose of wax which may be turned and twisted in 
 any direction, by merely referring to the specification so as to make 
 it include something more than or something different from, what 
 its words express." White v. Dunbar, 119 U. S. 47, §223. Now 
 the reason for this confusion lies, apparently, in our failure to per- 
 ceive that, while the claim may not be twisted like a wax nose, the 
 rules for construction of the claim may be. When the court has 
 made up its mind, in view of the disclosure of the patent and the 
 prior art, that a claim should be sustained — when the court has 
 applied judicial acumen and common sense to the problem — it 
 has little difficulty in making the rules of construction soften and 
 yield. And when, in like manner, it is evident that the claim should 
 be defeated, the " nose of wax " character of the rules readily 
 adapts itself to the occasion. And it is not in the wise bending of 
 these rules that injustice is done; but rather, in those rare cases 
 where the court has forgotten, for the moment, the paramountcy of 
 its own promptings and followed a hard-and-fast rule of construction. 
 
 Reading in elements, when such course does not broaden the 
 claim or serve to save it from palpable invalidity, may be justi- 
 fiable, although the general rule is to the contrary. (§ 220). Omit- 
 ting elements to broaden a claim is never justifiable, (§ 218); except 
 in the case of a generic claim, and then only when such course does 
 no violence to the plain disclosure of the patent and omits no element 
 definitely specified by the patentee as marking one of the limits of 
 his invention.
 
 BRIEF SURVEY 17 
 
 A condition frequently encountered is that where, if the claim 
 be given the construction and scope to establish infringement, 
 it must be held void for anticipation (§216); and the tendency 
 is generally to apply the " valeat quam pereat " rule (§ 228) to 
 save the patent by finding non-infringement. Here it is believed 
 the duty of the court should be to thus apply the rule where the 
 patent discloses substantial utility; but to refuse to apply that 
 rule when the patent is indubitably trivial, and thus protect the 
 public against an apparent but unwarranted monopoly. 
 
 A discussion of this title might be extended almost indefinitely. 
 It might be carried into the domain of equivalency, infringement 
 and invention. It is enough to conclude by referring to the opinion 
 in Reece v. Globe, 61 Fed. 958, quoted in extenso under § 222, as 
 clearer and more comprehensive than anything that could be written 
 here. 
 
 COMITY, §§ 250-257. 
 
 As stated by the Supreme Court, " comity is not a rule of 
 law, but one of practice, convenience, and expediency." (§ 250). 
 This subject has already received attention under the title adjudi- 
 cation. 
 
 Between circuit and circuit the rule may well obtain, when the 
 patent and proofs are the same. Naturally a circuit court of 
 appeals is in no sense called upon to follow the decision of a judge 
 sitting in circuit on the ground of comity. Between circuit courts 
 of appeals, if any conclusion may be drawn, it is that stated in 
 Imperial v. CrowTi, 139 Fed. 312, § 253, that an appellate court, 
 in justice to the parties, will make an independent examination of 
 the case, and will, if it can without violence to its own judgment, 
 follow the decision of another appellate tribunal of like jurisdiction. 
 But if the court finds a substantial ground of difference of opinion, 
 it will not hesitate to disregard the question of comity. The 
 Supreme Court, never controlled by the decision of another tri- 
 bunal, wnll, however, accord due weight to the decisions of courts 
 of appeals. In general, the gravity of comity increases wath the 
 number and concordance of prior holdings. (§ 256). 
 
 COMMISSIONER OF PATENTS, § 258. 
 
 The acts of the Commissioner of Patents are presumably right, 
 but they are never conclusive (except where some form of estoppel 
 makes them so as between the parties) as to a question of novelty, 
 utility, or prior use. (§ 261). It is not within his power to recall 
 a patent grant once issued. McCormick v. Aultman, 169 U. S.
 
 18 THE FIXED LAW OF PATENTS 
 
 606, § 26. Nor can he limit the scope of a patent by formulating 
 an interference claim. Reed v. Smith, 123 Fed. 878, § 208. 
 
 COMPOSITION OF MATTER, §§ 264-266. 
 
 Both a composition of matter and an article of manufacture 
 are specified as patentable subject-matter in Sec. 4886; and there 
 is a distinct difference between the two. In the one, the patentable 
 quality resides in the novel combination of ingredients; in the 
 other, the novelty of the article itself. The validity of a patent 
 upon a composition of matter depends upon the disclosure of the 
 elements in novel combination (§ 266), while the article of manu- 
 facture depends upon the inherent characteristics of the article 
 itself. (§ 775). 
 
 CONGRESS, §§267-268. 
 
 Nothing need be added to what is said in §§ 267-8. 
 
 CONTEMPT, § 269. 
 
 This subject is considered under §§ 536, 577. 
 
 COPARTNERSHIP, §270. 
 
 As has been seen, (§ 155), an assignment to a copartnership for 
 the use of the copartnership terminates therewith. A copartner 
 holding no interest in the patent cannot sue for infringement. The 
 question of acquisition of an equitable interest in a patent used 
 in the firm business is one which can be determined only in the 
 light of the articles of agreement between the parties and the 
 conditions of acquisition and use of the patent itself. 
 
 CORPORATIONS, § 271. 
 
 Matters relating to infringement and injunction as affecting 
 corporations are considered under §§ 479-82 and 547. For matters 
 of assignment see § 156. Dissolution and merger of a corporation 
 pending suit does not work abatement. (§ 21). A license arising 
 by implication is unassignable and expires with the corporation. 
 
 COSTS, §§272-277. 
 
 While the patent statute specifically provides for the recovery 
 of costs, the courts follow the general rules of practice in apportion- 
 ment and taxation. A mere question of costs cannot be made the 
 subject of appeal. 
 
 The provisions as to disclaimer in Sees. 973 and 4922, R. S.
 
 BRIEF SURVEY 19 
 
 apply not only to cases strictly within the rule, but the courts in 
 their discretion have extended the rule to the point where, if on 
 appeal a complainant succeeds in part and part of the claims 
 sued on are held void for want of novelty, costs will be divided. 
 In like manner, if a complainant refuses to declare the claims al- 
 leged to be infringed and on appeal abandons all but certain of such 
 claims, he will not recover costs. (§ 277j. But where suit is 
 brought for infringement of a process and the machine for carry- 
 ing out the process, and the process patent is held good, but the 
 machine patent bad, costs will not be denied. (§277). When a 
 defendant escapes on an issue not pleaded, the complainant will 
 recover costs below, but neither party will recover costs of appeal. 
 (§ 277). Corporation officers improperly joined as defendants may 
 recover costs in both courts. 
 
 The courts are very properly exercising discretionary powers 
 in denying costs in cases where the record has been unduly padded 
 or extended by the party otherwise entitled to costs. 
 
 DAMAGES, §§278-299. 
 
 As stated in § 279, the terms " damages " and " profits " are 
 often confused. We have damages in equity and we have defendi- 
 ant's profits as a measure of damages in actions at law. Likewise 
 there is confusion between the rules of evidence relating to damages 
 and rules establishing the measure of damages. 
 
 What is the measure of damages? The Supreme Court tells us 
 that " there cannot, in the nature of things, be any one rule of 
 damages which will equally apply to all 'cases. The mode of 
 ascertaining actual damages must necessarily depend wpon the 
 peculiar nature of the monopoly granted." Seymour v. McCor- 
 mick, 16 How. 480, § 290. Again, " the profit made by the de- 
 fendant and that lost by the plaintiff are among the elements which 
 the jury may consider." Philip v. Nock, 84 U. S. 460, §290. 
 Again, " where profits are the proper measure, it is the profits 
 which the infringer makes." Burdell v. Denig, 92 U. S. 716, § 290. 
 Again, " established license fees are the best measure of damages 
 that can be used." Clark v. Wooster, 119 U. S. 322, § 292. Again, 
 " evidence of an established roj^alty will undoubtedly furnish the 
 true measure of damages." Birdsell v. Coohdge, 93 U. S. 64, § 294. 
 Again, " the verdict of the jury must be for the actual damages 
 sustained." Birdsell v. Coohdge again under §285. Should we 
 turn to the subject of profits (§§ 837-842) we would find the same 
 seeming confusion, both of terms and of what constitutes a measure 
 of damages or standard for computing profits. But these quotations
 
 20 THE FIXED LAW OF PATENTS 
 
 are not given to show conflicting rules, but to impress the state- 
 ment first quoted that " there cannot, in the nature of things, be any 
 one rule of damages which will equally apply to all cases." There 
 are cases where the measure is the defendant's gains; there are 
 cases where the measure is the plaintiff's losses; there are cases 
 where both may enter in; there are cases where a license fee is 
 the criterion; there are cases where an established royalty is the 
 measure; there are cases where the measure is the entire profit 
 of a defendant's business; there are cases where it is only a small 
 fraction of that profit; there are cases where the full damages are 
 but nominal; and there are cases where the damages are substan- 
 tial, but absolutel}' impossible of computation under any existing 
 rule. It would be a person of great hardihood and small experience 
 who would undertake to formulate a universal, fixed, invariable 
 rule of damages. 
 
 Actual damages must be actually proved and not left to specula- 
 tion (§ 280, 295). While there are two or three cases which would 
 seem to imply that some discretion and latitude might be left to 
 the jury, these have not been generally followed. It ma}' not be 
 that the evidence must put an exact multiplicand and multiplier 
 into the hands of the jury; but it certainly must be that the evi- 
 dence shall enable the jury to determine, without guesswork or 
 speculation, these two factors. Rude v. Westcott, 130 U. S. 152, 
 § 295. Where damages are to be recovered in equity it would seem 
 that greater latitude of proof might be admissible before a master. 
 Mast V. Superior, 154 Fed. 45, § 286. But that case also teaches 
 that even the court may not disregard the canons and arbitrarily 
 determine the damages. 
 
 Increasing the damages under the statute is a discretionary 
 power of the court, and will not ordinarily be disturbed on appeal. 
 The grounds for the exercise of that power are the conduct of the 
 defendant — wilful or improvident. There is no appellate rule 
 justifying an increase of damages on the ground of inadequacy of 
 reward under the proofs in the absence of a contributing act of the 
 defendant. 
 
 Damages become liquidated only upon tjie day of the verdict 
 or the coming in of the master's report. It follows that interest 
 can be added only from that day. 
 
 The difference between damages at law and in equity is stated 
 in Coupe v. Royer, 155 U. S. 565, § 285. And since a court of equity 
 will not assume jurisdiction solely for the assessment of damages 
 or ascertainment of profits (§ 371), it would seem, in view of Brown 
 V. Lanyon, 148 Fed. 838, § 285, that the statement above made
 
 BRIEF SURVEY 21 
 
 that cases may arise where damages are evident but unmeasurable 
 under the rules is justified. 
 
 It is evident that where an estabhshed license or royalty measure 
 exists damages may be ascertained; but in cases where no such 
 measure exists resort must be had to 
 
 1. Plaintiff's actual damages in terms of, 
 
 a. Losses of sales which he would otherwise have made, 
 
 b. Losses by reduction of prices due directly to the unlawful 
 
 competition, or, 
 
 2. Gains of defendant measured in terms of, 
 
 a. Gains directly traceable to the infringement, or, 
 
 b. Savings made by the use of the infringing subject-matter 
 
 over what he might have saved by the use of other means 
 open to his use outside the realm of patent protection, or, 
 
 3. Possibly a combination of some of these conditions. 
 
 In each of these cases the evidence must reach home without 
 question. If loss of sales, it must be certain that they would have 
 come to the plaintiff and no one else but for the diversion by the 
 defendant. If reduction of price, it must appear that the infringe- 
 ment was the proximate and sole cause. If gains, they must stand 
 separated from other contributing factors. If savings, the com- 
 parison between the economy of the invention of the patent and 
 common and free means must be free from all speculation or 
 estimation. 
 
 Mitigations and deductions are to be made with the same exacti- 
 tude as the proofs of damages. They need not be catalogued here; 
 but if the same general principles are applied that are well known 
 in the business world in charging the account of a department with 
 proper items of costs and expenses, proper deductions may be 
 ascertained. 
 
 In the proofs, the burden is upon the plaintiff or complainant 
 except as to deductions and mitigations. The main features have 
 been indicated. We now come to the subject of segregation. The 
 rule of Garretson v. Clark, 111 U. S. 120, as reduced to its final 
 terms in Westinghouse v. N. Y., 140 Fed. 545, § 845, is this: 
 
 1. If damages are sought on only a part of the machine or device, 
 " the patentee must in every case give evidence tending to separate 
 or apportion the defendant's profits and the patentee's damages 
 between the patented features and the unpatented features, and 
 such evidence must be reliable and tangible, and not conjectural 
 or speculative." 
 
 2. If damages are sought on the whole machine, " he must show 
 by equally reliable and satisfactory evidence that the profits and
 
 22 THE FIXED LAW OF PATENTS 
 
 damages are to be calculated on the whole machine, for the 
 reason that the entire value of the whole machine as a market- 
 able article is properly and IcgalJ}^ attributable to the patented 
 feature." 
 
 Taking this rule as construed in the Westinghouse case, we have, 
 as a practical consequence, — 
 
 1. That small number of cases where the profits may be entirely 
 and unerringly attributed to the infringement, and to nothing 
 else. 
 
 2. That small number of cases where perfect segregation is pos- 
 sible. 
 
 3. The great majority of cases where the profit is clearly due in 
 part, and in part only, to the patented subject-matter, and where 
 segregation is an utter impossibility. 
 
 With the refinements of this rule, as stated under § 279, the point 
 had been reached where recovery of substantial damages or profits 
 was impossible in the class of cases in the third group above men- 
 tioned. The decision of the Supreme Court in Westinghouse v. 
 Wagner, quoted in extenso under § 845, sets the proper limit to this 
 rule, and makes it subject to the broader rule of onus probandi. 
 After the plaintiff or complainant has proved (1) that there are 
 substantial profits or damages attributable to the patented im- 
 provement, (2) that they have been confused and mixed by the 
 defendant, and (3) that segregation by plaintiff or complainant 
 cannot be made with definiteness, — then the burden shifts to the 
 defendant, as it should. 
 
 DEFENSES, §§306-322. 
 
 Since the statute makes distinct and separate provision for 
 defenses in patent causes, the subject is treated separately from 
 pleading and practice. The subject of notice under the statute is, 
 however, included with pleading under § 795. 
 
 The five defenses which the statute provides and which may 
 be pleaded with the proper notice, are all affirmative defenses 
 which attack the patent as an entirety, and which, if proved, 
 render the patent to all intents and purposes void and of no effect 
 so far as the claims sued on are concerned in the circuit in which 
 such verdict or decree is made final on appeal. It is not a repeal 
 of the grant, nor can the grant be cancelled in a collateral proceed- 
 ing under any circumstances; but when a patent has been held 
 void as to all of its claims by an appellate court on any one of the 
 statutory grounds that may be pleaded, the grant, for that jurisdic- 
 tion at least, is silenced. And since the establishment of any one
 
 BRIEF SURVEY 
 
 23 
 
 of these five defenses is so far-reaching, it follows that the pleading 
 and proofs must have that inerrancy which is necessary to warrant 
 a court in declaring null and void that which has been done by a 
 department of the Government in the performance of the duty 
 to it charged by law. 
 
 Since defenses are essentially a part of the subject of pleading 
 and practice so ably treated by the text-books, the following brief 
 comment on the few general defenses which have been passed upon 
 by the appellate courts is sufficient. 
 
 Those defenses which attack the grant — such as unwarranted 
 acts of the Commissioner, defective grant or specification, invalidity 
 of reissue and non-patentability — must be pleaded with the same 
 certainty, and where necessary to enable the plaintiff or com- 
 plainant to meet the special matters alleged as best he may, with 
 like notice as a defense under the statute. Defenses of license or 
 res judicata may be raised by plea or answer. The defense of non- 
 infringement is by way of excuse; but when the defendant raises 
 this defense and attempts to justify his acts under a subsequent 
 patent, he is on thin ice. Buser v. Novelty, 151 Fed. 478, § 312. 
 The defense of non-utility, in like manner, is beset with danger; 
 for one may not justify an act in one breath and deny its commis- 
 sion in the next. 
 
 DEMURRER, §§323-327. 
 
 A demurrer which attacks the validity of a patent on its face 
 is a proper pleading where the invalidity of the patent is evident. 
 But such a demurrer will be sustained only when it is clear that no 
 evidence could be adduced which could possibly overcome the fatal 
 defects visible to the naked eye. It is to be noted, however, that 
 there is a tendency to extend the range of judicial notice in deciding 
 upon a demurrer of this character. It is believed that this tendency, 
 while it has the merit of hastening determination and saving 
 expense of litigation, is one fraught with danger. Knowledge 
 is never exact; memory is treacherous; and often we discover a 
 supposition upon which we have traveled half a lifetime to be 
 founded in error. It is only when this judicial prerogative concerns 
 itself with the plainest of propositions that it is within the limits 
 set by experience. 
 
 Demurrers and other special pleadings are abolished by the 
 new Supreme Court Equity Rules. 
 
 DESIGNS, §§328-337- 
 
 Between the opinion in Gorham v. White, 81 U. S. 511, and 
 that in Smith v. Whitman, 148 U. S. 674 — the latter modifying
 
 24 THE FIXED LAW OF PATENTS 
 
 the former — we may approach the essential characteristics of 
 a patentable design. It is clear that the foundation of a patentable 
 design must be something more than mere mechanical skill, some- 
 thing more than artistic arrangement. It must be a distinct 
 product of the brain, as much as the invention of a machine, though 
 not from the same corner of the brain. It has been said that the 
 test of infringement is whether the design in question would, to 
 the eye of the ordinary observer, appear to be the same as the 
 design of the patent. Such a rule is proper in the case of a trade- 
 mark; but it is referred to here as showing how the courts have, 
 at times, wholly missed the mark in the consideration of the essen- 
 tials of a true design. A true design appeals to something more 
 than the eye in the ordinary sense of that term. It appeals through 
 the eye to the artistic consciousness — not by any particular 
 feature, contour or configuration, or even a collocation of elements, 
 as in the case of a trademark — and awakens a response in the 
 mind of the person possessed of a sense of art. If it falls short of 
 this, if to the person with this sense it is merely peculiar or orna- 
 mental, it is not the creation by one mind of that which awakens 
 a response in the mind of another, which constitutes true design 
 invention. It follows, necessarily, that so-called " mechanical " 
 designs are not patentable, and that one may not reinforce a mere 
 trademark by patenting it as a design. 
 
 The penalty provision of the amendment of Feb. 4, 1887, is 
 narrowly limited by the clause " knowing that the same has been 
 so applied." This seemingly limits the penalty to willful manu- 
 facturer or copyist; and excuses the innocent purchaser or dealer. 
 Gimble v. Hogg, 97 Fed. 791, § 836. And it also appears from the 
 decision in that case that the notice necessary to charge a person 
 with the penalty must be something more than the ordinary 
 notice of marking the design patented. 
 
 DISCLAIMER, §§339345. 
 
 The distinction between a disclaimer and a reissue is, broadly 
 speaking, that the one limits and the other corrects. The object 
 of a disclaimer is to enable a patentee who, through inadvertence, 
 accident or mistake, has claimed more than he should, to avoid 
 having his patent fall under the statutory defenses. We need not 
 consider the effect of the failure to disclaim before suit, since that 
 question has arisen under the title of costs. (§ 274). It is evident 
 that the patentee, in a case where the necessity of a disclaimer is 
 not evident on the face of the patent in view of the prior art, 
 may await the decision of an appellate tribunal. Gage v. Herring,
 
 BRIEF SURVEY 25 
 
 107 U. S. 640, and Thompson v. Bushnell, 96 Fed. 238, both under 
 § 340. But while the courts give the patentee the benefit of every 
 doubt as to the necessity of disclaiming, they look with little patience 
 upon him who seeks to use this provision, especially designed for 
 his protection, as a means for broadening or extending the scope 
 of his claim. Hailes v. Albany, 123 U. S. 582, § 344. 
 
 The rule requiring disclaimer before decree in case one claim is 
 held valid and another void is followed in some circuits and repudi- 
 ated in others (see § 344). This must remain an unsettled question 
 until pronounced upon by the Supreme Court. 
 
 DISCOVERY, §§ 346-347. 
 
 The two quotations under this title should be contrasted with 
 the majority opinion in Westinghouse v. Boyden, 170 U. S. 537, 
 § 686, especially the following: 
 
 " For such discoveries and such inventions the law has given the 
 discoverer and the inventor the rii^ht to a patent as a discoverer 
 for the useful art, process, method of doing a thing he has found, 
 and as inventor for the means he has devised to make his discovery 
 one of actual value. Other inventors may compete with him for 
 ways of giving effect to the discovery, but the new art he has found 
 will belong to him and those claiming under him during the life of 
 his patent." — Telephone Cases. 
 
 " To say that the patentee of a pioneer invention for a new 
 mechanism is entitled to every mechanical device which produces 
 the same result is to hold in other language, that he is entitled to 
 a patent for his function." — Westinghouse Case. 
 
 While these statements are, theoretically, perfectly reconcilable, 
 the apphcations made in these two cases are in absolute contradic- 
 tion. Bell did not patent the undulatory theory of sound; neither 
 did Westinghouse patent the discovery in pneumatics which made 
 his invention possible. Both patented means for utilizing their 
 discoveries. 
 
 This is not the first time the writer has criticized the Westing- 
 house decision, nor will this be the last; for while he is not and 
 never has been in any way concerned with the event of that con- 
 troversy-, he agrees with the four dissenting Supreme Court justices 
 and many of our ablest patent lawyers in regarding it as contrary 
 to the spirit and trend of other decisions, as depriving great 
 genius of its just reward, and as putting a premium upon that sort 
 of thievery that comes to the front and brazenly makes its claim 
 under an improvement patent nearly every time a gjeat inventor 
 has explored far and added a large domain to the known and useful 
 in life.
 
 26 THE FIXED LAW OF PATENTS 
 
 In some degree, at least, the Westinghouse decision has been 
 modified, and the criticisms above have been justified since they 
 were written, by the Expanded Metal Case (Expanded v. Bradford, 
 214 U. S. 366, § 817). A discovery may be a " happy thought," 
 as in the Expanded Metal Case, or it may be a pure accident, By- 
 erly v. Sun, 184 Fed. 455, § 347. 
 
 DIVISIONAL PATENTING, §§ 348-355. 
 
 The underlying principles of this subject came up for considera- 
 tion and statement before Judge Taft in Thomson-Houston v. 
 Ohio, 80 Fed. 712, § 350. Notwithstanding the fact that, in another 
 circuit, another brilliant mind has differed therefrom, it will be 
 assumed, as a very safe position, that the law laid down by Judge 
 Taft will not be disturbed. It is sufficient to refer to that opinion 
 for all that it covers. It is clear that one application for a patent 
 may be a continuation of a former application, Model Bottling 
 Mach. V. Anheuser-Busch, 190 Fed. 573, § 351, and that the dates 
 of filing of several co-pending applications ripening into patents 
 cannot be used one against another to anticipate. Century Electric 
 V. Westinghouse, 191 Fed. 350, §§ 349, 354. 
 
 There are cases, like some of those under §§ 352 and 355, where 
 it is evident that the aim of the patentee has been to extend or 
 strengthen his monopoly without additional or further invention. 
 Now, these are not really cases of divisional patenting at all, but 
 attempts at justification of double patenting under guise of divis- 
 ional patenting. The moment this situation is perceived it is easy 
 to apply the proper rules — the rules of double patenting — 
 without any strain upon the rules of divisional patenting. 
 
 DOUBLE PATENTING, §§ 356-361. 
 
 A deal of unnecessary discussion has occurred under this title. 
 When the Supreme Court said in Suffolk v. Hayden, 70 U. S. 315, 
 that if two patents be granted for the same invention the latter 
 is void, there was nothing more to say. The court did not say that 
 the rule applied only to patents to different applicants or that it 
 did not apply to two patents to the same applicant. But inasmuch 
 as it was not clearly understood as applying to cases of two patents 
 for the same invention to the same applicant, the court repeated 
 and specified and particularized the rule in James v. Campbell, 
 104 U. S. 356; McCreary v. Penna. 143 U. S. 459; and in the 
 Barbed Wire Case, 143 U. S. 275, (all under § 356) until it would 
 seem that so simple, self-evident, and so unavoidable a rule should 
 have percolated down through the intellects of our profession.
 
 BRIEF SURVEY 27 
 
 But, alas, it has not so done; and to this day our courts are obhged 
 to tell us the old, old story every time we come into court with a 
 patent which has been taken out to strengthen the redoubt of a 
 former patent to the same inventor. The writer speaks feelingly 
 and from experience upon this subject. 
 
 But it is not always clear which of two patents is the senior. 
 It has been held that, where there is no other guide, the priority 
 of numbering must control. Crown v. Standard, 136 Fed. 841, 
 § 359. But in Electric v. Brush, 52 Fed. 130, § 361, it was held that 
 the complainant might elect between the two. It would seem — 
 although it has not been so held — that, since a disclaimer in the 
 earlier patent made by the inventor cannot make the later patent 
 good, by parity of reasoning of two patents of the same date to the 
 same inventor the Government issuing both' grants should be barred 
 from disclaiming the grant to the patentee of the broader of the two 
 patents. 
 
 DRAWINGS, §§ 362-363. 
 
 Only one remark need be made in connection with the appellate 
 rulings on this subject. Not only is it unnecessary that the drawings 
 should be working drawings, but it is not even necessary that they 
 should be pictorial of the apparatus of the patent. Drawings 
 speak a universal language. The American engineer reads a 
 Japanese drawing with no knowledge of the language or even the 
 reference characters employed, and vice versa. Symbolism has 
 become to a large degree universal and uniform, especially so in 
 electrical engineering. It is enough if the drawing contributes its 
 part and agrees with the description in disclosing the invention to 
 one skilled in the art. 
 
 EMPLOYER AND EMPLOYEE, §§ 364-369. 
 
 If the rule of Agawam v. Jordan, 74 U. S. 583, § 368, that persons 
 employed, as much as employers, are entitled to their own inde- 
 pendent inventions, and the further rule of the same case quoted 
 under § 369, that suggestions from another, made during the 
 progress of experiments, in order that they may be sufficient to 
 defeat a patent, * * * must have furnished such information to 
 whom the communication was made that it would have enabled 
 an ordinary mechanic, without the exercise of any ingenuity and 
 special skill on his part to construct and put the improvement 
 in successful operation — if these rules are borne in mind, the ground 
 is cleared materially. The right to patent an invention and the 
 right to its use are two quite separate matters. The suggestion
 
 28 THE FIXED LAW OF PATENTS 
 
 of the idea of means — the conception which constitutes the act 
 of invention — may originate with either party ; and with which- 
 ever party this conception originates, provided only it is a com- 
 pleted conception requiring only ordinary mechanical skill to put 
 it in terms of materials, there lies the right to patent. At the 
 same time the right to the title of the patent may have, by agree- 
 ment or in consequence of the inter-relation of the parties, passed 
 entirely to the other party, or a lesser interest may have been 
 established. 
 
 An implied license arising under the various conditions disclosed 
 in § 366 is essential to industrial progress. If the rule were other- 
 wise, if on the one hand employees could "control the monopoly 
 of the improvements occurring in the regular course of business, 
 the manufacturer would be stopped in his progress; if, on the other 
 hand, all rights were denied employees, much of the impetus of 
 progress would be lost. The question of an implied license is 
 further considered under § 756, and the general rules established 
 by the circuit courts of appeals and there quoted should be read. 
 Generally speaking, a shop license arising out of employment 
 relations, is personal and non-assignable; but such right may 
 be succeeded to by a corporate successor if the inventor acquiesces 
 therein. Lane v. Locke, 150 U. S. 193, § 366. It is clear that a 
 contract which robs an employee of all right to future invention is 
 unconscionable (§ 365) ; and contracts between employer and 
 employee are not divorced from the governing principles of equity. 
 
 EQUITY, §§ 370-372. 
 
 Two comparatively recent cases show how a court may or may 
 not apply the principles of equity to the end that strict adherence 
 to case and precedent may not defeat justice or smite the sense of 
 right. In the case of Nat. Wire Bound Box v. Healy, 189 Fed. 49, 
 §371, the Circuit Court of Appeals, passing over the case law by 
 which it^ might have decided the suit and defeated the monopoly 
 of the patents in question, applied the broad principles of equity 
 to the warring factions — as might be done between Avarring co- 
 partners — and made each do his share toward restoration of peace 
 and fair dealing, and thus saved an important series of inventions. 
 In the case of Henry v. Dick, 224 U. S. 1, § 898, the Supreme Court, 
 by a literal following of case and precedent, and not applying the 
 broad rules of equity, rendered a decision which called forth one 
 of the strongest of dissenting opinions and aroused public criticism 
 nation wide. The record made it plain — and there appeared no 
 effort to deny the fact — that the Dick Company was seeking to
 
 BRIEF SURVEY 29 
 
 perpetuate its monopoly in an article the patent for which had long 
 since expired, and this it was seeking to do by a hard-and-fast fol- 
 lowing of the Button Fastener Case. The Supreme Court handed 
 down a perfectly logical case-law decision; and by so doing paved 
 the way for a reactionary statute or ruling at some near day which 
 will demolish the wholesome rule (properly administered) of the 
 Button Fastener Case. This it did when, as I see it, the facts would 
 have justified the court in saying to the Dick Company: " You are 
 not here with clean hands; you have been attempting to extend 
 your expired monopoly by a contract arrangement which, in these 
 circumstances, is miconscionable. You claim to be seeking equity, 
 but you are not doing it. You are attempting to invoke the power 
 of the courts to help you drive out of business a competitor who is 
 making that which you once monopolized but have surrendered 
 to the public upon the expiration of your patent." Such broad 
 and equitable treatment would have been a happy disposition of 
 an ugly question, the dealing-out of justice, and the prevention of 
 recrudescence of a problem which will not remain quiet until satis- 
 factorily settled by judicial decision or statutory enactment. 
 
 Upon this subject nothing need be added, except to refer to the 
 specific subjects considered under §§ 717-720. 
 
 EQUIVALENTS, §§ 373-380. 
 
 Undoubtedly the essentials of an equivalent stated by Robinson 
 and approved in Duff v. Forgie, 59 Fed. 772, § 373, are well stated 
 so far as mechanical elements are concerned; but it is doubted if 
 the second essential therein named is applicable at all times to a 
 chemical combination. Tyler v. Boston, 74 U. S. 327, § 373. At 
 least this is true: Since the range of equivalency varies directly 
 with the qualit}' or degree of invention, making the doctrine a rule 
 of judgment rather than a final test, it follows that a kindred 
 resilienc}^ exists as to the construction of essentials. Not that the 
 courts will disregard these essentials, but that they will determine 
 their presence or absence in the same spirit the invention is ap- 
 proached. 
 
 This doctrine, built up step by step by the courts, is, perhaps, 
 the most beneficent of all rules. It gives the court the power to 
 accord to a generic invention the reward it deserves. It also gives 
 the court the much-needed power to limit minor inventions and 
 improvements to a monopoly commensurate with the small addi- 
 tion made to the sum-total of human knowledge. 
 
 As to identity, the rule in Union v. Murphy, 97 U. S. 120, § 379, 
 covers the ground as completely as any single definition can. But
 
 30 THE FIXED LAW OF PATENTS 
 
 the real problem in applying this doctrine, just as in the determina- 
 tion of anticipation or infringement, resides in the lack, in most 
 cases, of an obvious similarity of the elements or lack of absolute 
 identity of function, or, often in the lack of both these conditions. 
 In other words, it is not the application of the doctrine, but the 
 marshalling of the conditions precedent to its application, that 
 renders the problem serious. 
 
 ESTOPPEL, §§ 381-387. 
 
 The general principles of estoppel are not peculiar in patent 
 cases. Such principles as that the estoppel must be definite, 
 mutual, and definitely proved are all well known. An interference 
 adjudication, in the absence of privity, does not operate as an 
 estoppel. A vendor-patentee and a licensee are both estopped 
 to deny the validity of a patent; but to what extent either may 
 limit the scope of the patent by showing the prior art is a delicate, 
 and as believed, an unsettled question. Smith v. Ridgley, 103 Fed. 
 875, § 384; Elgin v. Creamery, 80 Fed. 293, § 385. 
 
 A former licensee may, after the expiration of the license, act 
 as a stranger toward the patent. Stimpson v. Stimpson, 104 Fed. 
 983, § 385. As has been remarked under adjudications, the rule 
 of privity is so strict that the conclusiveness upon a real party 
 behind a prior litigation is often hard to establish, since, in such a 
 case, it is difficult, if not impossible, to establish mutuality. Since 
 an estoppel bears some of the characteristics of a forfeiture, it is 
 not looked upon with favor. 
 
 EVIDENCE, §§388-411. 
 
 Of course, the patent itself is prima facie evidence of the existence 
 of the monopoly, and that it was created in due form of law; but 
 it must never be assumed that this fact, nor the fact of large utility, 
 nor long acquiescence, nor a long and vigorous ordeal in the Patent 
 Office, counts for anything to speak of in the face of a substantial 
 attack by a defendant. 
 
 While the defense of anticipation must be made with the 
 statutory notice, the practice of extending the privilege of showing 
 the state of the prior art without notice (cases under § 389) render 
 it possible to make a substantial defense by so limiting the patent 
 as to defeat the charge of infringement in many cases. 
 
 As stated under the title anticipation, the evidence to show 
 invahdity by prior patent, publication, or use must be indubitable. 
 The common practice of putting in evidence under regular notice
 
 BRIEF SURVEY 31 
 
 a great array of prior patents is not without danger. Forsyth 
 V. Garlock, 142 Fed. 461, § 390. The better practice is to introduce 
 only those of distinctly anticipatory character under notice, and 
 introduce separately such as are purely concerned with the prior 
 art. The plaintiff or complainant may rebut, but the defendant 
 may, in the discretion of the court, be denied surrebuttal on a 
 question of anticipation. St. Paul v. Starling, 140 U. S. 184, § 392. 
 
 The method of taking depositions, either in law actions or in 
 equity, must follow Federal law and practice. §§ 395, 401. The 
 evidential value of an assigimient duly recorded has been reviewed 
 under assignment, § 158. The cases of Elevator v. Crane, 76 Fed. 
 767, and Mayor v. American, 60 Fed. 1016 under that title should 
 be read in connection with Paine v. Trask, 56 Fed. 233, under 
 § 396. 
 
 The rule as to exhibits in Overweight v. Improved, 94 Fed. 155, 
 § 397, is certainly one to be exercised with great care. In this age 
 of specialization, complexity and refinement in engineering the 
 court would be assuming a great burden and a large risk in many 
 cases should it follow this rule, take to itself the province of the 
 expert, and give to an exhibit a value in evidence perhaps un- 
 warranted under proper explanation and interpretation. And 
 this leads to a remark concerning expert evidence. The function 
 of the expert is to give evidence which will enable the court to 
 determine matters of law and fact, (Norton v. Jensen, 49 Fed. 
 859, § 398,) and not to usurp the functions of counsel or court; 
 (Osgood V. Metropolitan, 75 Fed. 670, § 398) and the too common 
 idea that the value of expert evidence lies in a count of noses 
 deserves the reprimand to be found in American v. Cleveland, 158 
 Fed. 978, § 398. 
 
 In concluding this subject the writer wishes to repeat the advice 
 he received when a student and which has been of great value: 
 " Remember that every great law-suit turns upon a single issue. 
 Find the pivot and direct all your energy to swing the case your 
 way upon it. Do not be led away; direct your evidence and your 
 argument to the pivotal point." These were the words, as nearly 
 as they can be recalled after the lapse of nearly forty years, of one 
 of our greatest patent lawj^ers, one of our great judges, and the 
 greatest scholar of the law I have ever known — Judge Henry R. 
 Selden. 
 
 EXPERIMENT, §§412-417. 
 
 Absolutely nothing need be added to the quotation from Eastman 
 V. Mayor, 134 Fed. 844, given under § 412.
 
 32 THE FIXED LAW OF PATENTS 
 
 FOREIGN PATENT, §§ 419-424. 
 
 This entire subject, confused as it has been rendered by the 
 bungling statements of the act of 1870 and later by the hardly 
 more lucid amendment of 1897, and finally utterly changed in aspect 
 by the act of 1903, has, fortunately, been simplified and largely 
 set at rest by the decision of the Second Circuit in Welsbach v. 
 Apollo, 96 Fed. 322, § 420, and the First Circuit in Sawyer v. Car- 
 penter, 143 Fed. 976, § 420. The Welsbach case seems to close the 
 controversy over the old law; the Sawyer case seems to mark the 
 line between the old and the new. To these pronouncements 
 nothing need be added except to refer to the decision in Heap v. 
 Tremont, 82 Fed. 449, quoted under § 424, and the remarkable de- 
 cision of Hennebique v. Myers, 172 Fed. 869, §421, w^here each 
 of the three judges wrote an opinion, no two of which are in agree- 
 ment. 
 
 FRAUD, §425. 
 
 The less said upon this subject the better. Experience teaches 
 that those cases where fraud can be proved are few and trivial; 
 that those cases, few but not trivial, fail in the proofs. 
 
 FUNCTION, §§426-427. 
 
 It is clear that a function cannot be claimed; but as said in 
 Continental v. Eastern (§ 427) the distinction between a practically 
 operative mechanism and its function is difficult to define. Here 
 is the field of contention. Once determined to be functional or 
 non-functional the claim is readily disposed of; but a reading of 
 all the cases leave court and counsel without criteria for deter- 
 mining whether a claim is or is not functional. The signal instance 
 to illustrate this point is, of course, Westinghouse v. Boyden, 
 170 U. S. 537, § 686. 
 
 IMPROVEMENT, §§430-444. 
 
 An improvement is one of the patentable classes provided by 
 the statute. (Sec. 4886). Except for the particular meaning 
 given this term, it might be said that any invention not a broad 
 or basic discovery would be an improvement; but such is not the 
 meaning commonly given the term. The courts generally use it 
 as denoting an invention which marks an advance in a known art. 
 It may be great or small — in fact, an improvement may be truly 
 generic, revolutionary in an art, and entitled to a range of equiva- 
 lency substantially as great as a generic invention. Chicago v. 
 Miller, 133 Fed. 541, §435; Columbia v. Kokomo, 143 Fed. 116,
 
 BRIEF SURVEY 33 
 
 § 435; Wagner v. Wycoff, 151 Fed. 585, § 435. So it is evident no 
 strict definition of an improvement may be given, although the 
 statement in McCormick v. Talcott, 61 U. S. 402, § 434 defines an 
 ordinary narrow improvement. 
 
 A mere carrying forward, a mere perfecting in a mechanical 
 sense, or mere improvement in the product do not constitute 
 patentable improvement. To be patentable there must be the 
 exercise of the inventive faculty which lifts it above mechanical 
 skill. A reasonably good distinction is drawn in Thomson-Houston 
 V. Lorain, 117 Fed. 249, §437. As will be seen, when we come to 
 the tests of invention, utility and use go far in determining a doubt- 
 ful case. Indeed, utility may save an improvement from falling 
 over the line of mechanical skill; and the range of equivalency 
 which Avill be accorded an improvement patent is often best deter- 
 minable by the part the patent has had in the useful arts. This 
 subject recurs with those of invention and infringement, and is 
 one of large importance. Reference to those titles should be had. 
 
 INFRINGEMENT, §§445-532. 
 
 Mo general definition, no general rule, no general test of infringe- 
 ment exists. The number of issued patents has passed the million 
 mark. Each patent has afforded opportunity for a condition of 
 infringement in some sense differing from that of ever}' other patent. 
 Each patent is supposed to disclose a novel combination or crea- 
 tion, and every infringement suit is a new problem. While the 
 various rules and tests are of large value in the interpretation and 
 decision, it is only when one follows the methods of such master 
 minds as have been able to rise above fitting the facts to a rule, 
 mastered the facts, decided the question in the quiet of their own 
 consciences, and then, perhaps, found a rule to ornament their 
 wisdom, that justice is done. In taking a general view of the many 
 rulings on this subject they -u-ill be regarded as guides, rather than 
 fixed rules, and will be taken up in much the same order in which they 
 are presented in the body of the work. 
 
 An addition to a combination, construction or process avoids 
 infringement only when such addition destroys the unity of the 
 invention and makes it something else. So with mere change of 
 form, impairing or increasing efficiency, or change of location or 
 other modification which does not destroy the essence of the inven- 
 tion does not avoid infringement. But ever since O'Reilly v. 
 Morse, 15 How. 62, § 459, it has been clear that, where form is 
 the essence of invention, change of form does avoid infringement. 
 Change of the number of parts or substitution of one material
 
 34 THE FIXED LAW OF PATENTS 
 
 for another are subject to the same rule. The rule as to combina- 
 tions is well stated in U. S. v. Berdan, 156 U. S. 552, § 464. A com- 
 bination, to be patentable, must possess the qualities of inter- 
 action which effect a new or different result from that of any ele- 
 ment or the sunnnation of the separate results of all the elements 
 — else it is a mere aggregation. It is only when (1) something is 
 added which changes the action and function of the combination; 
 or (2) when something is omitted which produces such change; 
 or (3) when some element is substituted which cannot be held an 
 equivalent for that which was omitted, that infringement is avoided. 
 And here, of course, we are bound by the limits the patentee has 
 set in his claim. As said in Fay v. Cordesman, 109 U. S. 408, § 466, 
 if the patentee specifies any element as entering into the combina- 
 tion, either directly by the language of the claim or by such a refer- 
 ence to the descriptive part of the specification as carries such 
 elements into the claim, he makes such element material to the 
 combination, and the court cannot declare it to be immaterial. 
 But in applying this rule, we have no right to forget the rule of 
 equivalency and of interpretation, as was done in Kinzell v. Littrell, 
 67 Fed. 926, § 473, and declare unqualifiedly that " it is immaterial 
 that the elements claimed in the patent of plaintiff and omitted 
 in defendant's device are not of the essence of the real invention." 
 The rule of equivalency as applied to combinations has been said 
 to be construed most strongly against him who alleges infringe- 
 ment. Erie v. American, 70 Fed. 58, § 468; but this is in contra- 
 diction of the Supreme Court rule in Gill v. Wells, 89 U. S., 1, § 468, 
 and of nearly every other case quoted under that section. The 
 distinction between claims for combinations and claims not strictly 
 so regarded is generally academic and artificial rather than real in 
 most cases; and if we were to have one rule for combinations and 
 another for the few claims that have not that characteristic, we 
 should add confusion to no purpose. 
 
 Before passing to the next subject in order, a word should be 
 added concerning assignments. As between the assignor and 
 assignee of a territorial right the rules of Keeler v. Standard, 157 
 U. S. 659, § 450; Hobble v. Jennison, 149 U. S. 355, § 512, and 
 Simpson v. Wilson, 4 How. 709, § 175, permit the sale of articles 
 outside the territory assigned and vice versa. The effect of these 
 rules can be avoided between the parties only by specific agreement, 
 and as to third parties limitation may be imposed only by bring- 
 ing such party within the terms of such limitation by some such 
 restriction as that of Heaton v. Eureka, 77 Fed. 288, as construed 
 and approved in Henry v. Dick, 224 U. S. 1, § 898 and National v.
 
 BRIEF SURVEY 35 
 
 Schlegcl, 126 Fed. 733, §899, The general principles of estoppel 
 apply alike to inventor-assignor and assignee. It does not lie in 
 the mouth of an inventor to attack that which he has assigned, 
 though he is not estopped from denial of infringement. So with 
 the assignee holding a title or interest under the patent. A licensee 
 may not use his privilege to make and store up large quantities of 
 articles, terminate the license, and then market the articles so made 
 and escape infringement. Pelzer v. Binghamton, 95 Fed. 823, § 510. 
 
 The general rules of contributory infringement have been mainly 
 settled by Judge Taft in Thomson-Houston v. Ohio, 80 Fed. 712, 
 § 477. In this review of general principles, to do otherwise than to 
 call attention to the wide divergency of opinion between Cortelyou 
 V. Johnson, 145 Fed. 933 and Henry v. Dick, 224 U. S. 1 (both 
 under §477), and to invite a comparison between the Dick Case 
 and Leeds v. Victor, 213 U. S. 325, §474, is unnecessary. Courts 
 and attorneys alike differ upon this question. With the belief 
 that it is as yet to be finally settled, I make no further 
 comment. 
 
 Corporations as infringers are subject to the same rules as 
 natural persons. The rule as to personal liability of an officer or 
 director appears to have undergone a change. The old tort feasor 
 rule of such cases as Graham v. Earle, 92 Fed. 155, § 481, and 
 National v. Leland, 94 Fed. 502, § 481, seems to have been largely 
 abandoned. Western v. North, 135 Fed. 79, §481, Cazier v. 
 Mackie-Lovejoy, 138 Fed. 054, §481, and Scott v. Fisher, 145 
 Fed. 915, § 481. And it would seem a sound rule that an officer 
 of a joint-stock company is not personally liable for the acts of 
 infringement of the company. National v. Stolts, 135 Fed. 534, 
 § 480. But it is believed that, as the general tendency is and must 
 continue to be to look beneath the device and shield of corporate 
 fiction and reach the individual wrongdoer, the vigorous statement 
 in We.ston v. Empire, 177 Fed. 1007, §481, is significant of future 
 trend. 
 
 Division or union of elements, and in the case of additions or 
 sul)tractions which do not destroy the unity of the invention, 
 does not avoid infringement; but there are cases, such as stated 
 in Dunlap v. Willbrandt, 151 Fed. 223, §485, where division or 
 union would destroy the law of the structure or go beyond the limits 
 set by the inventor in his claim. 
 
 The question of infringement is one of fact. The questions of 
 construction which precede it are of law. The evidence, therefore, 
 may bear upon either proposition. The conduct of the defendant 
 may have some weighty but it can never be controlling (§ 487) ;
 
 36 THE FIXED LAW OF PATENTS 
 
 and it is never enough to shift the burden of proof. Evidence of 
 identity of function is very persuasive, but until reinforced by a 
 construction of the elements of the claim and those of the alleged 
 infringement to establish ground for identity it cannot be con- 
 clusive. In short, the evidence of infringement must be specific 
 and cannot be inferred. Imhauser v. Buerk, 101 U. S. 647, § 494. 
 Once established, a single act is sufficient. Hutter v. De Q. Bottle, 
 128 Fed. 283, § 494; but proof of threatened acts is insufficient. 
 Gray v. Grinberg, 159 Fed. 138, § 494. Collateral matters, such 
 as utility (§ 495) or co-pendencj^ of applications in, the Patent 
 Office without interference (Mann?;. Hoffmann, 104 Fed. 245, § 496) 
 or the issue of a patent to the defendant (Hardison v. Brinkman, 
 156 Fed. 962, § 496) may have some corroborative effect, but 
 they are not dynamic. Quite as important as these rules are 
 those which guide in the construction of the claim and of the 
 infringement complained of. These have arisen under anticipa- 
 tion, §§ 71-77; claims, §§ 188-230; evidence, §§ 389-393 and 
 401-411; and will also arise under invention, §§620-638, and in 
 cases of reissue under §§ 871-879. 
 
 The moment a generic invention makes its impress upon the 
 industrial world, a swarm of parasites is hatched, and they begin 
 their attack. It is to screen the real public benefactor, in some 
 small degree, from the onslaught of these insects that such rules 
 as that of McCormick v. Aultman, 69 Fed. 371, § 497, are tlesigned. 
 And it is proper that a generic patent should not be subject to the 
 presumptions against its infringement which attach to lesser and 
 mere improvement patents, Century Electric v. Westinghouse, 
 191 Fed. 350, § 497. 
 
 While the Government may not be subjected to the ordinary 
 processes of infringement prosecution, it may be reached through 
 the Court of Claims, and compensation awarded, even if the pro- 
 hibition of injunction does not lie. (§ 498). By the act of June 25, 
 1910, the Court of Claims was given jurisdiction of infringement 
 suits against the Government, and the Government given the same 
 right of defense as an individual infringer (see § 428). And the 
 scope of this enactment has been passed upon by the Supreme 
 Court, Crozier v. Krupp, 224 U. S. 290, § 498. 
 
 The question of identity has been summed up in a single sen- 
 tence: '' There must in the ordinary patent be identity of means 
 and identity of operation as well." American v. Cimiotti, 123 Fed. 
 869, §502. And the rule in Thomson v. Western, 72 Fed. 530, 
 § 503, is sound as well as clever. 
 
 The subject of infringement by importation or exportation is
 
 BRIEF SURVEY 37 
 
 comprised in a few cases, and the rules cited under § 505 are com- 
 prehensive. 
 
 There may be infringement by an improvement or of an improve- 
 ment. This was settled as long ago as Evans v. Eaton, 7 Wheat. 
 356, § 506. In the case of infringement by an improvement there 
 generally arises the question of the scope of the prior patent and 
 the application of the doctrine of equivalents. When the alleged 
 infringement is of an improvement, we may have both the 
 question of equivalency as respects the prior patent and that 
 of limitation of the improvement patent by the prior art, including 
 the prior patent. W^here the case is of improvement against im- 
 provement the rule well stated in Hies v. Barth, 136 Fed. 850, 
 § 507, that the presumption is that each is an independent im- 
 prover in a common, open field, will go far in simplifying the 
 issues. 
 
 In the earlier days, when an infringer was regarded as a tort 
 feasor with instincts not far removed from the criminal, the question 
 of intent had much significance — silent if not other^\dse. With 
 the passing of time the infringer has lost somewhat the garb of a 
 brigand, is held up to a higher standard of knowledge and business 
 conduct, is presumed to know the law better than ever before, is 
 presumed to know the state of the art and the existing patents 
 relating to his business, and is neither coddled nor punished along 
 moral lines. (§ 508). 
 
 The grant of a right under a patent must carry enough with 
 it to insure the enjoyment of the grant. If one buys the right to 
 use a machine that he may reap benefit from selling the product, 
 the grantor may not stop him because he holds a patent upon the 
 product; but the reverse condition would not follow. If a person 
 buys the right to use or sell a product or article of manufacture 
 and does not secure the right to use the process or machine, he 
 cannot justify his lack of foresight by infringing the process or 
 machine. Here, again, the doctrine of Henry v. Dick, 224 U. S. 1, 
 § 510, which clearly establishes possible divorcement between prop- 
 erty right in a machine and property right in the monopoly covering 
 the machine, seems a contravention of substantive law. 
 
 The infringement of a process is subject to the same rules as a 
 machine, so far as they may be applied — such as the omission 
 or addition of an element or the use of an equivalent. But it is 
 evident that, as a process consists, in most cases, of a series of 
 steps or a series of chemical actions or material modifications which 
 cannot be observed or compared by the eye of the court; and since 
 also the function or result itself is, often, not distinguishable by
 
 38 THE FIXED LAW OF PATENTS 
 
 the naked eye, the ordinary tests of mechanical identity of elements 
 or function cannot be applied. It follows that, in such cases, the 
 evidence must be largely that of experts and persons skilled in 
 the art. Matheson v. Campbell, 78 Fed. 910, § 519. And it is 
 due to this obscurity that the rule of equivalents is somewhat 
 modified. As was said in Tyler v. Boston, 74 U. S. 327, § 373, 
 " the term equivalent, when speaking of machines, has a certain 
 definite meaning, but when used in regard to chemical action of 
 such fluids as can be discovered only by experiment, it only means 
 equally as good." Here the test as expressed by the words in italics 
 passes over from an independent comparison of the elements to 
 a comparison of results. But it must not be assumed that this test 
 applies to those process cases where analysis is plain and free from 
 empiricism. 
 
 The use or sale of a product, the production of which involved 
 the infringement of a machine or process, when the product itself 
 is not patented as an article of manufacture, is not infringement. 
 Welsbach v. Union, 101 Fed. 131, § 521. 
 
 In Stimpson v. Railroad, 4 How. 380, § 522, the rule was laid 
 down that an infringement cannot be sued for which took place 
 prior to the surrender of the original patent. At that time the 
 rule was that a surrender for the purpose of obtaining a reissue 
 extinguished all rights which existed under the original grant. 
 Moffat V. Garr, 66 U. S. 273, § 887. But in Peck v. Collins, 103 
 U. S. 660, § 887, the question whether a surrender under the act 
 of 1870 extinguished all rights was raised but not answered. The 
 court went a step farther in Allen v. Culp, 166 U. S. 501, § 887, and 
 in McCormick v. Aultman, 169 U. S. 606, §887, answering the 
 question certified by the Circuit Court of Appeals in McCormick 
 V. Aultman, 69 Fed. 371, § 887, held distinctly that when a reissue 
 was sought and refused as to certain claims, on the return of the 
 original patent such claims were not thereby rendered void. Now, 
 taking this change of holding, what is its effect as to infringement 
 occurring prior to surrender and reissue? It is thought that there 
 is no appellate determination of this question. 
 
 What constitutes infringement by carrying repairs to the point 
 of reconstruction is well illustrated in Goodyear v. Jackson, 112 
 Fed. 146, § 524. The ultimate test is whether the act is a rehabilita- 
 tion or a re-creation of the idea of means. Wilson v. Simpson, 9 
 How. 109, § 524. In the case of the bale tie of American v. 
 Simmons, 106 U. S. 89, § 524, or the knitting needle of the Goodyear 
 case, the infringement is evident. So it would be in a case like 
 Pacific V. Alaska, 100 Fed. 462, § 523, where nothing of the old
 
 BRIEF SURVEY 39 
 
 machine remained but the legs. But between these lies debatable 
 ground, like that of ]\Iorrin v. White, 143 Fed. 529, § 523. There 
 it would seem clear that the replacement of a single tube of the 
 battery would be legitimate repair; but as the essence of the 
 invention resided in the emplacement of the entire battery of tubes, 
 then a replacement of the entire battery would be a re-creation, 
 and therefore infringement. Such a case illustrates how narrow the 
 margin between legitimate repair and infringement may be. 
 
 The tests of infringement naturally run parallel with the rules 
 of evidence of infringement. The anticipation test — " that which 
 infringes if later anticipates it earlier," and vice versa, which has 
 been considered at length under anticipation, is a test, not a final 
 test by any means, but yet one which has its proper uses. The 
 most general and practical test is t o compare the two devices in con- 
 nection with a comparison of results produced. Cimiotti v. 
 American, 198 U. S. 399, § 526. The test of interchangeability, 
 where element for element may be substituted, is wellnigh con- 
 clusive; but such substitution is not ordinarily obvious or easy. 
 Where the plain rules of equivalency may be employed to assist in 
 such substitution the rule is applicable. As utility ma}-^ turn the 
 scale in a doubtful case of invention, so it may, if great care is 
 exercised, illuminate the question of infringement. But it must 
 be remembered, as said in Winans v. Denmead, 15 How. 330, § 530, 
 that success of complainant and defendant, the one compared 
 with the other, is no test of the question of infringement. 
 
 Defenses to the charge of infringement have been, in some 
 measure, considered under infringement §§ 308-322. Nothing 
 further need be added, since the circumstances surrounding each 
 case must determine the character and course to be taken. 
 
 INJUNCTIONS, §§ 533-579. 
 
 Injunctions m patent causes are not marked by departure from 
 general rules. The statute gives the " power to grant injunctions 
 according to the course and principles of courts of equity," (R. S. 
 4921) and specifies no further. The same distinction exists between 
 prehminary or provisional injunctions and final or perpetual in- 
 junctions as in other fields of equitable jurisdiction. But this dis- 
 tinction — this definite line of separation — is too often lost sight 
 of; for while a final and perpetual injunction is, when the com- 
 plainant has shown his right under a living patent to equitable 
 relief on final hearing, a matter of right, a preliminary or pro- 
 visional injunction is never a matter of course but always a matter 
 of judicial discretion. Comity may haye its weight; a prior ad-
 
 40 THE FIXED LAW OF PATENTS 
 
 judication may have much more weight; but a court entrusted 
 with this most powerful of all legal enginery is never deprived of 
 the safeguard of discretion in its use until a higher tribunal has 
 taken jurisdiction and with it the responsibility attached. 
 
 To entitle a complainant to an injunction pendente lite, at least 
 three features must be present. 
 
 1. The title to the patent and right to sue must be clear. 
 
 2. The infringement alleged must be clear. 
 
 3. Something more than the mere prima facie of the grant must 
 be shown. 
 
 To these some might add irreparable injury and insufficient 
 remedy at law; but it is thought that the decision of the Supreme 
 Court in Continental v. Eastern, 210 U. S. 405, § 574, by im- 
 phcation, will render any positive showing, beyond the averment 
 of the bill, unnecessary. 
 
 It is evident that the title must be clear, and that if it is doubtful 
 by reason of some right claimed by defendant (§ 569), or is assailed 
 and put in doubt (§571), the relief will be withheld. 
 
 It is also evident that, upon an ex parte showing, the court 
 will not attempt to solve the question of infringeonent in the face 
 of conflicting proofs (§ 564). 
 
 Those showings constituting " something more " than the 
 prima facie of the patent which are essential are either pubHc 
 acquiescence, prior adjudication, or some existent condition which 
 is the fair equivalent of one or the other of these two. It is not 
 possible to define that condition which constitutes or fails to 
 constitute acquiescence with absolute universality of application, 
 as will be evident from reading the cases under §§ 554 and 563; 
 but it is clear that the acquiescence must be common and public, 
 and due to the existence of the patent, and not to extraneous 
 causes. The mere fact that the public has not attempted to make, 
 use or sell the thing patented is not enough; the forbearance to do 
 so must appear to be due to the patent in question. Blount v. 
 Societe, 53 Fed. 99, § 554; Hall v. General, 153 Fed. 907, § 563. 
 
 Stronger than acquiescence is clear proof of the establishment 
 of the patent and right to injunctive relief by prior adjudication. 
 A very conservative statement of the rule is that of Wilson v. 
 Consohdated, 88 Fed. 286, § 561. But again it must be observed 
 that sound discretion controls even in these circumstances. Sprague 
 V. Nassau, 95 Fed. 821, § 570; Hatch v. Electric, 100 Fed. 975, 
 § 570. A clear summary of the general principles is given in Electric 
 V. Edison, 61 Fed. 834, § 561. 
 
 There are cases where injunction pendente lite is clearly necessary
 
 BRIEF SURVEY 41 
 
 to preserve the status quo, where none of the ordinary consider- 
 ations is the moving cause. But these are the peculiar condi- 
 tions of a case which cannot be provisioned by any rule. In 
 the case of Hall v. General, 153 Fed. 907, § 567, and quoted fully 
 under that section, are the main conditions which preclude the 
 granting of a preliminary injunction. It does not follow that all 
 these six points must have been negatived to establish the com- 
 plainant's right to the order asked, but it is clear that any one of 
 several of these points would have been sufficient to warrant denial 
 of the relief sought. 
 
 It is clear that non-use by complainant of the patent sued on 
 is not a reason for refusing a preliminarj^ injunction. Continental 
 V. Eastern, 210 U. S. 405, § 574. Expiration of the patent of 
 course prohibits the granting and ends the life of an injunction 
 granted. (§ 550.) A bond in lieu of injunction is within the dis- 
 cretion of the court (§546); and the conduct of the defendant 
 has its weight (§ 555). Ordinarily the positing of laches as a 
 reason for denying injunctive rehef is a doubtful proceeding; for 
 excusing one's own act on the ground of remissness of another 
 does not appeal to a court of equity. Punishment for the viola- 
 tion of an injunction is adequately reviewed in Bullock v. ^\'est- 
 inghouse, 129 Fed. 105, and Christensen v. Westinghouse, 135 
 Fed. 774, quoted extensively under §§ 577 and 578. 
 
 Coming now to the subject of appeals from injunction orders,' 
 it is first to be noted that we are no longer in doubt about what is 
 appealable. By Sec. 129, Judicial Code, an injunction order 
 " granted, continued, refused, or dissolved "• is appealable. 
 
 Without going into details, the folloAving propositions seem set- 
 tled by the various decisions cited under §§ 535-545: 
 
 1. The appellate court will go no further than to determine 
 whether sound discretion has been exercised. 
 
 2. If, in the determination of this question, the entire record 
 must be reviewed, and if the proofs are adequate, the appellate 
 court will make filial disposition of the case. 
 
 3. That such appeal does not stay other proceedings unless so 
 ordered. 
 
 4. That neither comity nor prior adjudication will prevent an 
 appellate court from acting upon its own independent judgment 
 based upon its own investigation of the facts. 
 
 Appeals from contempt orders are permissible only as now 
 prescribed by the Supreme Court in In re Christensen, 194 U. S. 
 458, § 538. 
 
 In conclusion it may be observed that, while the restrictions now
 
 42 THE FIXED LAW OF PATENTS 
 
 put upon the Mop Case rule by the Supreme Court render possible 
 the recovery of substantial damages and profits in a large number 
 of cases heretofore practically deprived of such right, still relief 
 by injunction is the main and most effective protection to a patent. 
 The rules, now so well established, will be applied with greater 
 wisdom and uniformity than in the past. 
 
 INTERFERENCES, §§ 580-585. 
 
 Upon this subject nothing need be added to § 581, except to 
 call attention to the cases of Morgan v. Daniels, 153 U. S. 120, and 
 Electric v. Carborundum, 102 Fed. 618, both quoted from under 
 § 584. Seemingly, these cases should set at rest the question of 
 supposed conclusiveness of an interference proceeding. 
 
 INTERFERING PATENTS, §§ 586-587. 
 
 In view of the decision of Palmer v. Lozier, 90 Fed. 732, § 587, 
 patentees will be slow to invoke relief under 4918 R. S.; since it is 
 now quite possible that the parties, each coming into court with 
 a patent, may both leave that court empty handed. 
 
 INVENTION, §§588-702. 
 
 Under this title an entire volume might be written; but such 
 a course is not in keeping with the aim of this book. The subject 
 is too large to gather up and treat in perspective. Consequently, 
 the following course will be pursued: The main divisions will 
 be taken up in the order of the text, each division constituting 
 a paragraph with the title and section numbers in heavy faced 
 type. 
 
 Abandonment, § 590. The subject of abandonment has been 
 reviewed under that general title (§§ 1-20). As here employed, 
 it relates to re-invention and abandoned experiments. It is at 
 once evident that an abandoned experiment cannot operate as 
 a bar to an invention, since it is both an abandoned thing and a 
 thing that never was patentable, else it would not have been an 
 experiment merely. The re-invention of a thing which has never 
 materialized sufficiently to constitute anticipation is as much 
 entitled to protection by patent as if the original invention and 
 abandonment had never occurred. But if the re-invention follows 
 an abandonment which was preceded by a disclosure of the inven- 
 tion to the public, such re-invention or discovery cannot recall 
 that which has become public property and make it the subject 
 of a patent. 
 
 Adaptation, §§ 591-593. In reading the quotations under these
 
 BRIEF SURVEY * 43 
 
 sections one notes the recurrence of the qualifying word " mere," 
 such as " mere " arrangement or grouping, " mere " strengthening 
 or increasing weight is not invention. Such is the quahfication 
 of the rule. Whether any act of adaptation has ever risen above 
 that qualifying word we need not speculate. It is enough that it 
 might, and the courts can frame no rule which will bar to an 
 inventor a right which the statute gives him. These remarks 
 apply to §§ 652 and 665 under mechanical skill, and to § 707. 
 
 Aggregation, §§ 594-597. This subject has been fully considered 
 under §§42-51. 
 
 Beneficial use and scope, § 598. The underlying principle here 
 may be illustrated by Wells v. Curtis, 66 Fed. 318. In that case 
 Judge Severens was entirely right in saying that " an afterthought 
 perceived from subsequent experience or scientific inspection or 
 analysis " and the application of the means disclosed to perform 
 the uncontemplated function did not involve invention. But let 
 us suppose that such " experience," or " inspection and analysis," 
 had resulted, from the exigencies of the case, in some modification 
 of the means. A single step thus taken goes beyond the scope of 
 the patent. Why? Because there would have been a change in 
 the combination effecting the result. This is the test. As we 
 must look both to means and result to establish identity, so we 
 can say the performance of an uncontemplated function is a bene- 
 ficial use belonging to the patentee only when, upon investigation, 
 we find the means employed present, item for item, and unmodified 
 in their combinative relation. Diamond Rubber v. Consolidated, 
 220 U. S. 428, § 598. 
 
 Carrying forward, § 599. The rule here is evident; but in 
 Bullock V. General, 149 Fed. 409, the limit is well noted. In the 
 ordinary course of manufacture, improvements are made in num- 
 bers beyond counting; but now and then comes a time when the 
 advance along a certain line slows down and almost stops. At 
 that point someone takes a step — often a small one, but one which 
 turns the halt into progress again. This may be true invention, 
 and yet have the appearance of mere carrying forward. Mere 
 carrying forward is but another name for mechanical skill (§ 654). 
 Invention intervenes only when another sort of mental faculty 
 has come into play; and to decide whether such an event has 
 transpired is often one of the most difficult of problems. 
 
 Change of form, §§ 600-602. Taking the rule of Evans v. Eaton, 
 7 Wheat. 356, § 600, and that of Winans v. Denmead, 15 How. 
 330, § 602, we have this statement: A change of form without 
 change of principle is not patentable; but when form is the essence
 
 44 THE FIXED LAW OF PATENTS 
 
 of the invention, it may be patentable. As the Supreme Court 
 said in Diamond Rubber v. ConsoUdated, 220 U. S. 428, § 602: 
 
 But the law has other tests of invention than subtle conjectures 
 of what might have been and yet was not. It regards a change as 
 evidence of novelty, the acceptance and utility of change, even as 
 demonstration. 
 The same rule is apphed in mechanical skill, § 655. 
 
 Combinations, §§ 603-612. The essence of a true combination 
 lies in the coaction of the elements. As elsewhere said, in an 
 aggregation we have merely the sum of the functions; in a true 
 combination the product of the elemental functions. This state- 
 ment is open to the criticism that the result of a true combination 
 is not a multiplication of things, but a modification of elemental 
 functions. True, but the comparison is helpful. It is not neces- 
 sary that the actions should be synchronous. International v. 
 Dey, 142 Fed. 736, § 603. But the combination, broadly viewed, 
 must be an entirety. The four limitations which must be put upon 
 a combination are well summarized in Gill v. Wells, 89 U. S. 1, 
 § 605. The result may be old if the combination is novel; and the 
 fact that the elements are all old does not negative the novelty 
 of the combination. Columbus v. Bobbins, 64 Fed. 384, § 608. 
 When both combination and result are old invention is wanting. 
 It will be presumed that the elements of a combination claim are 
 old unless specifically claimed. A claim for a sub-combination 
 is good. Parks v. Booth, 102 U. S. 96, §611; but the disclosure 
 of the patent must be sufficient to comply with the statutory re- 
 quirement. Thomson-Houston v. Black River, 135 Fed. 759, 
 §611. 
 
 Date of completion, § 613. While in the absence of other proof, 
 the date of application for patent will be taken as the date of 
 invention, the date may be carried back to the date of actual 
 invention. The exact location of this point is often difficult, 
 but as a general proposition it may be stated that the date of 
 invention has arrived when the inventor is able to so disclose the 
 product of his thought that another might, from such disclosure, 
 put the idea of means into use. But there are cases where the ques- 
 tion of completion as determining priority between two rival appli- 
 cants or patentees is difficult. Judge Holt, in Automatic v. Pneu- 
 matic, 166 Fed. 288, § 860, has attempted a complete review of 
 this phase of the subject. Certainly the effort is elaborate and 
 labored, but, in my opinion, some of his conclusions, if not unwar- 
 ranted, are subject to material modification. This subject will 
 recur under reduction to practice, §§ 860-867.
 
 BRIEF SURVEY 45 
 
 Definitions, § 614. One wall find a long, and perhaps the best, 
 study of this problem by Justice BrowTi in McClain v. Ortmayer, 
 141 U. S. 419. A most interesting view is that of Judge Grosscup 
 in Browii f. Crane, 133 Fed. 235, quoted under this section. ^Modern 
 psychology finds absorbing interest in the study of such phenomena, 
 but so far as is known, these investigations have not served to 
 aid us in the practical application of tests in the form of e\adence. 
 However, since the test of any alleged truth lies in subjecting the 
 facts to our inner consciousness, we recognize invention, not by a 
 fixed definition, but by the pronouncement of our ovm minds. 
 
 Dividing or uniting parts, § 615. This subject has been sub- 
 stantially covered under §591. The case of Standard v. Caster, 
 113 Fed. 162, § 615, presents an interesting problem. It is believed 
 that that case presents a close question. 
 
 Double or analogous use, §§ 616-618. Undoubtedlj^ Potts v. 
 Creager, 155 U. S. 597, quoted extensively under § 671, is the ruUng 
 case upon this subject. The distinction between double use and anal- 
 ogous use is not always clear. A double use is rarely, if ever, patent- 
 able, while in a so-called analogous use the analogy may be so 
 remote as to involve invention. A clear case of double use is that 
 of Jones V. Cyphers, 126 Fed. 753, § 616. Cases at the other extreme 
 are those quoted under § 618. In view of such holdings as Voight- 
 man v. Perkinson, 138 Fed. 56, § 616, it is evident that the rule 
 of Potts V. Creager wdll be applied with strenuousness in most cases 
 involving analogous use. 
 
 Evidence of, §§ 620-638. In the case of Westinghouse v. Stanley, 
 133 Fed. 167, § 620, we have one type of acquiescence which is 
 evidence of invention; in Wolff v. Dupont, 134 Fed. 862, § 620, 
 we have quite another. In the former case there was the acquies- 
 cence of those engaged in the particular art where competition 
 and struggle for improvement was very sharp; in the latter case 
 the condition is much less forceful. The acquiescence in the Tesla 
 inventions involved the strongest temptations, and the greater 
 the temptation the stronger the evidence of acquiescence. It is 
 believed that attempted evasion of a patent, where the evidence 
 of such attempt is clear and the infringement is obvious, should be 
 regarded as strong evidence of invention; but it is also believed 
 that this rule should be given little, if any, weight when the com- 
 petition of business leads one manufacturer to crowd close upon 
 the line of the monopoly of another. In other words, the intent 
 should govern. The rule is particularly^ adapted to the industrial 
 parasite, not to a legitimate competitor. The extent to which 
 commercial success may be employed to evidence invention de-
 
 46 THE FIXED LAW OF PATENTS 
 
 pends upon the circumstances of each case. It cannot be relied 
 upon, but it is often most persuasive. Krementz v. Cottle, 148 
 U. S. 556, § 622. The unfixedness of this rule is illustrated in West- 
 inghouse v. Union, 117 Fed. 495, § 622, where the court said: 
 
 " If there is any doubt upon the question of patentability, the 
 practical and commercial results of the improvement must resolve 
 such doubt in its favor. ' (p. 498;. 
 
 " Its confessed commercial success, therefore, cannot be accepted 
 as evidence of invention." (p. 501). 
 
 Clearly, these remarks could hardly be made with regard to the 
 same patent, but they were made with regard to two patents in 
 the same case. And the rule is the same as to efficiency. National 
 V. Hedden, 148 U. S. 482, § 624; and also as to extensive use. 
 Smith V. Goodyear, 93 U. S. 486, § 626. But, on the other hand, 
 if commercial success, efficiency or extensive use may be evidence 
 of invention, what shall be said of a patent that has lain dormant 
 for years, and when suit for infringement is brought upon it, the 
 defendant urges the converse of this rule? Suppose counsel says, 
 " The question of invention is a doubtful or debatable one. If 
 this patent had immediately shown large efficiency and had met 
 with great commercial success, then the rules would apply and tip 
 the scales in favor of the patent; but here is a case where the sign 
 before the patent has been changed from plus to minus. Is not 
 its failure as persuasive of want of invention as success might have 
 been of invention? " While the statement in Campbell v. Duplex, 
 101 Fed. 282, § 637, so far as is known, is the nearest approach 
 to a justification of this proposition, it is believed that it is an 
 argument not without force. Obvious demand may have its 
 weight, as stated in Commercial v. Fairbank, 125 Fed. 4, § 628; 
 but Fay v. Mason, 127 Fed. 325, § 628, places a distinct limitation 
 upon the rule, which, apparently, is this: If the obvious demand is 
 at once and easily met, it is without force; but if the obvious 
 demand is one met only with difficulty, there is evidence of inven- 
 tion. Since Reckendorfer v. Faber, 92 U. S. 347, § 629, the prima 
 facie of a patent has stood for very little; and since Palmer v. 
 Corning, 156 U. S. 343, § 629, its evidential value has become 
 microscopic. Nor is the presumption of the grant reinforced by 
 what occurred in the Patent Office. Canda v. Michigan, 124 Fed. 
 486, §630; American v. Sample, 130 Fed. 144, §630; Imperial 
 V. Crown, 139 Fed. 312, § 630. But the effect of prior attempts 
 and failures and turning failure into success is quite otherwise.
 
 BRIEF SURVEY 47 
 
 With the rule finally and well stated in Carnegie v. Gambia, 185 
 U. S. 403, § 631, we have at least one rule of evidence of invention 
 which, when it can be applied, is not so open to qualification or 
 diminution as to render it of little force. There is the simplicity 
 of greatness and there is the simplicity of triviality. The one is 
 clear evidence of invention; the other suggests mechanical skill. 
 And here we may mark the distinction between patentees of 
 inventions and inventors of patents. While use of the device of 
 a patent by a defendant fairly establishes its utility, such utility 
 by no means establishes patentable novelty. As a matter of fact, 
 the statement that evidence of utility cannot be made to control 
 the language of the statute which limits the benefit of the patent 
 law to things which are new as well as useful is conclusive upon 
 this point, and leaves utility as evidence of invention where it 
 should be — in the same category with commercial success and 
 large use. Grant v. Walter, 148 U. S. 547, § 636. And the recent 
 decisions of the Supreme Court in Expanded v. Bradford, 214 U. S. 
 366, § 631, and Diamond Rubber v. Consolidated, 220 U. S. 428, 
 §§ 625, 626 and 634, have done no more than sharpen and clarify 
 the rules long since applied. 
 
 Force of nature, § 639. A force of nature is not patentable, 
 nor may anyone so claim the utilization of such a force as to prac- 
 tically exclude another from employing it with other means. The 
 Morse telegraph case at the beginning and the Cameron septic 
 tank at the close of the series of cases upon this subject fitly begin 
 and conclude a most uniform line of ruhngs. 
 
 Generic invention, §§ 640-643. One may choose his definition of 
 a generic or " pioneer " invention from the many given under 
 §§ 640-643. The statement in Westinghouse v. Boyden, 170 U. S. 
 537, §641, that the word ''pioneer" is "commonly understood 
 to denote a patent covering a function never before performed " 
 is open to serious criticism. In the first place it is altog'ether ques- 
 tionable whether that is the common understanding of the term. 
 In the second place, it is of doubtful exclusiveness. For example, 
 the " function " of the Edison lamp (Incandescent Lamp Case, 
 159 U. S. 465,) had been performed before, but the Edison incan- 
 descent lamp patent was a pioneer in the estimation of most people. 
 If we now compare Edison's lamp patent with his film patent 
 (Edison v. American, 114 Fed. 926, §640) we have the distinction 
 between a generic and specific invention clearly before us. The 
 definition of a generic process in Mitchell v. Tilghman, 86 U. S. 
 287, § 641, is beyond all criticism; and the statement in the 
 dissenting opinion of Mr. Justice Shiras in Westinghouse v. Boyden
 
 48 THE FIXED LAW OF PATENTS 
 
 (under § 644) that " a pioneer patent does not shut but opens the 
 door for subsequent invention " is a verity. Men like Bell, West- 
 inghouse, Cowles, Acheson, have each opened up great fields for 
 invention. Giving to such as these protection commensurate 
 with their genius — making improvements tributary to them — 
 has in no wise retarded progress; but on the contrary, has given 
 them opportunity to secure the co-operation of large capital to carry 
 the fruits of their labors into common use. And there is need at 
 this time for laying emphasis upon this statement of Justice Shiras. 
 In the effort to suppress noxious monopoly there is a tendency, 
 such as that from which the learned Justice dissents, to repress 
 the monopoly of a generic invention. While the reward which 
 the world bestows without patent upon a Franklin or a Crookes or 
 a Koch or a Mendelieff or a Kelvin may be quite enough for these 
 great benefactors, in order to encourage the leaders of our industries 
 to invest their energies and their fortunes in bringing the benefit 
 of great inventions to the people at large, the legitimate monopoly 
 of the patent must be safeguarded. A striking example lies in a 
 comparison of Bell and Cowles. Had the same recognition been 
 accorded Cowles — a recognition finally awarded, but too late — 
 that was given Bell, the industrial development of electrolytic 
 synthesis would not have been delayed a decade, but on the 
 contrary, the recognition of the monopoly of the field would have 
 opened the way for capital and improvement alike, and both 
 inventor and nation would have been the richer. 
 
 Immoral object, § 645. The decisions quoted under § 645 as 
 to immoral use open a vista of large interest. The Animarium 
 case properly withholds the implied sanction of a patent to an 
 invention which may be, in the broader sense of the term, " im- 
 moral," i. e., lacking in truth of disclosure, or, affirmatively 
 disclosing that which is untrue or pernicious. The slot machine 
 case presents quite another problem. If the decision in this case 
 is compared with the recent rulings of the Supreme Court as to 
 the powers of the states to regulate the enjoyment of patent rights 
 (Wilbur V. Virginia, 103 U. S. 344; Allen v. Riley, 203 U. S. 347; 
 and Woods v. Carroll, 203 U. S. 358, all under § 920), it would seem 
 that the decision in the slot machine case goes sufficiently far to 
 protect the public through Federal intervention, leaving the states, 
 under these Supreme Court holdings, the power to legislate for the 
 specific protection of their inhabitants. 
 
 Improvement, §§ 646-8. This subject has been considered in 
 connection with §§ 430-444, under the general title of improvement. 
 It is enough to add here that it is thought that there has been no
 
 BRIEF SURVEY 49 
 
 better comment upon that which characterizes patentable improve- 
 ment than the statement in American v. Universal, 151 Fed. 591, 
 quoted under § 648. It is he who strikes out upon a new line or 
 he who breaks through the barrier that invents — not he who 
 adapts and adopts and adjusts. The distance traveled may be long 
 or short; but so long as it goes through or around and arrives 
 where either (1) no one had arrived before (a generic invention); or 
 (2) arrived by a new route (a specific improvement) it is invention. 
 
 Manufacture, § 649. This subject will be fully considered in 
 connection with §§ 772-775. As bearing directly upon the subject 
 of invention the quotations from Kilbourn v. Bingham, 50 Fed. 
 697 and Cerealine v. Bates, 101 Fed. 272, under § 649, should be 
 compared. While it is true that each case presents its own prob- 
 lems, to say that " there is no clear line of demarkation between 
 what may be called a new article of commerce, not patentable 
 though useful, and new articles of manufacture patentable as 
 such," is wide of the fact. The line of demarcation is absolutely 
 clear. Risdon v. Medart, 158 U. S. 68, § 649. It is never otherwise 
 than that the inherent novelty must be of the article itself; never 
 in its elements, else it is a process; not in the mechanical means 
 by which it is produced, else it is a case of mechanical invention. 
 Either of these may or may not be patentable. Undoubtedly what 
 the court had in mind in the cereal case was that it is generally 
 difficult to determine upon which side of the fixed line of demarca- 
 tion the invention in question falls. 
 
 Mathematical formula, § 650. The one case cited under this 
 section raises, not the question of patentability of mathematical 
 or other formulae, but whether a claim expressed in such terms is 
 good. Formulse and symbolism have long been used in the descrip- 
 tion and drawings, often with greater lucidity than could be at- 
 tained in any other way; but when it comes to delimiting the 
 invention by the claim, that is quite another matter. This rule 
 has been successfully invoked, at least once, in securing a similar 
 claim in the Patent Office; but it is thought it should be permitted 
 only when the meaning of the formula employed has a definite 
 and clearly understood meaning and only when the ordinary 
 expressions fail of the purpose. 
 
 Means, § 651. The Supreme Court has repeatedly held that 
 an invention must consist of a new and useful means of obtaining 
 the end sought. But when that court came to consider the case of 
 National v. Boston, 156 U. S. 502, § 650, the rule received con- 
 siderable stretching to make it cover the case of an old device to 
 a remotely analogous use, and held, " in that case it is the idea of
 
 50 THE FIXED LAW OF PATENTS 
 
 means, though old, that is patentable, and not the end attained." 
 This is but shifting the difficulty to another point and saying that 
 novelty is not an essential to patentable invention. Had the court 
 said that the idea of means resided, not in the old device nor in 
 the new use, but in the concept that the old device could be put 
 to the new use, the attenuation of the rule might be evident, but 
 less distortion would have occurred. How shall we apply this 
 rule to an article of manufacture? The answer is not at hand. 
 
 Mechanical skill, §§ 652-666. If we had defined patentable 
 invention and patentable improvement, we should have, by 
 exclusion, defined mechanical skill. But we have not, nor can 
 it be done. The utmost that can be done in any of these cases is 
 to marshal the tests and criteria which aid in determining the 
 question in each case. Under this sub-title of mechanical skill 
 it is shown that adaptation, aggregation, carrying forward, change 
 of form, uniting or dividing parts, increasing efficiency, adapting 
 an old device to an analogous use or to a new use where the change 
 is trivial, or using old elements to produce an old result without 
 recombination, or making an article portable, or merely giving it 
 strength — all these are mechanical skill. And yet we may not 
 say that none of these acts, per se, may involve invention. As 
 was said in Krementz v. Cottle, 148 U. S. 556, § 656, " it is not 
 easy to draw the line that separates the ordinary skill of a mechanic 
 versed in his art from the exercise of patentable invention." And 
 this leads directly to a consideration of what range of knowledge 
 or skill shall be imputed to " a mechanic versed in his art." In 
 Brown v. King, 107 Fed. 498, § 657, a rule is laid down which is 
 believed to proceed upon a wrong principle, and which illustrates 
 the point in question. Clearly the invention in that case was not 
 one which could have been produced by " the ordinary skill of a 
 mechanic versed in his art." But the inventor chanced to be 
 an engineer of large ability who went about the problem with 
 the directness and certainty which comes of education and training, 
 and produced the desired device. Now, is the question of inven- 
 tion to be decided by a measurement of the education and engineer- 
 ing skill of the inventor, or by the skill of " a mechanic versed 
 in his art? " In the case under consideration the court took the 
 inventor as the measure. Is this permissible? Or, taken the 
 other way, must we say that in a given art the skill of a mechanic 
 used as a standard must be commensurate with the highest skill 
 evinced by some individual in the art? It is perfectly clear that, 
 in a difficult and complex art — such, for example, as communica- 
 tion by means of electricity — the " mechanic versed in his art "
 
 BRIEF SURVEY 51 
 
 is not the lineman who climbs poles or the machinist who makes 
 parts of the apparatus; but must this mechanic be an Edison, 
 or a Bell, or a Marconi? To state the proposition is to show its 
 absurdity. We may, therefore, lay down the following negative 
 rules as to what constitutes the status of mechanical skill: 
 
 1. It cannot be measured in terms of the skill of the inventor to 
 whom the patent issued. 
 
 2. It cannot be measured in terms of the highest genius in the 
 art. 
 
 3. It cannot be measured in terms of the ordinary workman 
 in the art. 
 
 And on the positive side it may be stated that mechanical skill 
 must vary directly with the general advance of the art, and to some 
 degree with the progress in general education. The education 
 of to-day makes mechanical skill of what might have been inventive 
 genius fifty years ago, Duncan v. Cincinnati, 171 Fed. 657, § 656. 
 But as education has narrowed the in-field of invention, it has 
 extended the out-field; and it will not do to apply limitations based 
 upon engineering training to close the door of invention to genius 
 merely because it happens to be trained genius. 
 
 Novelty, §§ 667-9. Are novelty and patentability convertible 
 terms? Clearly not. While novelty is an essential to patentability, 
 mere novelty is not enough; novelty plus the other factors which 
 the statute prescribes constitutes patentability. Under § 667 will 
 be found the laborious efforts of the courts to define and distinguish 
 novelty. If one thinks that the courts must, in all these years, 
 have arrived at some general statement or doctrine which may be 
 crystallized into a general statement, let him read those cases and 
 attempt it. It is, after all, but another instance of the fact that no 
 man may write down and classify the activity of the human mind. 
 As has been seen, the line between invention and mechanical skill 
 is a shifting one. So is the line which separates patentable novelty 
 from everything else. The statute makes novelty and utility the 
 main qualifications of the right to patent. Of these utility cuts 
 but small figure in the mass of decisions, except as evidencing 
 novelty. Absence of novelty is the chief of the affirmative defenses. 
 To the solution of the question are brought most of the rules and 
 tests of the entire field of the patent law, even including some of the 
 rules and tests of infringement. Novelty is a condition. It is 
 indefinable, shifting and varying with each case. It is something 
 to be decided — whether present or absent — by a jury or by the 
 court exercising the functions of a jury. The statute makes the 
 wise provision that in the trial of an equity cause, the court may in
 
 52 THE FIXED LAW OF PATENTS 
 
 its judgment empanel a jury to decide this question of fact. It is 
 from failure to regard the sul)ject of novelty — the mistake of 
 treating it as a yardstick by which invention is to be measured — 
 that so many decisions have been astray and reversed on appeal. 
 
 Old device, new use, §§ 670-73. A writer with any perception 
 of his sphere of activity would not contemplate a discussion of 
 this subject. He would merely refer to Potts v. Creager, 155 U. S. 
 597, § 671, and state that nothing more was to be said. 
 
 Old elements, new result, § 674; Old elements, old result, § 675. 
 The employment of an old combination or process to effect a new 
 result, as stated in Potts v. Creager, supra, depends upon the ques- 
 tion of analogousness as to its patentability. But the fact that the 
 elements of the combination are old in themselves, when the result 
 is new, does not affect the question of invention. In fact, most 
 combinations fall under this class. With old elements and an old 
 result the question of invention depends upon whether the com- 
 bination of the elements was old. 
 
 Old process, new use, §§ 676-8. And the same rules apply to 
 processes. The rules of Potts v. Creager, 155 U. S. 597, § 671 
 and Penna. v. Locomotive, 110 U. S. 490, § 676, apply with equal 
 force to processes and machines. 
 
 Omitting element, § 678. Subject to the qualification stated 
 by the Supreme Court quoted under this section, just as omitting 
 an element avoids infringement (§ 456) so it may involve invention. 
 And it may be said also that he who performs a given function 
 with the omission of an element formerly essential, without the 
 addition of another element to take its place, may entitle himself 
 to a broader claim than that of the former combination, although 
 he may not draw to himself the quality of a pioneer and dominate 
 the prior combination. 
 
 Patentability, §§ 679-684. A very substantial and useful volume 
 has been written upon this subject alone. As to what constitutes 
 patentability, no better expressions are to be had th^n the quo- 
 tations under § 679 from Atlantic v. Brady, 107 U. S. 192, and 
 Thompson v. Boisselier, 114 U. S. 1. How far the copendency 
 of application or subsequent issue of a patent to another may evi- 
 dence patentable difference is a question which, notwithstanding 
 the decision in Kokomo v. Kitselman, 189 U. S. 6, and Ransome 
 V. Hyatt, 69 Fed. 148, § 680, is an open question. The day upon 
 which this paragraph was written the v/riter was shown two 
 patents, upwards of eight years apart in issue, covering a composi- 
 tion of matter simply identical. Now, it is all very well to regard 
 the subsequent issue of such a patent as a presumption, micro-
 
 BRIEF SURVEY ^^ 
 
 scopic as it may be; but the moment we dignify it as evidence it 
 fails to square with the experience of any patent lawyer. 
 
 The position taken by the courts in Millard v. Chase, 108 Fed. 
 399 and Hurlbut v. U. S. Mailing. 124 Fed. 66, § 681, is absolutely 
 sound Too long have the courts followed the line of least resistance 
 in regard to patents of evident invalidity. It may satisfy the 
 demands of the case at bar to construe a patent, confessedly mvahd 
 for want of invention, so narrowly as to render infringement im- 
 possible; but the courts owe a duty to the public - to the industries 
 of the country — as was clearly indicated in Atlantic v. Brady, 
 107 U S. 192. under § 679 - to wipe out at every opportunity 
 those patents which make no contribution whatever to human 
 knowledge, but stand in the way of legitimate progress. 
 
 As to the patentabihty of a mental conception, undoubtedly 
 the rule in Forgie v. Oil Co. 58 Fed. 871, § 682, is sound; but what 
 sball be said of Bradford v. Expanded, 146 Fed. 984, § 682? Is 
 one to be barred from patenting an article of manufacture because 
 he has also invented patentable means for producing that article? 
 This question was asked in the first edition of this work. The 
 answer is to be found in Expanded v. Bradford, 214 U. S. 366, § 817, 
 since decided. This question is merely raised, not answered. It 
 is true, as has been said in LcRoy v. Tatham, 14 How. 156, § 683, 
 that a principle, scientific or otherwise, is not patentable. It is the 
 means for utilizing such a principle that is the subject-matter of a 
 patent. An architectural design is not patentable. Jacobs v. Baker, 
 74 U S 295, § 684. The test here is evident: Novelty of design is 
 not novelty of means employed. If such a design embraced novel 
 mechanical means, it would be those means, not the design, that 
 would be patentable. • , j 
 
 Process, §§ 685-688. This subject ^^^ll be more fully considered 
 under the general title process, §§ 814-822. Perhaps enough has 
 been said regarding the decision in Westinghouse v. Boyden, 1/0 
 U S 537, § 686. But the wTiter is under the profound conviction 
 that the rule of that case marks a halt in the progress hitherto 
 due to the protection of basic invention. Inventors and manu- 
 facturers alike, knowing this rule, are endeavoring to overcome its 
 effect by the patenting of not only all detail improvements, but 
 every possible modification that can be thought of. This is result- 
 ing in the issuance of a vast number of patents not used - not 
 expected ever to be used - simply to close the door as best it 
 may be done in the absence of the right to a claim for a mechamcal 
 process. Here it must be noted that this statement was made before 
 the decision of Expanded v. Bradford, 214 U. S. 366, § 817.
 
 54 THE FIXED LAW OF PATENTS 
 
 Property of matter, § 689. Not tlu; property of matter dis- 
 covered, but the invention of a practical application of it, is patent- 
 able. 
 
 Result or function, § 690. To hold a function or result patent- 
 able would be subversive of the entire patent system. This subject 
 has been previously considered under §§ 426-427. One remark 
 should be added here. It is a common error to suppose that a 
 " whereby clause " (that is, a clause following the statement of 
 the combination of the claim stating, whereby this and that oper- 
 ate so and so to accomplish tliis certain thing — the function of 
 the device) in some way makes the claim broader, or in some way 
 makes the function performed a part of the claim. Recalling the 
 rule that a function is not patentable at once shows the uselessness 
 of such api)endages to claims. 
 
 Scientific principles or laws, § 691. This subject has been gener- 
 ally considered under patentability §§ 682, 683. 
 
 Simplicity, §§ 692-693. This subject also has been reviewed under 
 evidence, § 632, but the matter of ex post facto judgment (§ 693) 
 should not be overlooked. The rule now clearly laid down in Car- 
 negie V. Gambia, 185 U. S. 403, § 693, should set this matter at 
 rest. 
 
 Simplification, § 694. This, like the question of simplicity of 
 invention, depends upon whether it is a case of triviality or a stroke 
 of genius. 
 
 Substitution, §§ 695-697. The long list of Supreme Court decisions 
 leaves no question as to the non-patentability of mere substitution 
 of one material for another. But Edison v. U. S., 52 Fed. 300, 
 § 697, is typical of a case where substitution of material is clearly 
 patentable. In that case not only was the carbon filament unknowm, 
 but its use so enlarged the old function as to take the vacuum lamp 
 from the laboratory and make it an article of great usefulness. The 
 test of patentability would, seemingly, depend upon both the 
 novelty of the element substituted and the improved result; or, 
 as in the case of Rainear v. Western, 159 Fed. 431; § 697, upon 
 the novel substitution of a known element to effect an improved 
 result. 
 
 Systems and arrangements, § 698. This subject has been adverted 
 to under aggregation, §§ 42-51. In the note under Library Bureau 
 V. Macey, 148 Fed. 380, § 698, is indicated that which may save a 
 patent covering a " system; " but as there stated, it is the novel 
 means employed — not the system or arrangement — that con- 
 stitutes the patentable feature of the invention. So it may be with 
 the numberless electrical systems patented. In many of them are
 
 BRIEF SURVEY 55 
 
 novel devices and combinations. The " system " claim comes 
 near being functional in character, since it is the product of the 
 employment of these devices which may be novel in connection 
 with arrangements of wiring necessary to their conjoint or suc- 
 cessive operation; but like the Library Bureau case, the invention 
 resides in the devices which make the arrangement possible, rather 
 than in the arrangement itself. 
 
 Tests of, §§ 699-700; Transposition of parts, § 701. These 
 subjects have been considered under evidence and adaptation, 
 respectively. 
 
 Utility, § 702. The decision in Rickard v. DuBois, 103 Fed. 
 868, § 702, is most suggestive. It raises the question, how many 
 other patents are there which might come under this ruling? We 
 are told there is a novel attachment for a loom to make " bargain " 
 goods, i. e., goods with shght blemishes or defects which the loom 
 would not make were it not interfered with. This may or may not 
 be a harmless deception for the benefit of the " bargain hunter," 
 but would such a device be patentably useful under the statute? 
 From time to time the Patent Office rejects applications which 
 would, if matured into patents, be subversive of good morals, on 
 the ground of lack of statutory utility. Consider also the slot 
 machine case under § 645. With the continually quickening moral 
 sense of the public, the line will be drawn more sharply; and those 
 inventions which distinctly and chiefly find their uses in practices 
 brought under public condemnation will find scant favor with 
 the courts. 
 
 INVENTOR, § 703. 
 
 Nothing need be added to the statement of the text. 
 
 JOINT INVENTIONS, § 704. 
 
 The general statement under this section is quite full. While 
 not common, instances of joint patenting do occur, such as that in 
 Standard v. Computing, 126 Fed. 639, or De Laval v. Vermont, 
 135 Fed. 772, where, through ignorance, the applicants supposed 
 that the right to make joint application depended upon joint 
 ownership. 
 
 JUDICIAL NOTICE, §§ 705-712- 
 
 The courts will take judicial notice of matters relating to novelty 
 and patentability, and may refer to common sources of general 
 information to refresh the recollection. They will also, to some 
 extent, take judicial notice of the prior art. Beer v. Walbridge, 
 100 Fed. 465, § 709, and will decide matters in view of such knowl-
 
 56 THE FIXED LAW OF PATENTS 
 
 edge whether pleaded or not. Slawson v. Grand, 107 U. S. 649, 
 § 708. In like manner public use may be the subject of judicial 
 notice; and to inform itself on matters of patentability in general 
 the court will be at liberty to refer to its owti records for anything 
 therein contained. Kumford v. Hygienic, 159 Fed. 436, § 711. 
 
 JURISDICTION, §§ 713-725. 
 
 The district courts have original jurisdiction of all cases of 
 infringement, excepting that actions of that nature against the 
 Government arise in the Court of Claims, which is now definitely 
 provided for under the act of June 25, 1910 (see § 428). Appellate 
 jurisdiction originally resided in the Supreme Court, but since the 
 establishment of the circuit courts of appeals they have appellate 
 and final jurisdiction of all actions of this nature, excepting only 
 a question of jurisdiction of a Federal court, which lies to the Su- 
 preme Court. Of course a case may be certified to the Supreme 
 Court, but this is outside the question of general jurisdiction. A 
 controversy involving a patent, when the moving cause is a contract, 
 is not, as such, one which is under the jurisdiction given by the 
 patent statute. The distinction is well stated in Victor v. The Fair, 
 123 Fed. 424, § 714. The general rule as to equity jurisdiction is 
 stated in the quotation under § 718 from Root v. Railway, 105 U. S. 
 189. When a court of equity has once acquired jurisdiction, its 
 powers \\ill be co-extensive with the necessity of dispensing full 
 justice; as, for example, if matters of contract are incidental, they 
 will be decided; and if jurisdiction were acquired through other 
 conditions than those arising from infringement, and infringement 
 were incidental in the case, the court would proceed to a full de- 
 termination of the issues. Primarily, a court of equity takes juris- 
 diction in order to apply the remedies peculiar to equity, and will 
 not take jurisdiction when the remedy at law is adequate. Keys 
 V. Eureka, 158 U. S. 150, § 721, or merely for the purpose of assess- 
 ing damages or profits. Truman v. Holmes, 87 Fed. 742, § 719. 
 Generallj^ speaking, an equitable title is insufficient to enable a 
 person to sue for infringement. Milwaukee v. Brunswick-Balke, 
 126 Fed. 171, §926. But it would appear that conditions might 
 arise where an equitable interest might be sufficient. Haj^ward 
 V. Andrews, 106 U. S. 672, § 720. While it is the general rule that 
 jurisdiction will not be taken on the showing of any interest less 
 than one of the three mentioned in Waterman v. Mackenzie, 138 
 U. S. 252, § 150, if the infringement is committed by the assignor 
 against his assignee holding a license interest, such hcensee may 
 sue. Littlefield v. Perry, 88 U. S. 205, § 722. But a plea of license
 
 BRIEF SURVEY 57 
 
 cannot defeat jurisdiction. The question of residence as affecting 
 jurisdiction remains unchanged in Sees. 24 and 48 of the Judicial 
 Code, the latter section being a re-enactment of the act of Mar. 3, 
 1897, the provisions of which were additions to the existing law. 
 Westinghouse v. Great Northern, 88 Fed. 258, § 723. It is unneces- 
 sary to enter into the subject of jurisdiction of state courts further 
 than to remark that it is a general principle that if such court has 
 acquired jurisdiction upon proper grounds it may, collateral to the 
 main issue, enquire into the scope and validity of the patent, even 
 where the complaint prays injunctive relief. New Marshall Engine 
 V. Marshall, 223 U. S. 473, § 714; and that while one may not ignore 
 an existing contract and sue for infringement. Am. Graphophone 
 V. Victor, 188 Fed. 428, § 714, still where two^ causes of action exist, 
 one cognizable by a state court and the other by a Federal court, 
 the complainant may elect between the two remedies, Henry v. 
 Dick, 224 U. S. 1, §§714,718. 
 
 LACHES, §§ 726-732. 
 
 Since both laches and excuse for laches are negative in character, 
 they do not appeal strongly to the courts. Laches may amount 
 to abandonment as indicated in § 726. Delay in bringing suit to 
 be effective must be very clear. When a patentee is making bona 
 fide effort to protect his monopoly, he is not called upon to sue all 
 infringers. Edison v. Sawyer-Man, 53 Fed. 592, § 729. But a 
 patentee may not use his grant as a trap to catch game. Hohorst 
 V. Hamburg-American, 91 Fed. 655, § 728. Whether poverty is 
 an excuse for laches compare Woodbury v. Keith, 101 U. S. 479 
 with Leggett v. Avery, 149 U. S. 287, § 729. Contradictory as 
 these rulings appear, it is thought no hard and fast rule may be 
 laid down. Poverty is a relative term, and it must be viewed 
 along with surrounding circumstances and conditions, as was 
 done in McNeely v. WilUames, 96 Fed. 978, § 727. The subject of 
 laches as affecting injunction pendente lite arises under § 568. 
 
 LAW ACTIONS, §§ 733-737- 
 
 Conditions which warrant the bringing of an action at law for 
 infringement are such as to render the proceeding rare. The special 
 rules affecting such cases are few. It is now well settled that the 
 court has power to direct a verdict when it is evident and clear 
 that the plaintiff cannot recover; but it is to be observed that this 
 is a ruling of law that recovery cannot be had, rather than the 
 usurpation of the function of a jury in deciding a question of fact. 
 It is the duty of the court, in instructing the jury, to define the 
 scope of the invention in accordance with the claim. Holmes
 
 58 THE FIXED LAW OF PATENTS 
 
 V. Truman, 67 Fed. 542, § 736, And it is not proper to instruct 
 as to abstract, recondite or hypotlietical matters, or to read from 
 the opinion of another judge upon the patent in suit. (§ 736). 
 The subject of damages has already been considered. (§§ 280- 
 299). Aside from the rules here noted and those relating to damages 
 and to the statutory notice of evidence of anticipation (§ 795), 
 the trial of a law action for infringement proceeds upon general 
 and well-established lines. Some matters as to pleading arise under 
 §§ 789-807. 
 
 LETTERS PATENT, §§ 738-748. 
 
 It has become customary to speak of a patent as a monopoly. 
 This is not strictly correct, for a patent is, at most, but a limited 
 monopoly, U. S. v. Bell, 128 U. S. 315, § 745; and the use of the 
 term " monopoly " tends to bring the grant into ill-repute, owing to 
 the general aversion to monopoly in trade and industry. A patent 
 is more nearly a contract as stated in Krupp v. Midvale, 191 Fed. 
 588, § 741. A better statement has not been made than that in 
 Seymour v. Osborne, 78 U. S. 516, § 745, which makes the patent 
 neither a contract nor a monopoly, but a particular form of grant 
 sanctioned by the Constitution for the specific purpose of promoting 
 the useful arts. It is true, indeed, that a series of patents may afford 
 the basis of an odious monopoly. National v. Hench, 83 Fed. 36, 
 § 744; but any attempt to classify a patent monopoly as coming 
 under any general anti -trust act must prove abortive (Bement 
 V. National, 186 U. S. 70, § 744; Rubber Tire v. Milwaukee, 154, 
 Fed. 358, § 744; Virtue v. Creamery, 179 Fed. 115, § 744) until 
 specific legislation is had to reach cases of unconscionable monopoly 
 cloaking themselves under legitimate patent monopoly for evil 
 purposes. That specific legislation to reach such cases is sorely 
 needed no one can question. 
 
 The property right in letters patent differs little from that of 
 other incorporeal personalty. There is no obligation arising from 
 the grant for the owner to make use of his invention, or, in the event 
 of his failure so to do, any suggestion of abandonment of his right, 
 Heaton v. Eureka, 77 Fed. 288, § 746. But it must be remembered 
 that the award of a preliminary injunction lies in the sound dis- 
 cretion of the court (§ 543), and it is believed that a cold-storage 
 patent has the moral factor against it. In fact, one cannot read the 
 appellate decision in the Selden Case (184 Fed. 893) without feeling 
 that the moral factor growing out of the delay and supineness of 
 the inventor had its influence with the court, in spite of the asser- 
 tions of the perfect legality of his course. While it is now the law
 
 BRIEF SURVEY 
 
 59 
 
 that a patent has all of the immunities given it by the Harrow Case 
 (§744 supra) and the Dick Case (§898), it seems probable that 
 these immunities will be circumscribed either by statutory enact- 
 ment or by change of judicial view. 
 
 A defect in a grant may be fatal or not, accordmg to the nature 
 of the defect. In Marsh v. Nichols, 128 U. S. 605, § 742, the defect 
 was the absence of the signature of the Assistant Secretary of the 
 Interior, which arose purely by accident, and was fatal. In Western 
 V North, 135 Fed. 79, § 748, the defect was delay or irregularity of 
 the Patent Office, and was held not sufficient to defeat the grant. 
 With the more reasonable view of patents as contracts, rather than 
 pure monopolies, it is doubtful if so drastic a holding as that of 
 Marsh v. Nichols would now prevail. 
 
 LICENSE, §§ 749-764. * , . • -ui 
 
 \n ordinary license is neither assignable nor transmissible. 
 Haffcke V. Clark, 50 Fed. 531, § 7G2. But it may be so continued, 
 of course, by specific terms in the contract, or by conduct or 
 implication. Lane v. Locke, 150 U. S. 193, § 751. It would seem 
 that the Supreme Court has established a special rule regarding 
 Government employees. McAleer v. U. S., 150 U. S. 424, § 756. 
 The construction of a contract of license follows the general rules 
 of construction of written instruments. Standard v. Leslie, 78 
 Fed 325 § 753 The covenants are mutually binding, and such 
 a covenant as agreeing to defend the patent for the protection of 
 the licensee is good. U. S. Cons. .. Griffin, 126 Fed. 364, § 7o3. 
 The rules of estoppel apply between licensor and licensee, but an 
 estoppel does not arise to prevent a licensee from showing the prior 
 art to define the limits of his obligation. American v. Helmstetter, 
 142 Fed 978, § 754. A licensee may forfeit his rights, and if he 
 does, by failu're to pay license fees under the contract, he cannot 
 regain his right by tender of the fees due. Piatt v. Fire Extin- 
 guisher 59 Fed. 897, § 755. A license may arise by implication, 
 or may be made by parol, and, of course, the statutory license 
 arises in favor of a device built with consent before patent applica- 
 tion (R S 4899). A rather close question of shop license arose in 
 Barber v. National, 129 Fed. 370, § 756. It is thought that case 
 marks the limit of right of an employer. There are cases where 
 the secured right to one device will carry with it, by implication and 
 by the rule that the grantor is in duty bound to make enjoyment 
 of the grant possible, the right to use another patented device 
 The trolley switch case (Thomson-Houston v. Illinois, 152 Fed. 
 631, § 756) is in point. There the complainant consented to the
 
 60 THE FIXED LAW OF PATENTS 
 
 installation of the apparatus, including its patented switch, neces- 
 sary to the use of the electric locomotives sold to defendant. 
 Subsequently complainant bought other locomotives to use in 
 connection with the former from another maker, and used them in 
 connection with the same switch installation. It was held that 
 the license which went, by implication, with the sale of the loco- 
 motives of complainant's make entitled the defendant to use the 
 switches in connection with the other locomotives. While this 
 holding might, at first glance, seem extreme, it is evident that, 
 in such cases, the line must be dra\\Ti somewhere; and since it was 
 within the power of that complainant to have specifically limited 
 the use of its switches to that in conjunction with its locomotives, 
 so long as. that was not done, the rule seems just. But the rule 
 in Edison v. Peninsular, 101 Fed. 831, §756, is questionable. 
 Unless the contract otherwise provides, payment of roj^altics ceases 
 with the life of the patent; and it is fair to presume that if the 
 patent expires prior to its full limit by reason of the expiration 
 of a foreign patent under the former rule, payment of royalties 
 would then cease. The right to royalties depends upon what is 
 claimed, not what is described in the patent. Western v. Robertson, 
 142 Fed. 471, § 671. And where the license was made before patent 
 and covers more than materializes in the claim, the licensee is not 
 bound to royalties upon that which is found unpatentable. Eclipse 
 V. Farrow, 199 U. S. 581, § 760. The rule that the sale of a patented 
 article by the assignee of a territorial right within his territory 
 sets the article free from all territorial restrictions is fundamental. 
 Hobbie v. Jennison, 149 U. S. 355, § 763. Any restriction of this 
 rule would have to be the subject of a contract. Keeler v. Standard, 
 157 U. S. 659, § 763. The invalidity of a patent cannot be set up 
 by a licensee as an excuse for nonperformance under his license 
 until such fact has been established as a matter of law. Holmes 
 V. M. McGill, 108 Fed. 238, § 764. A co-owner of a patent may 
 license without the consent of the common tenant with him. Paulus 
 V. Buck, 129 Fed. 594, § 764. The means for preventing this, and 
 many other complications, is to make the co-owners tenants by 
 the entirety — a course which is often desirable, 
 
 LICENSOR AND LICENSEE, §§ 765-767. 
 
 This subject has been generally treated above. 
 
 MACHINE, §§768-769. 
 
 To what has been said under § 768 nothing need be added. 
 The question of the right to repair a purchased patented machine 
 has been fully considered under §§ 523-524.
 
 BRIEF SURVEY 61 
 
 MACHINE AND PROCESS, § 770. 
 
 It is clear that the machine may be new and the process old, 
 or the machine may be old and the process new, or both may be 
 new. A difficulty sometimes arises in determining whether the 
 patentable novelty resides in the machine or in the steps of the 
 process wherein the machine is a material part. In such a case we 
 must go back to the fundamental principles and determine whether 
 that which is new arises from the interaction of the elements of 
 the macliine, modifying the function of each and thus affecting 
 the result, or whether novelty resides in the action (result) of the 
 machine combined with some other step in the process. 
 
 MACHINE AND PRODUCT, § 77i- 
 
 So also a machine and its product may be either or both novel. 
 But novelty of the machine does not make the result patentable. 
 The result or product, as an article of manufacture, must possess 
 inherent novelty independent of the machine which creates it. A 
 patent may or may not cover both the machine and the manu- 
 facture; where it does not, he who buys the machine attains the 
 right to the manufacture, although it may be separately patented. 
 But the reverse would not hold — a right to use or sell the article 
 of manufacture would not carry the right to the separately patented 
 machine. 
 
 MANUFACTURE, §§772-775 (see §649). 
 
 What has been said under § 772 as to the looseness m use ot 
 the term " manufacture " is re-emphasized. The statute makes it 
 one of the patentable classes of invention. Why was this done? 
 Clearly because there is a class of inventions of economic value 
 which cannot be defined, measured, or tested in terms of an art, 
 machine, or composition of matter. A patentable art consists 
 in genius ])rought to bear upon matter and the laws of matter to 
 effect a given result; so with a process. A machine consists m 
 imposing upon mechanical elements the mind of the inventor, 
 working in harmony with the laws of mechanics to effect a result. 
 The production of a new article of manufacture may mvolve these 
 inventive acts or it may not; and the novelty of the article cannot 
 be determined by the criteria commonly applied to these classes 
 of patentable invention. The novelty must inhere m the article 
 itself. For example, the man who first produced soap, say, by 
 combining animal fat and lye from wood ashes, produced a new 
 article of manufacture — soap. The test here would be whether 
 soap had ever existed before. Soap bark had existed before,
 
 62 THE FIXED LAW OF PATENTS 
 
 but soap bark, in composition and efficiency, differs materially from 
 soap; moreover, it is in no sense an article of manufacture. But 
 suppose that, subsequent to the fat-and-lye soap, another invented 
 a soap made from a vegetable oil and soda. His process might 
 differ materially, and as such be patentable; but soap as an article 
 of manufacture had been discovered. In that case the slimy, 
 unrefined article — soft soap — would be a perfect anticipation of 
 the cake of translucent, mild and largely different toilet article 
 now in use. The inherent quality is the same in both. Thus it 
 is that an article of manufacture may be new and highly useful 
 from a commercial point of view, and yet be very old and wholly 
 unpatentable from the viewpoint of the statute. Union v. Van 
 Deusen, 90 U. S. 530, § 775. Now, if this reasoning is sound, it 
 must follow that the broad statement that the test of novelty must 
 be the same in the case of a machine (Campbell v. Bayle^', 63 Fed. 
 463, § 774) cannot be accepted. Suppose we take another com- 
 parison: Carborundum is produced by an electrolytic process. 
 Carbide is made by an electrolytic process more or less analogous. 
 The one yields an abrasive, the other a gas. Now, by tests which 
 we should apply to a machine or process there might be identity 
 sufficient to warrant anticipation or infringement; but would one 
 venture to say that, as an article of manufacture, a carborundum 
 grinder was identical with a charge of carbide in an acetylene gas 
 generator? It has seemed that, in view of the somewhat confused 
 statements of the courts, there is necessity of going back to such 
 elemental propositions to set right the lines of reasoning regarding 
 manufactures. 
 
 MARKING " PATENTED » §§ 776-777- 
 
 Failure to comply with the requirement of the statute does not 
 affect the grant, but does affect the right to recover damages or 
 profits. When failure to mark is raised by the pleadings and the 
 complainant or plaintiff fails to make proof of compliance with 
 the statute, 'damages and profits are barred. All this is clear; be- 
 yond is doubt. While it is too late to raise this question for the first 
 time on appeal, may it not be raised by the proofs and made an 
 issue without pleading? Again, suppose that, while the article 
 has not been marked, the infringer has been in full knowledge of 
 the patent, has openly and defiantly infringed, remains silent 
 and raises the question for the first time after final hearing. Such 
 has been held a bar to profits in a circuit court. This is clearly 
 a subject which needs further pronouncement by the appellate 
 courts, but not along the narrow and reactionary line of the Circuit
 
 BRIEF SURVEY 
 
 63 
 
 Court of Appeals for the Second Circuit, Crier v. Innes, 170 Fed. 
 324- Lichtenstein v. Phipps, 168 Fed. 578, § 777. 
 
 The law governing false marking and qui tarn actions under 
 § 4901, R. S., is stated in London v. Dunbar, 179 Fed. 506, § 777. 
 
 MORTGAGE, § 778. . ^ . . r^«. a 
 
 A mortgage on a patent is recordable m the Patent Office under 
 § 4898 R. S., and since a patent is incorporeal property, the record- 
 ing of the patent is constructive delivery. Legal proceedings grow- 
 ing out of a mortgage, in the absence of any charge of infrmgement, 
 are cognizable by state courts. 
 
 OATH, §§ 779-780. . ^ . . . ^ 
 
 The occasions wherein the oath becomes msufficient to support 
 a patent are most frequently those where the specification or claim 
 has been unduly expanded by amendment or reissue. This has 
 been referred to under §§ 52-57. It is e^^dent that if the disclosure 
 of the application as filed was insufficient, the proper course is 
 to file a supplemental oath which states both inventorship and 
 the fact that the supplemental matter of the amendment was part 
 of the original invention. American Lava v. Steward, loo Fed. 
 731, § 780. But where the application has been unduly delayed 
 and intervening rights have accrued, the rule analogous to that of 
 reissues will apply. Mayo v. Jendves, 133 Fed. 527, § 54. 
 
 OPERATIVENESS, §§ 781-782. 
 
 The patent itself is strong presumptive evidence of operative- 
 ness- infringement by a defendant is practically conclusive. Want 
 of operativeness is most frequently charged agamst a generic patent 
 which merelv opens up a new field. In such case a complete or 
 commercial disclosure is not to be insisted upon — certainly not 
 to the same degree as in a minor improvement. Smce mechan- 
 ical skill varies both with time and circumstance, that which con- 
 stitutes a disclosure sufficient to enable one skilled in the art to 
 make and use must also vary. No hard and fast rule is possible. 
 
 PATENT OFFICE, §§ 783-787- 
 
 The Supreme Court in Steinmetz v. Allen, 192 U. b. 54.3, here 
 extensively quoted, and the Second Circuit decision in Benjamin 
 V Dale 158 Fed. 617, § 348, should serve to correct the rare acts of 
 the Office open to objection. When any conflict arises between a 
 rule or act of the Office and a statute, the statute must, of course, 
 prevail. So in the case of any conflict of opinion between the Office
 
 64 THE FIXED LAW OF PATENTS 
 
 and a court. The statement in Boyden v. Westinghouse, 70 Fed. 
 816, § 785, that the Office employs the best engineering experts 
 it can secure, and that therefore the action of such examiners is 
 equivalent to the testimony of the highest experts, is a non sequitur 
 for at least two reasons. First, it is a notorious fact that ah 
 examiner cannot give the time and study to a case that the ex- 
 pert does. Second, the expert is subjected to a rigid cross- 
 examination; and the decision of the examiner is at most only on 
 a par with the ex parte statements of an expert, as in the case of 
 an affidavit on motion for a preliminary injunction; and to such 
 statements, as has been seen, the pourts never give overmuch 
 weight. 
 
 PLEADING AND PRACTICE, §§ 788-802. 
 
 As stated in the preface, tliis work does not deal ■with pleading, 
 practice, or procedure, except in so far as relates to matters pecuUar 
 to patent causes. Consequently no general review of the special 
 rules quoted under this title will be attempted. 
 
 PRIORITY, §§ 808-812. 
 
 This subject is clearly related to that of anticipation, §§ 58-108, 
 and reduction to practice, §§ 860-867. Where the question has 
 arisen and been adjudicated between the same parties in the Patent 
 Office, such adjudication, in the absence of a most persuasive moving 
 consideration not there raised, is conclusive. Aside from this matter, 
 the general principles of reduction to practice are reviewed in con- 
 nection with the sections above mentioned. 
 
 PROCESS, §§813-822. 
 
 A process is generally distinguished from a machine in that it 
 consists of a series of steps, as stated in Cochrane v. Deener, 94 
 U. S. 780, § 815; and the claim should be expressed in terms of 
 the steps and not in terms of a machine employed. The rule of 
 equivalents in processes is that stated in Tyler v. Boston, 74 U. S. 
 327, § 373 — that an equivalent means only equally good. As 
 elsewhere stated, the elements or steps may be separately old, yet 
 patentable in the combination of steps of the process. This is well 
 illustrated in Lowther v. Hamilton, 124 U. S. 1, § 819. Process and 
 product claims may be had in the same patent, but they must be 
 separate claims. The product cannot be claimed in terms of the 
 process, since it might be produced by another process. Goodyear 
 V. Davis, 102 U. S. 122, § 821. Under the rule of Westinghouse v. 
 Boyden, 170 Q. S. 537, § 817, a mechanical process was held non-
 
 BRIEF SURVEY 65 
 
 patentable. But that opinion, at variance with previous law and, as 
 it always seemed to me, illogical, was not to remain the law; and in 
 Expanded v. Bradford, 214 U. S. 366, § 817, after reviewing the 
 history of this question. Justice Day lays down the law which may 
 be summarized thus: The invention or discovery of a process or 
 method involving mechanical operations and producing a new and 
 useful result, may, if independent of particular mechanism for pro- 
 ducing it, be within the protection of the Federal statute. 
 
 PRODUCT, §§823-824. 
 
 It was remarked in the discussion of a manufacture (§§ 772-775) 
 that, for example, he who first invented soap as an article of manu- 
 facture would not be anticipated by a somewhat similar natural 
 article — soap bark. If we compare that statement with that 
 in Cochrane v. Badische, 111 U. S. 293, §823, there is apparent 
 conflict. But there is no real conflict. In the alizarine case its 
 commercial equivalent had been previously extracted from the 
 madder root, but did not per se exist as a natural substance. In 
 order to produce the article from the vegetable certain artificial 
 means were necessary. Those means had been employed, and it 
 already existed as an article of manufacture; and producing it by 
 another process and by the employment of other materials did 
 not confer patentability. 
 
 PROFITS, §§825-847. 
 
 The right to an accounting in equity is incident to the right to 
 an injunction. The statute provides that the court may assess 
 or cause to be assessed the amount to which the complainant is 
 entitled. The assessment, when made by a master in chancery, 
 is subject to review and revision by the court; but the court will 
 not arbitrarily change the amount found or disregard the facts 
 found by the master. The appellate court may, if the facts are clear 
 and suflScient, revise the figures of the master conformable to the 
 facts, without sending the report back. The two subjects, profits 
 and damages, are so related and the rules so interwoven that the 
 one cannot be studied separately from the other. Many matters 
 bearing upon the subject in hand will be found under damages, 
 §§ 278-299. 
 
 In Rubber Co. v. Goodyear, 76 U. S. 788, § 273, profits are de- 
 fined as the gain made upon any business or investment, where 
 both receipts and payments are taken into the account. If the 
 discovery of the receipts and payments were easy, and the mere 
 computation of the difference all there were to be done, the problem
 
 56 THE FIXED LAW OF PATENTS 
 
 of profits would be without incident. But such is nev-er the case; 
 for even in the simplest of accountings some pjoblem is certain 
 to arise. Nor does the " fruits of advantage " rule of Coupe v. 
 Royer, 155 U. S. 565, § 837, do more than indicate that the profits 
 may be either gains in the ordinary sense of that term, or savings, 
 or both. The trustee ex maleficio rule of Wales v. Waterbury, 101 
 Fed. 126, §841, which was rendered nugatory by Westinghouse v. 
 New York, 140 Fed. 545, and now restored to its rightful place by 
 Westinghouse v. Wagner, 225 U. S. 604, § 845, applies to all those 
 cases where segregation has been rendered difficult, if not impossible, 
 by the conduct of the defendant in mixing or concealing his gains. 
 The dissenting opinion of Judge Sanborn in Westinghouse v. Wag- 
 ner, 173 Fed. 361, § 845, which is made good law by the Supreme 
 Court reversal of that case, is commended as a masterly statement 
 of the law. As has been shown in connection with damages, the 
 entire problem begins with segregation, and the inquiry is this: 
 Does the nature of the invention and the incident of its infringe- 
 ment bring it under the first or second portion of the rule of Gar- 
 retson v. Clark, 111 U. S. 120, §845? If it comes under the first 
 portion, before any of the ordinary computations of profits by way 
 of receipts and expenses may be had, complete segregation must 
 be made. If under the second portion erf that rule, before the reg- 
 ular computation can be entertained, the proofs must show mdu- 
 bitably that the entire profits of the manufacture, use or sale were 
 due to the patented feature. Thus before any accounting may 
 begin, in the proper sense of the term, the rule of Garretson v. Clark 
 must be fully satisfied. If, now, this has been done, the master 
 may proceed, keeping in mind the general rule that his report is 
 merely advisory to the court. Boesch v. Graf, 133 U. S. 697, § 836. 
 If the condition is one where the measure is the entire profits, the 
 rule of Efizabeth v. American, 97 U. S. 126, § 838 and Rubber Co. 
 V. Goodyear, 76 U. S. 788, § 839, apply. If it is a question of sa- 
 vings, the rule of Hohorst v. Hamburg-American, 91 Fed. 655, § 840, 
 is to be followed. But the problem of savings may be as difficult 
 as in Doten v. City of Boston, 138 Fed. 406, § 837, where any state- 
 ment of savings in dollars and cents based upon tangible con- 
 siderations is wholly impossible. How far one may go in making 
 a general estimate, as was done in that case, is a matter of conjecture. 
 Attempts have been made to show profits by analogy — by what 
 others have done — but this is not permissible. Robbins v. Ifiinois, 
 81 Fed. 957, § 842. So far the burden has been upon complainant. 
 If he has failed to segregate, recovery is impossible, unless he has 
 shown right to the entire profits, or has shown, as provided in the
 
 BRIEF SURVEY 
 
 67 
 
 Westinghouse case, supra, (1) the presence of substantial gains by 
 the defendant, (2) confusion, (3) impossibility of segregation by 
 complainant. Of course, if the complainant can trace a loss (damage) 
 back as a diversion by defendant, he may recover that item, not as 
 damages, but as a profit made by the defendant. The burden now 
 shifts to the defendant — provided only that the complainant has 
 shown the obvious deductions to be made — and it becomes the 
 duty of the defendant, if he can, to reduce the amount by direct de- 
 duction of the amount of profits or by deductions in terms of expenses. 
 But he may not submit as an item general expenses, or losses, or 
 "manufacturer's profits" (§§828-830). He may show actual 
 items of cost, including ordinary salaries and commissions, but 
 not managerial or proprietary salaries. An accounting is a post 
 mortem. As to most matters of affirmative proof the defendant is 
 defunct, and the master as coroner finds sealed lips as to those 
 things he most needs to know. Even those who perform the 
 autopsy will disagree. Nor is this the end of the trouble; for when 
 the affirmative evidence is all in, the corpse revives sufficiently 
 to deny so much as he is able, and re-expires. 
 
 PROTESTS, §848. 
 
 As stated under § 848, there is no statutory provision for filmg 
 protests, or opposition to any issued patent; nor is there any method 
 of testing or proving the validity, scope, or strength of any patent 
 short of abiding possible infringemcjit suit, and the long, expensive 
 process that involves. To my mind, here is the weakest point in 
 our patent system; for it leaves the patentee in uncertainty and 
 makes patents, in many cases, a menace to industry. Space does 
 not permit more than this remark upon this serious and growing 
 evil. 
 
 PUBLIC USE, §§ 849-858. 
 
 The question of public use is not one of intent; it is a question 
 of fact. It is not a thing to be mitigated or excused. The statute 
 is absolute. Within the two-year limit full freedom exists. An 
 application filed a moment inside the limit is as much on time as 
 if filed on the day of invention. A moment later and the inchoate 
 right is lost beyond all recall; and taking a narrow chance — post- 
 poning filing to prolong the life of the patent — has defeated many 
 a patent. Such being the case, it is but just that the burden of 
 proving public use is upon the defendant, and every question of 
 doubt is to be resolved against such an allegation. As to what 
 constitutes experiment, as was said under the title, experiment,
 
 68 THE FIXED LAW OF PATENTS 
 
 § 412, there is nothing to be added to the decision in Eastman 
 V. Mayor, 134 Fed. 844, there quoted extensively. Foreign use, 
 unless resulting in patent or publication, does not anticipate, 
 and in such case the date of use is that of the patent or publi- 
 cation — not the antecedent, actual use. Since Egbert v. Lipp- 
 mann, 104 U. S. 333, § 854, the word " public " has had a meaning 
 all its own when used to modify the word " use." When Romeo 
 invents a corset steel and Juliet wears it next her heart, and that 
 is public use, it is little wonder that an invention hidden within 
 the confines of a fire and burglar proof safe is public use. Hall 
 V. Macneal, 107 U. S. 90, § 854. The question does not turn upon 
 the number of uses or upon the number of persons concerned in the 
 use; although, if any doubt exists, numbers may be more or 
 less persuasive. Whether a single sale would, in all cases, amount 
 to pubhc use seems to be questioned in Swain v. Holyoke, 109 Fed. 
 154, but its sufficiency is affirmed in National v. American, 178 Fed. 
 79, §856. 
 
 PUBLIC USE PROCEEDINGS, § 859. 
 
 Nothing need be added to the statement under this title, except 
 to remark that this proceeding should be combined with protest 
 proceedings (§ 848), and made an effective measure. 
 
 REDUCTION TO PRACTICE, §§ 860-867. 
 
 Diligence is of importance when the question of priority, the 
 question of competition for the right, arises. As to what constitutes 
 reduction to practice, it is clear when we compare the earher de- 
 cisions, such as Seymour v. Osborne, 78 U. S. 516, § 862, with the 
 Telephone Cases, 126 U. S. 1, § 865, that the rule has changed 
 materially; and still later, in the Barbed Wire Case, 143 U. S. 
 275, § 864, we reach the final test, the " last step rule." It is evident 
 that a literal following of the earher rule, the actual construction 
 in material form, would render void many patents. It would have 
 defeated Bell's patent, very likely. The time when an invention 
 must be reduced to practice by putting the idea into wood and 
 iron is past. In the early days that course was largely necessary, 
 just as the filing of a model was often necessary to the under- 
 standing of an invention. Clearly, then, it may be said that 
 reduction to practice is no longer a matter of construction, building, 
 trial, but the disclosure of the idea by any means — device, drawing, 
 or verbal description — which will enable one skilled in the art 
 to make and use the same. This test may render a sketch sufficient; 
 it may render an experimental machine insufficient; for if the
 
 BRIEF SURVEY 69 
 
 idea of means, operative means, is disclosed, there is the invention; 
 and any number of models or experimental machines — such as 
 there were in the Telephone Case and in the Barbed Wire Case — 
 if they fail to disclose the idea so that another may practise the 
 alleged invention, — cannot lay the foundation for a patent. But 
 where there is conflict and contest for priority, finer distinctions 
 must be made and other tests resorted to. Judge Holt, in Auto- 
 matic V. Pneumatic, 166 Fed. 288, § 860, has undertaken to codify 
 the law on this subject, and, as previously noted, with questionable 
 success. That opinion, however, is valuable for its collection of and 
 comment' upon most of the leading authorities. 
 
 REHEARINGS, §868. 
 
 This subject is one of practice, and is not entered upon in this 
 work. 
 
 REISSUES, §§869-889. 
 
 No single subject of the patent law has given rise to so much 
 appellate ruling as the subject of reissues. The causes may have 
 been, in many cases, as stated in Cro^\^l v. Aluminum, 108 Fed. 845, 
 § 871, the greedy acts of unscrupulous persons and adventurers; 
 but it is thought a more potent influence has existed in the attempts 
 on the part of patentees to make their patents cover what they 
 honestly believed to be their own inventions, but which, in point 
 of fact, were not. The mventor is apt to have an unduly large idea 
 of the child of his brain; the manufacturer an unduly large idea 
 of his monopoly; and when either perceives others stepping beyond 
 him in his o^^^l particular art, he fancies it to be a trespass upon 
 what he honestly regards as his own close. It is onlj'^ when we 
 take such a charitable view of the seeming overreaching by reissue 
 that it can be viewed with patience in many cases. The main, 
 broad rules of reissue are to be found in three cases: Miller v. 
 Brass Co. 104 U. S. 350, §883; Topliff v. Topliff, 145 U. S. 156, 
 § 883; McCormick v. Aultman, 169 U. S. 606, § 887. These rules 
 are as follows: 
 
 1. That the reissue cannot cover another invention than that 
 of the original. 
 
 2. That the reissue cannot cover what was described but not 
 claimed after long delay and not even after brief delay if intervening 
 rights have accrued. 
 
 3. That while a reissue claim may be enlarged, it can be done 
 only when actual mistake has occurred, and then only without 
 delay.
 
 70 THE FIXED LAW OF PATENTS 
 
 4. That in reissues for enlarging the scope of a patent, the rule 
 of laches should be rigidly applied. 
 
 5. That the general purpose of the statute providing for reissues 
 was to correct mistakes and errors, and not to enable the inventor, 
 from time to time, to extend his monopoly so as to cover progress 
 by others in his art. 
 
 6. That due diligence must be exercised in discovering the mis- 
 take in the original, and that, if it be sought for the purpose of 
 enlarging the claim, the lapse of two years will ordinarily, though 
 not always, be treated as evidence of abandonment of the new 
 matter. 
 
 7. That the question whether the appHcation was made within 
 a reasonable time is, in most, if not all such cases, a question of 
 law for the court. 
 
 8. That the court will not review the decision of the Commis- 
 sioner upon the question of inadvertence, accident, or mistake, 
 unless the matter is manifest from the record. 
 
 9. That the specification may be modified so as to make it more 
 conformable to the exact right of the patentee, but the invention 
 must be the same. 
 
 10. That if the patentee abandons his application for a reissue, 
 he is entitled to a return of his original patent precisely as it stood 
 when such application was made. 
 
 11. The tendency in the Seventh Circuit, and in some other cir- 
 cuit, perhaps, is to enforce these rules with so great rigor that any 
 enlargement of a claim is practically barred, McDowell v. Ideal, 
 187 Fed. 814; Moneyweight v. Toledo, 187 Fed. 826, § 871. 
 
 While there are minor rules which might be stated, these are 
 the main ones; and it is not necessary in this brief review to go 
 further. 
 
 REOPENING CASE, §§ 890-892. 
 
 This is a question of practice which lies chiefly without this 
 review. The general rule of Bresnahan v. Tripp, 99 Fed. 280, 
 § 891, is that the new evidence must be so cogent and persuasive 
 as to convince the court that ii it had been presented, it would have 
 resulted in a different decision; and this new evidence must be 
 something more than cumulative; and must be newly discovered 
 evidence, and not merely newly discovered materiality of old 
 evidence. Lafferty v. Acme, 143 Fed. 321, § 991. And a case will 
 not be reopened merely to enable a complainant to prove damages. 
 Baker v. Crane, 138 Fed. 60, § 892.
 
 BRIEF SURVEY 
 
 71 
 
 RES JUDICATA, §§893-896. . , ^. ^. ,. ,,90 07 
 
 This subject has arisen in connection with adjudication, §§ 1^-6 i, 
 and comity, §§ 250-257. The first and main inquiry is whether 
 the issues were the same and the estoppel mutual. With these 
 present, a position wellnigh impregnable is established. But 
 lacking' either of these, the courts are disposed to decide the case 
 on its merits. A Patent Office decision is res judicata on a question 
 of priority between the same parties when the contrary conclusion 
 is not established by thoroughly convincing additional proof. 
 Ecaubert v. Appbton, 67 Fed. 917, § 895. 
 
 ROYALTIES, § 897. . ^ ,^. 
 
 For a masterful, complete review of the subject of royalties, a 
 reading of Judge Putnam's opinion in Western Union v. Am. Bell, 
 125 Fed. 342, § 897, is sufficient. It was said, with regard to hcen- 
 sees §§ 749-764, that Eclipse v. Farrow, 199 U. S. 581, held that 
 where the license was made before patent and the subject-matter 
 failed in part, to materialize in a claim, the licensee need not pay 
 royalties upon the device found to be old. Under this title (§ 897) 
 a quotation from the same case seems to hold to the contrary. But 
 it will be seen that the defendant saw fit to retain the hcense con- 
 tract after the claim had failed: and so electing, he could not escape 
 its terms. 
 
 SECRET PROCESS OR MACHINE, § 898. 
 
 lliis subject arises in connection with unpatented inventions, 
 §§ 930-935. 
 
 SALE OF PATENTED ARTICLE, § 899. 
 
 The extended quotation from Heaton v. Eureka, 77 l^ed. ^«», 
 and that from Henrv v. Dick, 224 U. S. 1, under this section need 
 no further comment in view of what has been said under the title 
 Equity, §§ 370-372. 
 
 SPECIFICATION, §§900-919- , , , 
 
 As said in § 901, the term " specification " has been loosely used. 
 In reading the decisions of early times, one finds it embracing de- 
 scription, claims, and even drawings - all that the patentee con- 
 tributes to the grant; but most commonly to the description and 
 claims As employed here, it will be used in the present sense — 
 as meaning the description only. The ancient rule was that the 
 specification (description and claim) should clearly indicate both 
 the new and the old, and distinguish them. Fancy that rule m force 
 Consider what would be involved, say, in pr.tentmg a new 
 
 now
 
 72 THE FIXED LAW OF PATENTS 
 
 type-bar on a writing machine, if the patentee had to describe 
 all else in the machine and disclaim all else save the type-bar. 
 The present rule is that of Carnegie v. Gambia, 185 U. S. 403, 
 § 903, which is, briefly, that the specification is addressed to those 
 skilled in the art to which it pertains, and is sufficient if it may be 
 understood by such skilled persons — assuming as a matter of 
 course that such skilled persons are familiar with all that has gone 
 before. 
 
 Mere verbosity or unskilled statement are not fatal defects; 
 but verbosity may suggest triviality. Lyons v. Drucker, 106 Fed. 
 416, § 903. But where the defects are glaring and the patentee 
 has had opportunity to correct the same by reissue, the courts will 
 not look with favor upon such a patent. Matheson v. Campbell, 
 76 Fed. 910, § 904. In a basic patent less detail will be required. 
 Electric v. Pittsburg, 125 Fed. 926, § 905. But where the invention 
 is a narrow improvement, dependent for its novelty upon location, 
 size, form, or any detail of construction, greater definiteness of 
 specification is required. American v. Steward, 155 Fed. 731, § 904. 
 The recital of equivalents, or statements disclaiming limitation to 
 the specific construction or means shown and described neither add 
 to nor detract from the patent. The function need not be described; 
 nor need the benelScial uses be all known to the inventor. It is 
 enough if he has fully described the means. A patent for a process 
 should be definitive as to matters of elements, steps, and result. 
 Cochrane v. BadLsche, 111 U. S. 293, § 914; but the statement 
 quoted under § 914 from Electric v. Carborundum, 102 Fed. 618, 
 is believed to be open to serious criticism if it be taken as a general 
 proposition. Frequently the inventor (and his solicitor) is lacking 
 in scientific knowledge, and in some cases an entirely false idea has 
 possessed the mind of the patentee. These matter not so long as 
 the real invention is described. The ideal specification (which has 
 not yet been written) should, in the opinion of the writer, accomplish 
 the following: 
 
 1. It should describe the essential elements which enter into the 
 combination. 
 
 2. It should clearly indicate their co-action and operation. 
 
 3. It should do precisely what the claim should not — give a 
 functional statement of the invention. 
 
 4. It should be simple in terms. The best expert, either in draw- 
 ing a specification or in testifying for the benefit of the court, is 
 simple, direct, and avoids so far as is possible technical terms. 
 
 5. It should avoid all laudation and all attempts to declare the 
 basic character of the invention.
 
 BRIEF SURVEY 73 
 
 6. It should have a single aim: the disclosure of the invention 
 to enable others skilled in the art to make and use the same. The 
 specification is for the benefit of the public; the claim for the benefit 
 of the patentee. 
 
 STATE STATUTES AND REGULATIONS AFFECTING PATENT 
 RIGHTS, §920. 
 
 The fact that a patent happens to be a form of personalty pro- 
 tected by Federal law does not exempt it from the common rules 
 governing personal property. If we go back to the fundamental 
 proposition, that the Federal grant creates nothing that did not 
 before exist, but gives to the patentee the right to protect what he 
 has created and provides a forum therefor, the entire proposition 
 becomes simple. A state may not confiscate, by taxation or other- 
 wise, or Hmit the plain rights of the grant; but the police power 
 of the state may be exercised in the protection of its citizens, and 
 the seal of the Patent Office no more exempts the holder thereof 
 from the exercise of that power than does an internal revenue stamp 
 issued by the Federal Government exempt the person owning the 
 property to which it is attached. 
 
 STATUTE OF LIMITATIONS, § 921. 
 
 The amendment of Jan. 1, 1898, to Sec. 4921 renders the decisions 
 cited under this title of little moment. 
 
 STATUTES RELATING TO PATENTS — THE PATENT STAT- 
 UTE, §§922-923. 
 
 With the exception of Sec, 4887, relating to the effect of a foreign 
 patent (discussed under §§ 419-424), the patent statutes, as estab- 
 lished by the various acts of 1870-1-2, have remained without 
 considerable change. The Federal Judicial Code, in effect Jan. 1, 
 1912, affects the patent law only as it gives original jurisdiction to 
 the district courts and elevates the Court of Appeals, D. C. to its 
 proper place beside the nine circuit courts of appeals. The meaning 
 and construction of the various provisions are found only as they are 
 scattered through the decisions of the appellate courts. The Su- 
 preme Court has construed these by the same rules of construction 
 that it has applied to other statutes; and has held (Andrews v. 
 Hovey, 124 U. S. 694) that a patent statute cannot be judicially 
 settled until passed upon by that court. Since it is the practice 
 of the circuit courts of appeals to certify unsettled questions of law 
 to the Supreme Court, and since the Judicial Code makes definite 
 provision therefor, it is the reasonable inference that, in the event
 
 74 THE FIXED LAW OF PATENTS 
 
 of a serious and controverted question of statutoiy interpretation 
 arising, the rule of Andrews v. Hovey would be regarded as good 
 and sufficient reason for certifying such a question to the Supreme 
 Court, and also that conflict of decision between different circuits 
 will be materially lessened. The analysis of the patent statute, 
 containing the Patent Office annotations, and the sections of the 
 Judicial Code relating to patents, appended as a separate chapter 
 possesses utility. 
 
 THREATS, §924. 
 
 This title needs no comment. 
 
 TITLE, §§ 925-927. 
 
 The title to a patent and the title to a thing protected by a patent 
 are wholly separate and different things. In the absence of con- 
 tract provision, the passing of the title to the thing patented frees 
 the thing from the monopoly both in time and place. Only he who 
 holds a legal title to a patent may, alone, sue for infringement; 
 and what constitutes an actionable title is deterrnined by Waterman 
 V. Mackenzie, 138 U. S. 252, § 150. It is a wise rule that makes a 
 prima facie record title good as against a collateral attack by an 
 infringer, claiming no title in himself, who attempts to show that 
 the title in complainant is only an equitable title that he may avoid 
 infringement. Goss v. Scott, 108 Fed. 253, § 926. But w^hile, under 
 the circumstances of that case, the ruling was unquestionable, it is 
 doubtful if such a rule may be made general. Attention is directed 
 to Blackledge v. Weir, 108 Fed. 71, § 927. As elsewhere noted, it 
 is often desirable that joint owners should hold by the entirety. 
 This is a simple matter of assignment. For the peace of business 
 and for the preservation of the monopoly some provision which 
 will prevent the dissipation of the monopoly is desirable. Minor 
 interests may be created by hcense or shop right. It is a familiar 
 fact that most of the " patent-right frauds " have grown out of the 
 sale of territorial rights — state, county, or township rights. It 
 is a title that rarely is warranted. 
 
 UNPATENTED INVENTIONS, §§ 930-935. 
 
 An unpatented invention is, under common-law, common prop- 
 erty. The constitution and the statute lift it one step higher and 
 give it the character of an inchoate right. In that state it becomes 
 assignable — not as a thing in being, but as an inchoate right. It 
 has been held that a court of chancery cannot decree specific per- 
 formance to convey property which has no existence. Kennedy
 
 BRIEF SURVEY 75 
 
 V. Hazleton, 128 U. S. 724, § 931. But it is clear that, when such 
 inchoate right is matured into property, such right may be en- 
 forced. He who invents and keeps his invention a secret takes his 
 chances under the common-law. By deciding so to do he abandons his 
 inchoate right; and he who learns the secret lawfully has full right 
 to the invention. It is only when the statute is complied with 
 that the inchoate right becomes a patent right, and therefore, 
 property. The several rights which may be secured in an inven- 
 tion before patent under R. S. 4899 are set out in Wade v. Metcalf, 
 129 U. S. 202, § 932. The right of an employer to the unpatented 
 invention of an employee is a shop right only. Dable v. Flint, 
 137 U. S. 41, § 933. The distinction between one holding an inven- 
 tion in an unpatented state with no intent to protect it by patent, 
 and one who is holding such an invention for experiment, perfecting, 
 or merely biding his time Anthin the two-year limit the statute 
 gives him, is obvious. The one is abandonment; the other is 
 not. 
 
 WORDS AND PHRASES, §§ 936-^38. 
 
 As has been elsewhere remarked, it is a mistaken idea of patentees 
 and patent solicitors that they maj' broaden a claim by the use 
 of the term " means " or " means whereby." Observe the facts: 
 The court must first turn to the specification and drawings and 
 identify the " means " as indicating the specific devices showTi and 
 described. If there is any range of equivalency applicable, it can 
 be applied only after the " means " have been translated into the 
 specific elements shoAvn. ]\Ianifestly, using such terms, instead of 
 bringing in directly the elements shown, serves no good purpose, 
 but places upon the court an additional burden — that of trans- 
 lation of terms into elements. The words " substantially as de- 
 scribed," " substantially as set forth," are words of hmitation, 
 limiting the claim to the specific elements described. Pope v. Gor- 
 muUy, 144 U. S. 248, § 937. But compare this rule with that of 
 Hobbs V. Beach, 180 U. S. 383, § 937. Clearly the latter rule is 
 the one which has been followed generally, and followed in this 
 manner: When the patent is generic and deserving of liberal con- 
 struction, such words of limitation are given the least significance 
 consistent with their use; where the patent is narrow or trivial, 
 the rule is severely applied. The use of a '' whereby clause " is 
 useful in only one way: it may explain the claim by indicating its 
 function. It adds nothing to the claim — nothing whatever — 
 so far as concerns the actual combination. 
 
 And yet, in all these matters, it is clear that the courts employ
 
 76 THE FIXED LAW OF PATENTS 
 
 rules, not for the sake of the rules, but for the sake of justice. It 
 is true of the patent law, perhaps as of no other branch of the law, 
 that we find a rule brought into being and applied to the case in 
 hand — a rule hard and harsh — and presently that rule is con- 
 strued, mollified, and adapted, that it may still be used, still justice 
 be done. Such has been the wise course of equity.
 
 THE FIXED LAW OF PATENTS 
 
 ABANDONMENT. 
 
 Statutory provision § 1 
 General Rules § 2 
 After Application § 3 
 Amendment § 4 (see § 52) 
 Application 
 
 Abandonment and renewal § 5 
 
 Delay § 6 
 Constructive § 7 _ 
 
 Decision of Commissioner — iNot 
 
 Final § 8 . , „ , cc 
 
 Division of Application § 9 {see §§ 
 
 348, 356) _^ ^ , ^,-, 
 
 Experimental Use § 10 (see § 412) 
 
 Evidence of § 11 (see § 388) 
 
 Failure to Claim § 12 
 
 Prosecution of Application § 13 
 Of Interference § 14 
 Of Renewal Application § 15 
 
 Piracy § 16 
 
 Prior Patent § 17 
 
 Public Use § 18 {see § 849) 
 
 Subsequent Patent § 19 
 
 Miscellaneous Rulings § 20 
 
 See —Anticipation §§ 60-1-2; Claims 
 
 § 203; Defenses § 316; Evidence § 
 
 413- Invention § 590; Reissue § 870 
 
 & I. Statutory Provision. 
 
 A ^or<=.^n wlio his invcntecl * * * unless the same is proved to have 
 K ^^hSoned ma^* * * * obtain a patent therefor. R. S 4886. 
 'T/'/Cn faSof the applicant.to prosecute the same within one year 
 after any action therein, of which notice shall have been given to the appli- 
 rlnt ?hJv shall be regarded as abandoned by the parties thereto R. S. 4894 
 '"f '*'*'a uponThe hearing of renewed applications preferred under 
 this section, abandonment shall be considered as a question of fact. R. S. 
 
 ^^Note- Prior to the amendment to Sec. 4894 on Mar 3, 1897, the period 
 of time mentioned was two years. In determining whether there is abandon- 
 ot time "^^""°7^ /' , , •/: therefore necessary to determine whether the 
 p^tSu^'riitfor Ihe applSn was filed before, that amendment went 
 
 "'Thf subject of abandonment also arises in connection with Defences and 
 
 Invention. 
 
 S 2. General Rules. 
 
 Forfeitures are not favored in law, and the courts are always prompt to 
 seil°tl7o1 rnrcircumstances that jndica^ an ele^^t.n to waive a for- 
 feiture. — Ins. Co. V. Egglestone, 96 U. S. 5^2, 24 L. Ed. »4i. 
 
 Ins. Co. V. Norton, 96 U. S. 234. 
 
 It has not been, and indeed cannot be denied, that an inveut^r may 
 
 So^: ShrZl^cellli^^otX^ 
 
 To^where giftVare once made to the public in tWs -ay, they become abso- 
 lute. — Pennock V. Dialogue, 2 Pet. 1; 7L.hd.6Zi. 
 
 Abandonment may be by express declaration or by conduet equally sig- 
 nificant with language, as acquiescence in its use by others or by wiiiui
 
 78 THE FIXED LAW OF PATENTS 5 3 
 
 negligent postponement of his claims, or by an attempt to withhold the 
 invention from the pubhc. — Kendall v. Winsor, 62 U. S. 322; IG L. Ed. 165. 
 
 An abandonment is a dedication and like any other dedication, it should 
 be clearly proved. It rests ujDon the intention of the inventor. If he expressly 
 declares, or by his acts clearly shows, his intention to dedicate his invention 
 to the public, a finding of abandonment would be warranted. But such a 
 dedication should not be hghtly presumed, because it surrenders a vested 
 right of property. — Mast v. Dempster, 82 Fed. 327; 27 C. C. A. 191. But 
 see 177 U. S. 485. 
 
 Clear evidence of an intention to dedicate an improvement to the public 
 is indispensable to establish abandonment. The patent in suit and the appli- 
 cation upon which it is based are jiersuasive i)roof that the inventor never 
 intended to dedicate, and never did dedicate, the improvement they secure 
 to the pubhc. — Ide v. Trorhcht, 115 Fed. 137; 53 C. C. A. 341. 
 
 Mast V. Dempster, 82 Fed. .327; Woolen v. Jordan, 7 Wall. 583; Adams v. 
 Jones, Fed. Cas. 57; Jones v. Sewall, Fed. Cas. 7495; McMiUin v. Barclay, Fed. 
 Cas. 8,902; Pitts v. Edmonds, Fed. Cas. 11,191. 
 
 § 3. After Application. 
 
 An abandonment of an invention to the public may be e\nnced by the 
 conduct of the inventor at any time, even within the two years named in 
 the law. The effect of the law is, that no such consequence will necessarily 
 follow from the invention being in public use or on sale with the inventor's 
 consent and allowance at any time within two years before his application; 
 but that, if the invention is in public use or on sale prior to that time, it will 
 be conclusive evidence of abandonment, and the patent will be void. — 
 Elizabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 There may be an abandonment of an invention to the public, as well after 
 an application has been rejected or withdrawn, as before any application is 
 made. Such abandonment may be proved either by express declarations 
 of an intention to abandon, or by conduct inconsistent with any other 
 conclusion. — U. S. v. Whitney, 118 U. S. 22; 30 L. Ed. 53; 6 S. Ct. 950. 
 
 Planing v. Keith, 101 U. S. 479. 
 
 There is a material difference between the abandonment of an invention 
 and the abandonment of an application for letters patent thereon, by failure 
 to comply with section 4894, R. S. The first gives the invention to the 
 public, and, once done, the act is irretrievable; but, besides the power con- 
 ferred upon the Commissioner of Patents to relieve an applicant from an 
 abandonment of his application under the statute, an apphcation which has 
 lapsed, or been rejected or withdrawn, may be renewed or repeated so long, we 
 suppose, as the invention itself has not been abandoned by reason of a two 
 years' public use or otherwise. — Western v. Sperry, 58 Fed. 186; 7 C. C. 
 A. 164. 
 
 Planing Machine v. Keith, 101 U. S. 479; Kendall v. Winsor, 21 How. 322; 
 Shaw V. Cooper, 7 Pet. 292; U. S. v. Whitney, 118 U. S. 22. 
 
 There may be abandonment before application or thereafter. — Crown 
 V. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 There is a wide difference between the abandonment of an invention and 
 the abandonment of an application. An abandonment of an application is 
 not necessarily an abandonment of the invention, and after the application 
 has been abandoned a valid patent for the invention may nevertheless be 
 secured upon a new application, provided the invention has not gone into
 
 |§ 4_5 ABANDONMENT 79 
 
 thfr e!?[ mul'b'e r 'koneV fror^X p'resentation of ".efirst application 
 and not trorthe filing of subsequent applicaUons or amendments. - Haj e3 
 Young V. St. Louis, 137 Fed. 80 ; 70 C. C. A. 1. 
 
 T> 11 T^ 1 r.^ ift7 T^ S '>'^4- Colo-ate v. Western, led. Las. z.yyo, 
 ,.-H:,^- ^-p^""-, q1^ S G 4^ ThoLon-Ho^^^^^^^ Winchester, 71 Fed. 192; 
 Miehle V. Read, 96 O- G-/^^' V^°Xt Goodyear. 93 U. S. 486; Cain v. Park, 
 l^:^SrS^J:A^lr,'T^:o: gS 's.-rUng ,. S. Lo i,. 79 Fed. 80; 
 DedeAk V. Fox, 56 Fed. 714; Ligowski .. Amencan, 34 Fed. 328. 
 
 The original application. .3 abancto^^^^ 
 
 statutory period. APP''''''"' ?"™P'''/;,t S„,, He then filed a second 
 to secure revival of '^e app |;;f t.on but '^^^^^^^^ Md The unavoidable 
 apphcation but dad not file ^^^f^^l^°'l°\bmAon,d-. that the second 
 
 :;^!=,:art2o2^toft^ori.^ 
 
 IkTsl^^dTp^lllt^^^^aS^^f "aljrt^ t a^^^^^^^^^ f S,rS: tS 
 Young V. St. Louis, 137 Fed. 80; 70 C. C. A. 1. 
 
 Bevin .. East Hamilton Fed. Cas^ ^^,I,\eV"Fri''cis%t92; "xS^^Saylet 
 Wd-farS-^S, 'li plt,fllmps^;^Ved'.'S'.57^;'car.y „. keUogg, 73 O. G. 
 285; Cain r. Park, 86 O. G. 797. 
 
 S 4. Amendment. . * .„ 
 
 67 Fed. 930; 15 C. C. A. 84. 
 
 S <, Application — Abandonment and Renewal. 
 
 In our iud-ment, if a party chose to withdraw his application for a patent, 
 
 ii!:?hrtuiir^ 
 SEv!;;cihriSorthn^arn^^^^^^^^^^^ 
 
 68U. S. 317; 17 L. Ed. 684. 
 
 While the application remained before the commissioner, it repelled any 
 infere ce of abandonment or dedication from the omission to again claim 
 it. - Suffolk V. Harden, 70 U. S. 315; 18 L. Ed. 76.
 
 80 THE FIXED LAW OF PATENTS §§ 6-7 
 
 The renewal application was filed nearly 5 years after the original, and 
 public use had been continuous from the first filing. Held: The languat^e 
 of this statute is plain (see 4894), and requires no aid from construction. 
 The Patent Commissioners have always held that the second application 
 cannot be considered a continuation of an abandoned application — Lav 
 V. Indianapolis, 120 Fed. 831 ; 57 C. C. A. 313. 
 
 Ex parte Livingston, 20 O. G. 174G; Hien v. Pungs, 68 O. G. 657- Ex parte 
 ?fF^'x^^ ^- 9; ^^?^'' ^^'■^y ^- Kellogg, 73 O. G. 285; Lindsay v. Stein, 10 Fed. 
 912; Weir v. Morden, 21 Fed. 243; Kittle v. Hall, 29 Fed. 508; Walk. Pat sec 
 147; Rob. Pat. sec. 580. 
 
 § 6. Application — Delay of. 
 
 Delay requisite for completing an invention or for a test of its value or 
 success does not amount to abandonment. — Kendall v. Winsor 62 U S 
 322; 16 L. Ed. 165. ' ' 
 
 Undoubtedly, an inventor may abandon his invention, and surrender or 
 dedicate it to the public; but mere forbearance to apply for a patent during 
 the progress of experiments, and until the party has perfected his invention 
 and tested its value by actual practise, affords no just grounds for any such 
 presumption. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 
 
 Kendall v. Winsor, 21 How. 322; Pennock v. Dialogue, 2 Pet. 1. 
 
 The inventor was absolutely impecunious. For nearly nine years he 
 struggled with poverty, with rejections of his application, with delays of his 
 solicitor, but never admitted abandonment or gave up hope or effort. The 
 application was three times renewed and finally allowed for what the appli- 
 cant had contended. Held that even such a long delay, in view of condition 
 and conduct did not amount to abandonment. — Smith v. Goodvear 93 
 U. S. 486; 23 L. Ed. 952. ^ ' 
 
 Dissenting: Bradley, Miller, Field. 
 
 Godfrey v. Eames, 1 Wall. 317. 
 
 A delay of some nine years after the invention was complete held to be 
 abandonment. — Consolidated v. Wright, 94 U. S. 92; 24 L. Ed. 68. 
 
 It is sometimes said an inventor acquires an undue advantage over the 
 public by delaying to take out a patent, insomuch as he thereby preserves 
 the monopoly to himself for a longer period than is allowed by the policy 
 of the law; but this cannot be said with justice when the delay is occasioned 
 by a bona fide effort to bring the invention to perfection, or to ascertain 
 whether it will answer the purpose intended. It is in the interest of the public 
 as well as himself, that the invention should be perfect and properly tested 
 before apatent is granted. Any attempt to use it for profit, and not by way 
 ot experinient, for a longer period than two years before the application, would 
 deprive the inventor of his right to a patent. — Elizabeth v. American, 
 97 U. S. 126; 24 L, Ed. 1000. 
 
 Delay in applying for patent until foreign patent expires is abandonment. 
 — Huber v. Nelson, 148 U. S. 270; 37 L. Ed. 447; 13 S. Ct. 603. 
 Nesbit's case, C. D. 1870, 106'. 
 
 § 7- Constructive. 
 
 If an inventor makes his discovery public, looks on and permits others 
 to treely use it without objection or assertion of his claim to the invention, 
 ot which the public might take notice, he abandons his invention. — McClurg 
 V. Kingsland, 1 How. 202; 11 L. Ed. 102.
 
 j§ 8-9 ABANDONMENT 81 
 
 Pennock v. Dialogue, 2 Pet. 14; Grant .. Raymond, 6 Pet. 248; Shaw .. 
 Cooper, 7 Pet. 313. 
 
 But if the inventor allows his machine to be used by other persons generally 
 either with or without compensation, or if it is, with his consent put on sale 
 ?f such use thl it will be ^ pubUc use ai.d on public sa^ wit^un the meaning 
 of the law. — EUzabeth v. American, 9/ U. fe. 126, 24 L. La. luuu. 
 
 It has sometimes been said that an invention cannot be held to have been 
 abandoned unless it was the intention of the inventor to abandon it But 
 thrsl^oVbe understood as meaning that such an int..tionm^^^^^^^ ex- 
 nressed in words. — Woodbury v. Keith, 101 U. fe. 4^9, 25 L. Ld. y^y. 
 ^ Sndall .. Winsor, 21 How. 322; Shaw .. Cooper, 7 Pet. 292; Adax^s .. Jones, 
 1 Fish. P. C. 527. 
 
 His inaction, his delay, his silence, under J^^i^^^^^^^f!^^?/ .^J^.^n's 
 significant. Though not express avowals of ^^^^^^^ "^^^^ . ^^^l^y of 
 Pifr thpv had a voice " not to be misunderstood. Ihey s^)oke piainiy oi 
 irqiiecencehithe rejection of his application for a patent. They encouraged 
 the manufacture and sale of his invention. - Woodbury v. Keith, 101 U. b. 
 479; 25 L. Ed. 939. 
 
 Where there is an entire abandonment of all «^Pf ^^^^f . jl^^^Sfil^^the 
 an invention and securing a patent under circumstances that jus ihesth^ 
 formation of the expectation that the ideas of the inventor will always be 
 f?eTto the pubhc and the inventor clearly manifests his intentions to re- 
 inq Jish an/right; thereto, the inchoate right to the patent thus abandoned 
 caZit be resumed. But he law does not favor forfeiture, and it being a 
 question of Set whether there has been abandonment, all reasonable doubts 
 S be Resolved in favor of the patent. - Crown .. Aluminum, 108 Fed. 
 845; 48C. C. A. 72. 
 
 5 8 Decision of Commissioner — Not Final. 
 
 The decision of the Commissioner in favor of the applicant upon the ques- 
 tion whether the invention has been abandoned, is not conclusive, but may 
 be contested and reviewed i" a suit brouglit for the infringem^^^^^^^ the 
 patent. - U. S. v. Whitney, 118 U. S. 22; 30 L. Ed. 53, 6 S. Ct. J50. 
 
 Planing v. Keith, 101 U. S. 479. 
 
 6 0. Division of Application. 
 
 Pending consideration in the patent office, a subordinate claim becam^ 
 
 claim for a series of shelves, etc. buch a consirucuo 
 
 decided cases, or by known principles of law. - Electric v. Jirusn, o^ 
 
 130; 2 C. C. A. 682. 
 
 The combination claimed in 1883 was shown -^^^^^ drawing an^^^^^^^^^ 
 tion of the earlier patent, but it^was not claimed, f^^^^waj^ra device 
 
 vocablv dedicated to the pubhc by th^«PP^"^"twin^f 'r^^^^^^^ of a 
 
 or combination which is not claimed in ^he f awmgs or spec.rcat 
 
 patent estops the patentee from securing a ^^'^^P^jTJjLf "'k 97 
 
 quent patent as well as by any other means. - M Bride i. Kmgma , 
 Fed. 217; 38 C. C. A. 123. . g^ 
 
 James v. CampbeU, 104 U. S. 356; Adams v. Stamping Co. 28 Ted. 3bU.
 
 82 THE FIXED LAW OF PATENTS § 10 
 
 The original patent in the present case was a divisional application, 
 required by the Patent Office; consequently the description of the unitary 
 structure or mechanism of the original patent, together with claims for 
 combinations embracing the whole structure or apparatus, or combinations 
 of the elements of the reissue with additional elements, such as the tension 
 devise, did not work an abandonment or disclaimer of the combination 
 specified in the reissue. — Thomson-Houston v. Black River, 135 Fed. 759; 
 68 C. C. A. 461. 
 
 Suffolk V. Hayden, 3 Wall. 315; Barbed Wire Case, 143 U. S. 275. 
 
 That an applicant having filed an application sufficiently broad to carry 
 all the claims, may file a second application while the first is pending and 
 divide the claims without abandonment, see Victor v. American, 145 
 Fed. 350; 76 C. C. A. 180. 
 
 § 10. Experimental Use. 
 
 Experimental use for the purpose of testing the qualities of an invention 
 is never public use, nor is there any proof that the delay operated to mislead 
 others in taking up the invention and with greater diligence perfecting it. 
 The case would be presented in a different aspect if another inventor had 
 entered the field, induced by the supposed abandonment and misled by the 
 delay. It is of no advantage to the public that an inventor should apply 
 for his patent before he satisfies himself as to the best form in which to 
 embody the invention, and the statute which provides that two years' 
 public use shall not work a forfeiture clearly has no application to a case of 
 merely uncompleted experimentation. — Crown v. Aluminum, 108 Fed. 845; 
 48 C. C. A. 72. 
 
 Wood V. Rolling Mill, Fed. Cas. 17,941. 
 
 If, then, an alleged invention is in fact an invention, no subsequent aban- 
 donment of it can be said to be an abandoned experiment. At most, it is 
 an abandoned invention. But an invention that has been abandoned is 
 as much an anticipation and to as great an extent negatives novelty, as an 
 invention that has not been abandoned. — Buser v. Novelty, 151 Fed. 478: 
 SICCA. 16. 
 
 Gayler v. Wilder, 10 How. 496; Rich v. Lippincott, Fed. Cas. 11,758; Shoup 
 V. Henrici, Fed. Cas. 12,814. 
 
 Note:_ It is evident in comparing this remarkable ruling with the 
 authorities that the judge writing the opinion has made a general statement 
 subject to very grave qualifications. 
 
 An abandoned experiment is an experiment that has been abandoned. 
 As a mere experiment never amounts to anticipation, the epithet " aban- 
 doned " here is unnecessary. If, however, the machine or other thing is 
 complete, and capable of producing the result sought to be accomplished, 
 it has passed the experimental stage and becomes an invention; and in order 
 that it may constitute an anticipation, it is immaterial how well it became 
 known or how much it was used. Indeed, it has been held that if the alleged 
 invention is complete and capable of producing the results sought to be 
 accomplished, though it may never have been used, is an invention and an 
 anticipation. — Buser v. Novelty, 151 Fed. 478; 81 C C A. 16. 
 
 Coffin V. Ogden, 18 Wall. 120; Reed v. Cutter, Fed. Cas. 11,645; Walker on 
 Pat. sec. 71; Stitt v. Easton, 22 Fed. 649. 
 
 Note: These statements, as applied to the facts in this case, constitute 
 a remarkable form of judicial reasoning.
 
 S§ 11-12 ABANDONMENT 83 
 
 § II. Evidence of. 
 
 The evidence of abandonment is clearly a question of fact for the jury. — 
 Kendall v. Winsor, 62 U. S. 322; 16 L. Ed. 165. 
 
 Desertion of a machine, never patented, may be proved by showing that 
 the inventor, after he had constructed it, and before he had reduced it to 
 practice, broke it up as something requiring more thought and experiment, 
 and laid the parts aside as incomplete, provided it appears that those acts 
 were done without any definite intention of resuming his experiments, and 
 of restoring the machine with a view to apply for letters patent. — Seymour 
 V. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Johnson v. Root, 2 Cliff. 123; Gayler v. Wilder. 10 How. 498; Parkhurst v 
 Kinsman, 1 Blatchf. 494; White v. Allen, 2 Cliff, 230. 
 
 It is quite certain that the action of the Commissioner granting the patent 
 is not conclusive of the question whether there had not been an abandonment 
 — Woodbury r. Keith, 101 U. S. 479; 25 L. Ed. 939. 
 
 Abandonment may undoubtedly be proved within two years prior to 
 the filing of the application, but it ought not be presumed!^ and it should 
 be established by convincing evidence of the intention of the owner of the 
 invention to dedicate it to the public. An abandonment is a dedication, and 
 like any other dedication, it should be clearly proved. — Mast v. Dempster 
 82 Fed. 327; 27 C. C. A. 191. But see 177 U. S. 485. 
 
 § 12. Failure to Claim. 
 
 A failure to claim what has been described is abandonment and dedica- 
 tion ; and a reissue to recover such unclaimed matter is subject to the rules 
 of laches. — Miller v. Brass Co., 104 U. S. 350; 26 L. Ed. 783. 
 
 C's acquiescence in H's claim must be regarded, so far as he is concerned, 
 as an abandonment of any right on his part to a patent for the same inven- 
 tion, and having deliberately rested in that acquiescence for a period of nine 
 or ten years, it is too late according to the settled course of decisions in this 
 court to resume his rights. — Hartshorn v. Saginaw, 119 U. S. 664; 30 L. 
 Ed. 539; 7 S. Ct. 421. 
 
 What is described in the specification of a patent and not claimed is pre- 
 sumed to have been old. — Electric v. Boston, 139 U. S. 481 ; 35 L. Ed. 250- 
 11 S. Ct. 586. 
 
 Where an inventor describes all and claims only part of his invention he is 
 presumed to have abandoned the residue to the public. — McClain v. 
 Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76. 
 
 An omission to claim a device or combination apparent on the face of the 
 patent is abandonment and dedication of that part of the invention. — 
 Underwood v. Gerber, 149 U._S. 224; 37 L. Ed. 710; 13 S. Ct. 854. 
 
 Miller v. Brass Co. 104 U. S. 552; Mahn v. Harwood, 112 U. S. 354. 
 
 It is possible that the inventor was entitled to a broader claim than that 
 to which he limited himself; but if he described and claimed only a part of 
 his invention, he is presumed to have abandoned the residue to the public. — 
 Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 McClain v. Ortmayer, 141 U. S. 419.
 
 84 THE FIXED LAW OF PATENTS § 13 
 
 An inventor, by describing an invention in a patent granted to him, does 
 not necessarily preclude himself from patenting it subsequently. His 
 omission to claim what he describes may operate as a disclaimer or abandon- 
 ment of the matter not claimed; but it has no such effect when it appears 
 that the matter thus described, but not claimed, was the subject of a pending 
 application in the patent office by him for another patent. This was ex- 
 phcitly adjudged in Suffolk v. Hayden, 3 Wall. 315, and recognized as sound 
 doctrine in the barbed wire case, 143 U. S. 275. — Thomson-Houston v. 
 Elmira, 71 Fed. 396; 18 C. C. A. 145. 
 
 When a specific element is not claimed as a device by itself, it is,- in effect, 
 admitted that the particular element is old and was not invented by the 
 patentee. — Overweight v. Improved, 94 Fed. 155; 36 C. C. A. 125. 
 
 3 Rob. Pat. sec. 923; Cornplanter Pat. 23 Wall. 181; Rowell v. Lindsay, 
 113 U. S. 97; Meter Co. v. Desper, 101 U. S. 332. 
 
 The statute requires the inventor to particularly point out and distinctly 
 claim the improvement or discovery which he seeks to secure (R. S. sec. 
 4888), and that when he has made his claims he has thereby disclaimed and 
 abandoned to the public all other combinations and improvements that are 
 not mere evasions of the device, combination, or improvement which he 
 claims. — Kinloch v. Western, 113 Fed. 652; 51 C. C. A. 362. 
 
 Keystone v. Phoenix, 95 U. S. 274; Mfg. Co. v. Sargent, 117 U. S. 373; Mc- 
 Clain V. Ortmayer, 141 U. S. 419: Building Co. v. Eustis, 65 Fed. 804; Stirrat v. 
 Mfg. Co. 61 Fed. 980; Adams v. Lindell, 77 Fed. 432. 
 
 His specifications and claims constitute a dedication to the public of 
 every invention they disclose but do not claim. — Ide v. Trorlicht, 115 Fed. 
 137; 53 C. C. A. 341. 
 . Adams v. Lindell, 77 Fed. 432. 
 
 That, although the patent may disclose distinct novelty, unless the novel 
 feature is claimed, recovery is barred, see Robinson v. Chicago, 118 Fed. 
 438; 55C.C. A. 254. 
 
 § 13. Prosecution of Application. 
 
 The patent law favors meritorious inventors by conditionally conferring 
 upon them, for a limited period, exclusive rights to their inventions. But 
 it requires them to be vigilant in complying with the statutory conditions. 
 It is not unmindful of possibly intervening rights of the public. An inventor 
 cannot, without cause, holdhis application pending during a long period 
 of years, leaving the public uncertain whether he intends to prosecute it, 
 and keeping the field of his invention closed against other inventors. — 
 Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939. 
 
 An inventor whose application for a patent has been rejected, and who, 
 without substantial reason or excuse, omits for many years to take any step 
 to reinstate or renew it, must be held to have acquiesced in its rejection, and 
 to have abandoned anv intention of further presenting his claim. — U. S. 
 V. Whitney, 118 U. S. 22; 30 L. Ed. 53; 6 S. Ct. 950. 
 
 Planing v. Keith, 101 U. S. 479. 
 
 The failure of the applicant to prosecute his application within two years 
 after any action is laches, which unexcused operates as abandonment. — 
 Gandy v. Marble, 122 U. S. 432; 30 L. Ed. 1223; 7 S. Ct. 1290. 
 
 Butterworth v. U. S. 112 U..S. 50: Whipple v. Miner, 15 Fed. 117; Ex p. Squire, 
 3 B. &. A. 1.33; Butler v. Shaw, 21 Fed. 321.
 
 §§ 14-18 ABANDONMENT 85 
 
 The failure to prosecute appeal action within two years from any decision 
 comes under the rule of sec. 4894. — Gandy v. Marble, 122 U. S. 432; 30 
 L.Ed. 1223; 7 S. Ct. 1290. 
 
 § 14. Prosecution of Interference. 
 
 The contestant got the patent ; and although complainant got a license 
 under it, he got it at a pretty large price. But, whatever may have mduced 
 his action it should be regarded as an admission of contestant s priority, 
 fully sufficient to make out a prima focie case against him. If he could have 
 answered this, it was his privUege to do so and he would, no doubt, have done 
 it. As he did not, we must hold it to be decisive. — Shoemaker v. Merrow, 
 61 Fed. 945; 10 C. C. A. 181 : 
 
 § 15. Prosecution of Renewal Application. 
 
 We concur in so much of the opinion of the court below as holds that : 
 " If more than one application could be made, the final apphcation must 
 be made within two vears after the allowance of the original application, the 
 term ' the original application,' as used in this section, meaning the first 
 
 ^^There^^s no ambiguity in the language of the statute as to the limitation 
 of time within which the later application must be made. The provisions for 
 withholding the patent upon the nonpayment of the final fee within six 
 months and for relief from the effect of such provisions, are imperative. — 
 Weston V. Empire, 136 Fed. 599; 67 C. C. A. 374. 
 
 § 16. Piracy. 
 
 if before his application for a patent his invention should be pirated by 
 another or used without his consent, it can scarcely be supposed that the 
 Let'islature had within its contemplation such knowledge or use. — Pennock 
 1-. Dialogue, 2 Pet. 1 ; 7 L. Ed. 327. 
 
 The right of the plaintiff to his invention is compared to his right to other 
 propertv, which cannot be divested by fraud or violence; and the case of 
 Miller v Taylor (4 Burr, 2303) where seven judges against four held, that 
 at common "law an author by publishing a literary composition does not 
 abandon his right, is referred to as illustrative of the principle. — bhaw 
 V. Cooper, 7 Pet. 292; 8 L. Ed. 689. 
 
 § 17. Prior Patent. 
 
 Quaere- The defendant claims that an expired foreign patent for a speci- 
 fied and described invention is so substantial a Umitation that it is in fact a 
 bar to a subsequent United States patent for the same invention to the same 
 inventor, and that an expired foreign patent for a subordinate feature of a 
 described but unclaimed invention is a bar to a subsequent United btates 
 patent to the same inventor for the generic invention, because, by not 
 taking out his foreign patent for the generic invention and by permitting 
 the short term patent to expire, he had abandoned the generic invention to 
 the world The interesting questions of law which are involved in these two 
 propositions will become practically important if the facts in the case reqmre 
 their decision. — Electric v. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 Note: See Welsbach v. Apollo, 96 Fed. 332. 
 
 § 18. Public Use. 
 
 WTiere the inventor practised his art as a completed invention for more than 
 two years taught it to a large number of persons and received pay for such
 
 86 THE FIXED LAW OF PATENTS § 19 
 
 instruction, such use will be considered abandonment. — International v. 
 Gaylord, 140 U. S. 55; 35 L. Ed. 347; 11 S. Ct. 716. 
 
 Smith V Sprague, 123 U. S. 249; Consolidated v. Wright, 94 U. S. 92; Egbert 
 V. Lippmann, 104 U. S. 333; Elizabeth v. Nicholson, 97 U. S. 126. 
 
 The invention was one which the inventor could have tested in his own 
 home, and by use in his own family. He did not sell simply one or two and 
 wait to see how they satisfied the purchasers or what defects were discovered 
 by them ; but the firm of which he was a member invited the public to buy, 
 representing the beds to be unequalled, and continued to manufacture and 
 sell them from month to month and from year to year, in the same manner 
 as any other article in their stock was manufactured and sold; and each sale 
 was made at a profit and with the contemplation of a profit. The experiment 
 was not a testing for the purpose of discovering defects and perfectmg the 
 invention, but a testing of the market, and to see how the article would sell, 
 or, as the inventor said, " to see how it will take with the trade." This was 
 a trader's, and not an inventor's experiment. Such a use does not carve an 
 exception' out of the statute. — Smith & Davis v. Mellon, 58 Fed. 705; 7 C. 
 C. A. 439. 
 
 Elizabeth v. Pavement Co. 97 U. S. 126; Egbert v. Lippmann, 104 U. S 333; 
 Manning v. Glue Co. 108 U. S. 462; Mfg. Co. v. Sprague, 12:-J U. S. 249; Andrews 
 V. Hovey. 123 U. S. 267; Root v. Railroad Co. 146 U. S. 210. 
 
 Mere forbearance to apply for a patent until one has protected his inven- 
 tion, and tested it by actual practice, affords no just ground to presume its 
 abandonment; nor will the use or sale of it within two years before the 
 application is filed afford such ground, unless such use or sale is accompanied 
 by other acts or by declarations which clearly evidence an intention to 
 dedicate an improvement to the pubhc. — Mast v. Dempster, 82 Fed. 327; 
 27 C. C. A. 191. But see 177 U. S. 485. 
 
 Ao'awam v. Jordan, 7 Wall. 583; Adams v. Jones, Fed. Cas. 57; Babcock v. 
 Degener, Fed. Cas. 698; Jones v. See wall, Fed. Cas. 7,495; McMillin v. Barclay, 
 Fed. Cas. 8,902; Pitts v. Edmonds, Fed. Cas. 11,191. 
 
 §19. Subsequent Patent. 
 
 No. 260,653 states on its face that it is a division of case I in which other 
 features of the invention were claimed, so that the public was not misled 
 into the idea that unpatented portions of the invention had been abandoned. 
 — Electric v. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 So long as it was not in public use, and no one else had made and procured 
 a patent for the same discovery, his right to apply for a patent ^yas subject 
 to no restriction. Even if he had forgotten the invention, or laid it aside, 
 as worthless, — abandoned it, — he had the right to take it up again, and to 
 proceed as if he had then first made the discovery. Even if he did acquire 
 knowledge of the subsequent patent before his own patent was granted, it 
 was only natural and right, as the quotation from the decision of the Supreme 
 Court recognizes, that he should be stimulated to a fresh attempt to obtain 
 a patent, it being clear beyond dispute that he was the first discoverer. 
 ^Referring to Planing Mill v. Keith, 101 U. S. 479.) — Western v. Sperry, 
 58 Fed. 186; 7 C. C. A. 164. . , • • •. 
 
 (This holding, as stated, is in my opinion, absolutely wanting in equity 
 and an absolute misconstruction of Planing Mill v. Keith. The fact that 
 Chief Justice Fuller concurred in the decision of this case would suggest that 
 he must have done so on other grounds than the ruling here stated in the 
 opinion of Justice Woods.)
 
 20 ABANDONMENT 
 
 87 
 
 § 20. Miscellaneous Rulings. 
 
 The assignee of an abandoned invention takes no better title than the 
 in^ntor has, and takes it subject to the abandonment. - Whitely v. Swayne, 
 74 U. S. 685; 19 L. Ed. 199. 
 
 The act of 1839 (sec. 7, Mar. 3, 1839, 5 Stat, at L. 354) as has repeatedly 
 been held had no effect to invalidate the patent, unless there be proof of 
 abandonment or of a use of the invention for more than two Years pnor to 
 the apphcation. — Beedle v. Bennett, 122 U. &. 71, 30 L. J^d. 1U74, / fc. 
 Ct. 1090. 
 
 Dissented to JJ. Bradley, Field and Gray 
 
 Reversed on facts, Andrews v. Hovey, 123 U. b. ^b/. 
 
 The answer in the case does not raise the question, -the abandonment 
 allesed being of the invention, and not of the application for the patent It 
 fs tfue that the respondents denied any information or belief whether the 
 etters patent '' refirred to in the bill of complaint, were issued in due form 
 of law If the respondents proposed to tender an issue of abandonment 
 ft was necessary to \o it by averments to that effect specific and clear enough 
 to be understood. - Western v. Sperry, 58 Fed. 186, 7 C. C. A. 164. 
 
 It sometimes happens that a device is abandoned for reasons wholly other 
 than 'rot^i inhere.lt qualities. As this machine is relied on by the appellan 
 oX as anticipatory, it is not necessarily of importance o inquire whether it 
 Possessed utility or was in all respects patentable, and we agree with the 
 drcuTt court that it cannot be classed with mere abandoned experiments. - 
 Packard v. Lacing, 70 Fed. 66; 16 C. C. A. 639. 
 
 Barr was employed under White. White made application for a patent 
 and Bar s gnSFth^e application as a witness. The claims were so restricted 
 that Whiteibandoned the application. Later Barr made ^PPl^f ^i^n or and 
 secured a patent on the same invention; and on the trial swore that the 
 orSnal Tnvention was his and not White's, and that the reason he did not 
 as er cbi^ to it was because he was under White and was afraid of losing 
 his position Held: Both were free men. White, with the consent of the 
 railway company, could discharge Barr at any time, and Barr at all times 
 was at libertrto leave his employment. It would be carrying the rule a great 
 way and to a dangerous extent to hold that anyone occupying a subordmate 
 Ston is not to be bound by his acts, as between himself and his superior, 
 because of a supposed fear upon the part of the clerk that, should he protes 
 he mTght lose his employment. His conduct under the circunistances if 
 he was in fact, or deemed himself to be, the inventor, is inexphcable, and runs 
 counter to the general conduct of responsible human beings. - Barr .. 
 Chicago 110 Fed. 972; 49 C. C. A. 194. .„ t, j 
 
 Lear^. Railroad, 139 Mass. 580; . Dougherty ..Steel Co. 88 Wis. 343; Reed 
 V. Stockmeyer, 74 Fed. 186; Atlantic v. Brady, 107 U. S. 192. 
 
 What is meant by forgotten, or as Mr. Chief Justice Taney puts it, " finally 
 forgotten' ^ It certainly does not mean that the value of the invention has 
 not been realized Ind it^s use has been abandoned. Judge Taney says that 
 ?hese facts are not sufficient of themselves to prevent anticipation, if the 
 invpnt on is still in the memory of the prior inventor; thus recognizing that 
 LvXe may not have be^n re^alized and its use may have been abandoned 
 and vet ?tmry still be in the memory of the inventor Robertson (Sic) 
 s^vs Sat it must be both " abandoned and forgotten," or ' disused and unre- 
 r^embered" Possibly light is thrown on the meaning of the word by the 
 Sc^thlt a forgotten invention is likened to a lost art or an unpatented or
 
 88 THE FIXED LAW OF PATENTS §§ 21-23 
 
 unpublished foreign invention. — Buser v. Novelty, 151 Fed. 478; 81 C. 
 C. A. 16. 
 
 Rob. Pat. Vol. 1, p. 323; Gaboon v. Ring, Fed. Cas. 2,291; Hall v. Bird, Fed. 
 Gas. 5,926; Hartshorn v. Tripp, Fed. Gas. 6,168; Davis v. Brown, 9 Fed. 647. 
 
 Note: Like the entire opinion in this case, this is a remarkable holding. 
 
 ABATEMENT. 
 
 Assignment of Patent Pending Suit 
 
 §21 
 
 Death of Complainant § 22 
 
 Dissolution and Merger of Corpora- 
 tion § 23 
 See — Pleading § 800 
 
 § 21. Assignment of Patent pending suit. 
 
 The equity rule, apart from the statutory or code provisions, is not the 
 same with respect to the effect of assignments pendente lite by plaintiff and 
 by defendant. " An assignment by a defendant of his interest in a litigation 
 does not necessarily defeat a suit. The assignee may, at his own election, 
 come in by an appropriate application, and make himself a party, so as to 
 assume the burden of the litigation in his own name, or he may act in the 
 name of his assignor." Ex parte Railroad Co. 95 U. S. 221. If a sole plaintiff, 
 suing in his own right, assigns his whole interest to another, he is no longer 
 able to prosecute the suit, because he is without interest in the litigation. 
 Story Eq. PI. sec. 348; Hoxie v. Carr, 1 Sumn. 173; Rose v. Fort Wayne, 
 63 Fed. 466. But this does not mean that the bill must be dismissed. The 
 effect of the assignment is stated by Judge Story not to be " necessarily 
 a destruction of the suit, like an abatement at law, where a judgment quod 
 cassetur is entered. It is merely an interruption to the suit, suspending its 
 progress until the new parties are brought before the court, and if this is 
 not done at a proper time the court will dismiss the suit." — Ecaubert v. 
 Appleton, 67 Fed. 917; 15 C. C. A. 73. 
 
 If a sole plaintiff, suing in his own right, assigns his whole interest to 
 another, he is no longer able to prosecute the suit because he is without 
 interest in the litigation. — Automatic v. Cutler-Hammer, 147 Fed. 250; 
 77 C. C. A. 176. 
 
 Ecaubert v. Appleton, 67 Fed. 917. 
 
 § 22. Death of Complainant. 
 
 Since the present appeals were taken, the patentee has died, and the 
 appellant now suggests that the causes of action do not survive, and the suits 
 cannot be further prosecuted in the name of the legal representatives of the 
 decedent. As to this, it is sufficient to say that what was called by Chief 
 Justice Marshall, in Gordon v. Ogden, 3 Pet. 35, " the silent practice of the 
 court "has always been the other way. It is everyday practice to revive such 
 suits, and the books are full of cases in which this has been silently done, no 
 one apparently entertaining a doubt of its propriety. — Railroad v. Turrill, 
 110 U. S. 301; 28 L. Ed. 154; 4 S. Ct. 5. 
 
 § 23, Dissolution and Merger of Corporation. 
 
 The dissolution of complainant under the N. Y. consolidation act in its 
 merger with the new corporation did not work abatement of its right to 
 continue the suit after such dissolution and consolidation. — Edison v. 
 U. S. 52 Fed. 300; 3 C. C. A. 83.
 
 24-25 ACTIONS 89 
 
 ACTIONS. 
 
 General Statement § 24 
 To Compel Issue of Patent § 25 
 Cancellation of Patent § 26 
 Interfering Patents § 27 
 See — Administrator § 41; Arbitra- 
 tion § 145; Assignment § 151; De- 
 
 fenses § 306; Demurrer § 323; Designs 
 § 336; Equity § 370; Fraud § 425; 
 Government § 428; Interjerences § 
 582; Interfering Patents § 586; Law 
 Actions § 733; Pleading and Prac- 
 tice I 788; Unfair Trade § 929 
 
 § 24. General Statement. 
 
 Actions for infringement of letters patent, of which the district courts of 
 the United States have exclusive original jurisdiction under the Judicial Code, 
 Sees. 24, 256, both at law and in equity, are considered separately under 
 Equitii, Law Actions, and Jurisdiction. Actions otherwise arising, of which 
 the district courts have exclusive jurisdiction and which arise out of the 
 Patent Statute, are the following: 
 
 § 25. To Compel Issue of Patent. 
 
 "Whenever a patent on application is refused, either by the Commissioner of 
 Patents or by the Supreme Court of the District of Columbia upon an 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 invention, 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 Commissioner to issue such patent on the applicant filing in the Patent 
 Office a copy of the adjudication, and otherwise complying with the require- 
 ments of law. 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 pro- 
 ceeding shall be paid by the apphcant, whether the final decision is in his 
 favor or not. R. S. 4915. 
 
 Mandamus will lie to compel a ministerial officer to do what is required 
 of him by law; but it will not lie to reverse his action when taken. — Hollo- 
 way V. Whiteley, 71 U. S. 522; 18 L. Ed. 335. 
 
 Decatur v. Paulding, 14 Pet. 515. 
 
 The remedy by bill in equity under sec. 4915 applies only when the Com- 
 missioner decides to reject an application for a patent, on the ground that 
 the applicant is not, on the merits, entitled to it. — Butterworth v. Hoe, 
 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25. 
 
 Will lie against the Commissioner. — Butterworth v. Hoe, 112 U. S. 50; 
 28 L. Ed. 656; 5 S. Ct. 25. 
 
 Com'r. V. Whiteley, 4 Wall. 522. 
 
 By sec. 739 and by the act of 1875 " no civil suit shall be brought before 
 either of said courts (Circuit or District) against an inhabitant of the U. S. 
 by any original process in any other district than that of which he is an 
 inhabitant or in which he maV be found at the time of serving the writ." 
 We entertain no doubt that this statute applies to suits brought under sec. 
 4915. The Commissioner of Patents is by law located in the Patent Office, 
 R. S. 476. His official residence is therefore at Washington, in the District 
 of Columbia. — Butterworth v. Hill, 114 U. S. 128; 29 L. Ed. 119; 5 S. 
 Ct. 960. 
 
 By sec. 739 and by the act of 1875, suits brought against the Commis- 
 sioner of Patents under 4915 are limited to the jurisdiction of courts including
 
 90 THE FIXED LAW OF PATENTS §26 
 
 his official residence, which is, Washington. — Butterworth v. Hill, 114 
 U. S. 128; 29 L. Ed. 119; 5 S. Ct. 960. 
 
 The provision of sec. 4915 is that the circuit court may adjudge that the 
 applicant " is entitled according to law, to receive a patent for his invention, 
 as specified in his claim or for any part thereof, as the facts in the case may 
 appear; " and that, if the adjudication is in favor of the right of the appli- 
 cant, it shall authorize the commissioner to issue the patent. It necessarily 
 follows that no adjudication can be made in favor of the applicant, unless 
 the alleged invention for which a patent is sought is a patentable invention. 
 The litigation between the parties on this bill cannot be concluded by solely 
 determining an issue as to which of them first made the device. -A deter- 
 mination of that issue alone, in favor of the applicant, carrying with it, as 
 it does, authority to the commissioner to issue the patent to him for the claims 
 in interference, would necessarily give the sanction of the court to the 
 patentabiHty of the invention involved. — Hill v. Wooster, 132 U. S. 693; 
 33L. Ed. 502; 10 S. Ct. 228. 
 
 Where action is brought to compel issue of a patent under R. S. sec. 4915 
 the court will not only determine prior rights between the parties but will 
 also adjudicate the patentability of the invention. — Hill v. Wooster, 132 
 U. S. 693; 33 L. Ed. 502; 10 S. Ct. 228. 
 
 Whether the original conc'eption was Gillette's, whether he disclosed it 
 adequately to Sendelbach, whether Sendelbach was chargeable as Gillette's 
 agent in embodying the conception in the forms of the two claims, were ques- 
 tions of fact presented to the Patent Office tribunals on virtually the same 
 evidence that is now adduced. To justify us in directing the issuance of a 
 patent to Gillette, we should be shown very clearly that the adverse findings 
 were erroneous. — Gillette v. Sendelbach, 146 Fed. 758; 77 C. C. A. 55. 
 
 When the patent was issued to the wrong person, the rightful owner may 
 maintain an action to compel a surrender and reissue. — Appleton v. Bacon, 
 67 U. S. 699; 17 L. Ed. 338. 
 
 § 26. Cancellation of Patent. 
 
 The bill was filed the day after the patent had expired and sought to set 
 aside and annul all claims arisen thereunder. Held: that there remained 
 nothing which could be the subject of a suit. — U. S. v. Goodyear, 76 U. S. 
 811; 19 L. Ed. 786. 
 
 A patent cannot be abrogated in a proceeding collateral thereto. — 
 Rubber Co. v. Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 Jackson v. Lawton, 10 Johns. 23; Field v. Seabury, 19 How. 332; Foley v. 
 Harrison, 15 How. 448. 
 
 An action to repeal or annul a patent on the ground of fraud or misrep- 
 resentation in obtaining the same can be brought only in the name of the 
 Government by the Attorney General. — Mowry v. Whitney, 81 U. S. 434; 
 20L. Ed. 858. 
 
 The ancient mode was by scire facias; but as this writ is not used in 
 this country, the chancery jurisdiction is by bill. — Mowry v. Whitney, 
 81 U. S. 434; 20 L. Ed. 858. 
 
 U. S. V. Stone. 2 Wall. 525; Atty. v. Vernon, 1 Vern. 277; Jackson v. Lawton, 
 10 Johns. 24; King v. Butler, 3 Lev. 220.
 
 5 26 ACTIONS 91 
 
 Whether court of equity will annul patent when obtained without fraii.l 
 or deceit, quaere. But we do not decide here whether a patent is absolutely 
 void because the patentee is not the first inventor, nor whether a court of 
 equity should set aside a patent where the party has obtained it without 
 fraud or deceit believing himself to be the first inventor. — U. S. v. Bell 
 Tel. Co. 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 These provisions, while they do not in express terms confer upon the courts 
 of equity of the United States the power to annul or vacate a patent, show 
 very clearly the sense of Congress that if such power is to be exercised any- 
 where it should be in the equity jurisdiction of those courts. The only 
 authority competent to set aside a patent, or to annul it, or to correct it, 
 for any reason whatever is vested in the Judicial Department of the Govern- 
 nuMit, and this can only be effected bv proper proceedings taken in the courts 
 of the United States. — U. S. v. Be\\, 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 
 90. 
 
 II. S. V. Stone, 69 U. S. 525; Jackson v. Lawton, 10 Johns. 24; Attorney v. 
 Vernon, 1 Vera. 277; U. S. v. Hughes, 52 U. S. 552; also 71 U. S. 252; Moore 
 V. Robbins, 90 U. S. 530; Moffat v. U. S. 112 U. S. 24; U. S. v. Minor, 114 U S 
 233; Colorado v. U. S. 123 U. S. 307; U. S. v. San Jacinto, 125 U. S. 273; Mowry 
 V. Whitney, 81 U. S. 434. 
 
 While it cannot be successfully denied that the general powers of a court 
 of equity include the right to annul and set aside contracts or instruments 
 obtained by fraud, to correct mistakes made in them, and to give all other 
 appropriate relief against documents of that character, such as requiring 
 their delivery up, their cancellation, or their correction, in order to make 
 them conform to the intention of the parties, it would seem to require some 
 special reason why the Government of the United States should not be able 
 to avail itself of these powers of a court of equity. — U. S. v. Bell, 128 U. S. 
 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 Before the government is entitled to a decree canceUing a patent for an 
 invention on the ground that it has been fraudulently and wrongfully obtained 
 it must, as in the case of a like suit to set aside a patent for land, establish 
 the fraud and the wrong by testimony which is clear, convincing and satis- 
 factory. — U. S. V. Bell Teh Co. 167 U. S. 224; 42 L. Ed. 144; 17 S. Ct. 809. 
 
 The Government, therefore, if seeking simply to protect the right of an 
 individual, ought not to be permitted to maintain a suit in equity to cancel 
 that against which the individual has a perfect legal defense available in 
 an action brought bv or against him. — U. S. v. Bell Tel. Co. 167 U. S. 224: 
 42 L. Ed. 144; 17 S. Ct. 809. 
 
 See full discussion and cases in U. S. v. Bell Tel. Co. 167 U. S. 224; 42 
 L.Ed. 144; 17 S. Ct. 809. 
 
 It has been settled that when a patent has received the signature of the 
 Secretary of the Interior, countersigned by the Commissioner of Patents, 
 and has affixed to it the seal of the Patent Office, it has passed beyond the 
 control and jurisdiction of that office, and is not subject to be revoked or 
 cancelled by the President, or any other officer of the government. — Mc- 
 Cormick v. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. 
 
 U. S. V. Schurtz, 102 U. S. 378; U. S. v. Bell Tel. Co. 128 U. S. 315; Seymour 
 V. Osborn, 11 Wall. 516; Cammeyer v. Newton, 94 U. S. 225; U. S. v. Palmer, 
 128 U. S. 262; James v. Campbell, 104 U. S. 356. 
 
 The only authority competent to set a patent aside, or to annul it, or to 
 correct it for any reason whatever, is vested in the courts of the United
 
 92 THE FIXED LAW OF PATENTS §§ 27-29 
 
 States and not in the department which issued the patent. — McCormick 
 V. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. 
 
 Moon V. Robbing, 96 U. S. 530; U. S. v. Bell Tel. Co. 128 U. S. 315; Lumber 
 Co. V. Rust, 168 U. S. 589. 
 
 The bill contains enough on its face and in its form, and in its signature 
 by the attorney general, to bring it within U. S. v. Am. Bell Tel. Co. 128 
 U. S. 315. But in the development of proofs all allegations of affirmative 
 or positive fraud dropped out ; so U. S. v. Am. Bell Tel. Co. fails to reach the 
 merits of the case. — Am. Bell Tel. v. U. S. 68 Fed. 542; 15 C. C. A. 569. 
 
 The rule of fraud applied and U. S. v. Am. Bell Tel. Co. 128 U. S. 531 
 explained and Hmited. — Am. Bell Tel. v. U. S. 68 Fed. 542; 15 C. C. A. 
 569. 
 
 § 27. Interfering Patents. 
 
 Provi.sion is made by Sec. 4918, R. S. for the determination of rights 
 under issued patents, the claims of which overlap or interfere. The terms of 
 the statute and the appellate law relating thereto will be found in full under 
 Interfering Patents. 
 
 ADJUDICATION. 
 
 {See § 250) 
 
 .General Statement § 28 
 
 Effect of § 29 
 
 Patent Office Decision § 30 
 
 Prior 
 
 Conclusiveness § 31 
 
 Different Parties § 32 
 
 Estoppel on Complainant § 33 (see 
 
 §381) 
 
 Judicial Notice § 34 
 
 New Evidence § 35 
 Privity § 36 
 Stare Decisis § 37 
 
 See — Arbitration § 145; Comity § 
 250; Commissioner of Patents § 261; 
 Defenses § 315; Estoppel § 381; In- 
 jundion §§ 541, 570; Interferences § 
 580; Patent Office § 785; Res Judi- 
 cata § 893 
 
 § 28. General Statement. 
 
 The general effect of adjudications, prior and collateral, in patent causes 
 is similar to the general law. The Patent Statute makes no special provision 
 on this subject, except as to special matters relating to the decisions of the 
 Commissioner and those under him. In the following paragraphs the various 
 general rulings of the courts are given. The effect of adjudications as Es- 
 toppels and Res Judicata will be found under those titles. The special appli- 
 cations as relating to Injunctions and other special matters will be found 
 under those titles. 
 
 § 29. Effect of. 
 
 An adjudication in the case of a patent is not only a judgment inter 
 partes, but is a judicial construction of a grant by the government, and in a 
 broad sense deals with and determines the rights of the public. A patent 
 is sui generis. By it the public, through its authorized representatives, 
 grants a monopoly for a term of years in consideration of the surrender of the 
 invention to public use upon expiration of the term. When, upon judicial 
 contest, a competent court has sanctioned the grant and determined the right 
 thereunder, the monopoly thereby granted ought not to be permitted to be 
 invaded except under a clear showing that the decision was wrong. — 
 Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 (The patent had been held valid in S. D. N. Y.; S. D. 0.; N. D. Ga.; 
 & Ct. App. Rep. of France. The C. C. A. 6th Cir. held the patent invalid).
 
 5§ 30-31 ADJUDICATION 93 
 
 The case in the Court of Appeals for the Sixth Circuit was not a proceeding 
 in rem The defendant in that particular suit has a decree on which . . 
 he codd base a plea of res adjudicata. That plea would be as good in the 
 other ircu?^' as'in the sixth. No other member of the PuW^c could plead 
 that decree in any circuit. - Rubber Tire v. Milwaukee, 154 Fed. 3o8, S6 
 C. C. A. 336. 
 
 § 30. Patent Office Decisions. 
 
 Patents are often granted with a view to leaving open, to be decided by the 
 courts questions which the Patent Office does not deem it proper to adjudi- 
 Ste a^inS the appUcant by withholdmg the patent. - Andrews .. Hovey, 
 124 U S. 694; 31 L. Ed. 557; 8 b. Ct. 676. 
 
 The learned counsel for the defendants, who testified as an expert in the 
 rase bears testimony as to the great experience and competency of these 
 Xials and whTe we do not go%o far as to hold that their decision upon 
 tWs Doint is cmiclusive, (upon a question of reissue), as some of the courts 
 are man feUy inclined o do, we are of opinion that the decision of competent 
 eio^r^s made after a full hearing, where both sicks have been represented 
 by'rUe counsel, and not impeached byfj-d or favoritism h^^ gn.at per- 
 suasive force. - Crown v. Aluminum, 108 Fed. 84o, 48 L. C. A. U. 
 
 § 31 Prior — Conclusiveness. 
 
 While one infringer may succeed in defeating a patent under one of the 
 statutorv defenses, such action does not prevent another from being sued, or 
 mulcSf in else lie fails to produce the -qj^i-^^.to^-g^^^^^S ^^ '" 
 defense. — U. S. v. Bell, 128 U. S. 315; 32 L. Ed. 450, 9 b. Ct. JU. 
 
 The patent had been held void in one circuit by the Circuit Court and by 
 the Circit Court of Appeals. In another suit by the same complainant 
 aeaini a party who was a customer of the former defendant, the patent was 
 heW by the Circuit Court in another circuit to be void and on appea to the 
 Cicuit Court of Appeals of that circuit, the patent was held valid. The 
 defendant Tn the first suit brought action against the owner o the patent 
 to r"sSn him from bringing suits in other circuits on said patent against 
 hi customers On certification of the questions involved to the Supreme 
 Court t was held that the defendant in the first suit and the complainant 
 in the suit to restrain such further actions, had no adequate remedy at law; 
 tW such art on could be maintained in equity and that by an action in 
 Inn tv the Crmit Court having jurisdiction of the party owning the patent 
 
 Note- This decision of the Supreme Court effaces with a single stroke 
 of the pen the accumulated holdings of the past 20 years That the position 
 ^ste^iaWe with certain modifications is undoubted ; but that serious modifica- 
 ton 1 11 have o be made is equally e^adent. A probable certification to 
 the Sunreme Court in the case of Consolidated v. Diamond, 157 fed 677 
 may e'rve to limit and locate this holding but ^t.js beheved that n^^hi^ 
 short of Congressional action amending the Circuit Court of Appeals act, 
 can give relief from the utter chaos which now exists. 
 
 The natent had been held void in one circuit by the circuit court and by 
 thJcir^ut Court of Appeals. In another suit by the same complainant 
 agaiSt" party who wTa customer of the former defendant, the patent was
 
 94 THE FIXED LAW OF PATENTS § 31 
 
 held by the Circuit Court in another circuit to be void and on appeal to the 
 Circuit Court of Appeals of that circuit, the patent was held valid. The 
 defendant in the first suit brought action against the owner of the patent 
 to restrain him from bringing suits in other circuits on said patent against 
 his customers. On such action the following was certified to the Supreme 
 Court. 
 
 Did the decree rendered by the Circuit Court in the District of Indiana 
 in the suit of Eldred v. Kessler have the effect of making a suit by Eldred 
 against any customer of Kessler's for alleged infringement of the Chambers 
 patent by use or sale of Kessler's lighters a wrongful interference by Eldred 
 with Kessler's business? To this the Supreme Court answered in thp affirma- 
 tive. — Kessler v. Eldred, 206 U. S. 285; 51 L. Ed. 1065; 27 S. Ct. 611. 
 
 Note: See this question considered in Consolidated v. Diamond, 157 Fed. 
 677. Look for Supreme Court decision on certification of that case. 
 
 The patent had been held void in one circuit by the circuit court and by 
 the circuit court of appeals. In another suit by the same complainant against 
 a party who was a customer of the former defendant, the patent was held by 
 the circuit court in another circuit to be void and on appeal to the Circuit Court 
 of Appeals of that circuit, the patent was held valid. The defendant in the 
 first suit brought action against the owner of the patent to restrain him from 
 bringing suits in other circuits on said patent against his customers. On such 
 action the following was certified to the Supreme Court. 
 
 Did the decree in Kessler's favor rendered in the circuit court for the 
 District of Indiana in the suit of Eldred v. Kessler, (the first suit) have the 
 effect of entitling Kessler to continue the business of manufacturing and 
 selling throughout the United States, the same lighter he had theretofore 
 been manufacturing and selling without molestation by Eldred, through the 
 Chambers patent? To this the Supreme Court answered in the affirmative. — 
 Kessler v. Eldred, 206 U. S. 285; 51 L. Ed. 1065; 27 S. Ct. 611. 
 
 Note: See this question considered in Consolidated v. Diamond, 157 Fed. 
 677. Look for Supreme Court decision on certification of that case. 
 
 That where a cause has been once fairly tried, fully heard and finally 
 decided, upon its merits, by a competent tribunal, the same question as 
 between the same parties or their privies in interest, ought not to be tried 
 over again see, Norton v. San Jose, 83 Fed. 512; 27 C. C. A. 576. 
 
 Parrish v. Ferris, 2 Black. 606; Cromwell v. Sac, 94 U. S. 351; Stout v. Lye, 
 103 U. S. 66; Johnson v. Wharton, 152 U. S. 252; Last Chance v. Tyler, 157 
 U. S. 683; Forsyth v. City, 166 U. S. 506; Norton v. Fruit Packing Co. 79 Fed. 
 793; Mining Co. v. Dangberg, 81 Fed. 73. 
 
 The decision of the Supreme Court in Potts v. Creager, 155 U. S. 597, is 
 not technically determinative of this case, because the parties are different, 
 and because the claims in issue now and then are not the same. So far as 
 found applicable, the opinion of the Supreme Court will, of course, be fol- 
 lowed. — Anderson V. Potts, 108 Fed. 379; 47 C. C. A. 409. 
 
 Though the former case might not prevent a renewed inquiry into the 
 merits, we are persuaded that the pronouncements therein, in view of the 
 Supreme Court's denial of appellant's application for a writ of certiorari 
 should, in the interest of faith in the stability of judicial decisions, be adhered 
 to by us as the law of the patent. — Rawson v. Western, 118 Fed. 575; 
 55 C. C. A. 403. 
 
 We should seemingly place ourselves in the attitude of reopening, upon 
 substantially the same evidence, the question of the validity of the Grant
 
 §31 
 
 ADJUDICATION 95 
 
 patent after the Supreme Court under its revising powers had refused t<) 
 re-examine the case. - Rubber Tire v. Victor, 123 Fed. 85, 59 C. C. A. Zib. 
 
 In Kessler v Eldred, Eldred, the owner of a patent, sued Kessler, a manu- 
 facturer oele trie cigar hghte;s, in the district of Indiana The court found 
 non-Tnf ringement and dismissed the bill. Subsequently Eldred sued Kirk- 
 fand anorher manufacturer of similar lighters in the Western district o 
 New York was defeated at circuit, but prevailed in the Circuit Court of 
 ADDeds Vied next sued Breitweiser, a user of Kessler lighters in the same 
 i?S? Whle this'last suit was pending, Kessler filed a bill in the Northern 
 DisSict of lUinois against Eldred to enjoin him from prosecuting any suit 
 Sanst any one for alleged infringement of the P^^mt by purchase use or 
 s'tle of any cigar hghter manufactured by Kessler and identical with the 
 hSte in ev?d1.nce before the court in the first surt The Supreme Court 
 held that the original judgment conclusively settled the right of Kessler to 
 manufacture and sell his nianufactures free from all interference from Eldred 
 bv vhtue of the patent there adjudicated, and granted the ^ehef prayed for 
 SJmuch as defendant here is i dealer, and as such may wish to sell tires 
 mSac^u^ed by the Goodyear Company which has -X^,,fif ^s'uprT 
 adverse to the patent in the Circuit Court of Appeals, Sixth Circuit, supra 
 ?he iudge^^o heard the motion at circuit in view of the decision m Kessler 
 r Fldred inserted the following clause m the order: 
 
 '^Nothin-ln this iujunctional order shall prevent, or is intended to prevent 
 or ei^ot?he defendant from handling, using, or selling rubber tires and rirns 
 covered by the Grant patent, . . . manufactured by the Goodyear Tire & Rub- 
 ber Company having a right to manufacture, use, and sell such tires under a 
 iudicianecree in a litigation in the federal courts in the district of Indiana 
 heretofore pending between this complainant and such parties, wherein 
 h's been iudiciall? determined that said Grant patent is invalid and void 
 
 The ?ompainants cannot now question the propriety of inserting this 
 clause because they have no appeal from an order refusing to issue injunction, 
 and the clause is a refusal to enjoin tires made by the Goodyear Company. De- 
 fendant contends, however, thlt the reservation does not go far enough that 
 defSdLt should be left f^ee to sell any infringing tires made in the Sixth 
 arcuil or n any circuit other than the Second, or that no injunction at a 
 Sould'have beJn issued. Kessler -. EWred as the Suj^rem^^^^^^^^^ 
 remarked was a case of novel impression, and in deciding it that^court care 
 fuUv confined the decision to the single point that the original Judgment was 
 condusive upon the parties to it. As to the proposition that such adjud ca- 
 tion afforded ?a defense to Breitweiser in the direct suit against him it said 
 '' UDon that question we express no opinion." It would seem that mferior 
 oouJts should be cautious about extending the principle enunciated in that 
 cai beyond the lir:;^. within which it was there applied. The opmion opens 
 im a new subject in patent law practice, and it is desirable, no doubt, that 
 a^ earirexpreSn ol opinion b/the Supreme Court should be -cured upon 
 a record which will present its broader aspects, but we do not think it vvise 
 to certify the ques ion to that tribunal upon this record Besides, that 
 nnestion there is the further one whether upon the merits of the whole case 
 Xe Second Circuit was right in holding the patent to be valid and infringed 
 bv fr^anufacturer other than the Goodyear Tire & Rubber Company 
 Should the Supreme Court reach the conclusion that this circuit evved in that 
 respect the fu^rh^a of the Kessler .. Eldred rule would no longer 
 
 cut anv figure i^i the case, and by certifying it now we .vT.uld have unneces- 
 sarily vexfdthS tribunal with a moot question. - Consolidated .. Diamond, 
 157 Fed. 677; 85 C. C. A. 349. 
 
 That where a manufacturing infringer, though not made a party to the 
 suit Smes in and makes the slbstantial defense, such conduct operates as
 
 96 THE FIXED LAW OF PATENTS §§ 32-35 
 
 an estoppel against such infringer in a subsequent suit to the extent of such 
 former adjudication upon the patent; and for the purpose of determining 
 the extent of such estoppel the court may examine the decision in such former 
 case, see D'Arcy v. Staples, 161 Fed. 733; 88 C. C. A. 006. 
 
 Lane v. Welds, 99 Fed. 286; Penfiekl v. Potts, 126 Fed. 475; Cromwell v. 
 Sac, 94 U. S. 351; Russel v. Place, 94 U. S. 606; Stearns v. Lawrence, 83 Fed. 
 738; Corcoran v. Canal. 94 U. S. 741; Last Chance v. Tyler, 157 U. S. 690. 
 
 § 32. Prior — Different Parties. 
 
 The defendants in the case before us are other persons than the defendant 
 in the former case, and of course are not concluded by the judgment in that 
 case. But it must be expected that we should adhere to our former opinion 
 upon a record substantially the same. — American v. Cleveland, 158 Fed. 
 978; 86 C. C. A. 182. 
 
 § 33. Prior — Estoppel on Complainant. 
 
 The patent had been held void in one circuit by the Circuit Court and by 
 the Circuit Court of Appeals. In another suit by the same complainant 
 against a party who was a customer of the former defendant, the patent was 
 held by the Circuit Court in another circuit to be void and on appeal to the 
 Circuit Court of Appeals of that circuit, the patent was held valid. The 
 defendant in the first suit brought action against the owner of the patent to 
 restrain him from bringing suits in other circuits on said patent against his 
 customers. On such action the following was certified to the Supreme 
 Court. 
 
 Did Kessler's assumption of the defense of Eldred's suit against Breit- 
 weiser (Kessler's customer) deprive Kessler of the right, if that right would 
 otherwise exist, of proceeding against Eldred in the state and district of his 
 citizenship and residence for wrongfully interfering with Kessler's business? 
 To this the Supreme Court answered in the negative. — Kessler v. Eldred, 
 206 U. S. 285; 51 L. Ed. 1065; 27 S. Ct. 611. 
 
 Note: See this question considered in Consolidated v. Diamond, 157 Fed. 
 677. Look for Supreme Court decision on certification of that case. 
 
 § 34. Prior — Judicial Notice. 
 
 These proceedings (prior adjudications) were laid before us at this hearing, 
 but, if they had not been, we, probably, would have been entitled to take 
 notice of them, as they appear of record in this court. — Bresnahan v. Tripp 
 72 Fed. 920; 19 C. C. A. 237. 
 
 Butler V. Eaton, 141 U. S. 240; Aspen v. Billings, 150 U. S. 31. 
 
 § 35. Prior — New Evidence. 
 
 it is believed that after an exhaustive litigation upon a patent which is 
 of importance, and has been widely advertised, and after its careful re- 
 examination and a favorable adjudication upon its validity by the appellate 
 court, this class of paper affidavits in regard to priority by individuals, ought 
 not to be permitted to delay the owner of the patent from receiving the 
 advantages which accrue from his successful struggle with infringers. — 
 New York v. Niagara, 80 Fed. 924; 26 C. C. A. 252. 
 
 Where a new defense is interposed, the evidence to support it must be so 
 cogent and persuasive as to impress the court with the conviction that, if
 
 §§ 36-37 ADJUDICATION 97 
 
 it had been presented and considered in the former case, it would probably 
 have availed to a contrary conclusion. — New York v. Niagara, 80 Fed. 
 924; 26C. C. A. 252. 
 
 Electric v. Edison, 61 Fed. 834; Bresnahan v. Tripp, 72 Fed. 921. 
 
 While the prior litigation and these adjudications, for the reasons already 
 stated, do not operate strictly as an estoppel, they do serve to forcibly 
 confront us with conditions of stare decisis, considerations of public policy, 
 consideration of laches, and considerations of the rule that the newly dis- 
 covered evidence, to entitle a party to a rehearing and a reversal of prior 
 adjudications must- disclose clear and unmistakable anticipations of a patent 
 which has been sustained on final hearing, on the ground that it involved 
 invention. — Bresnahan v. Tripp, 99 Fed. 280; 39 C. C. A. 508. 
 
 The mere introduction of additional patents does not change the situation, 
 unless they indicate that the prior art knew of devices not indicated by the 
 patents in proof before the judge who heard the cause at final hearing. — ■■ 
 Consolidated v. Hays, 100 Fed. 984; 41 C. C. A. 142. 
 
 § 36. Privity. 
 
 Judgments are binding upon privies as well as upon parties, but only those 
 are privies, within the meaning of the rule, who acquire their interest in 
 the subject-matter of a suit subsequent to the suit. — Carroll v. Goldschmidt, 
 83 Fed. 508; 27 C. C. A. 566. 
 
 In<!;ersoll v. Jewett, Fed. Cas. 7,039; Freeman Judgm. Sec. 162; Campbell v. 
 Hall, 16 N. Y. 575; Doe v. Earl, 1 Add. & E. 783; Winslow v. Grindal, 2 Greenl. 
 64. 
 
 § 37. Stare Decisis. 
 
 The rule of stare decisis is a salutory one, at least to the extent that a 
 court should with reasonable stability adhere to its solemnly declared and 
 authoritatively published decisions, in respect to similar situations, and 
 upon questions depending upon similar facts which relate to general interests, 
 as well as to private and particular interests, and in respect to which the 
 public, in a measure, is supposed to adjust itself and its business affairs. 
 Public policy requires the decision which involves general law, and the 
 determination of facts, such as tho.se involved in a patent which may concern 
 the general public, should be adhered to, unless it shall subsequently be made 
 clearly to appear that the decision and the findings were erroneous, when, it 
 goes without saying, the decision should be corrected. The reasons which are 
 so often given for holding that the judgment estops, not only as to every 
 ground of recovery or defense actually presented, but also to every ground 
 which might have been presented, are cogent reasons to be considered upon 
 the question of reversing a long line of judicial decisions upon a rehearing 
 grounded upon newly discovered evidence. — Bresnahan v. Tripp, 99 Fed. 
 280; 39 C. C. A. 508. 
 
 Southern Pacific v. U. S. 168 U. S. 1; Columb v. Mfg. Co. 84 Fed. 592; Stark 
 V. Starr, 94 U. S. 477. 
 
 The case had been to the Supreme Court, considered on its merits, and a 
 new trial ordered. Held: The Supreme Court havang thus held, upon a 
 consideration of the written instruments themselves, that the Cramer inven- 
 tion was not of a pioneer character, and that the alleged infringing device 
 is essentially different in construction from that of Cramer, there was nothing 
 left for the court below to do on the last trial of the case but follow the de- 
 cision of the Supreme Court. — Cramer v. Singer, 147 Fed. 917 ; 78 C. C. 
 A. 53.
 
 98 THE FIXED LAW OF PATENTS §§ 38-41 
 
 ADMINISTRATOR OR EXECUTOR, OR GUARDIAN OF INSANE 
 PERSON. 
 
 Right to Sue § 41 
 
 See — Attorneys § 177; Death of 
 
 Applicant § 300 
 
 (See § 300) 
 
 Statutory Provision § 38 
 
 Powers of § 39 
 
 License § 40 {see § 749) 
 
 § 38. Statutory Provision. 
 
 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 intestate; or if he shall have left a will disposing of the same, then 
 in trust for his devisees, in as full manner and on the same terms and con- 
 ditions as the same might have been claimed or enjoyed by him in his life- 
 time, and when any person having made any new invention or discovery 
 for which a patent might have been granted becomes insane before a patent 
 is granted, the right of applying for and obtaining the patent shall devolve 
 on his legally-appointed guardian, conservator, or representative in trust 
 for his estate in as full manner and on the same terms and conditions as the 
 same might have been claimed and enjoyed by him while sane; and when 
 the application is 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. 
 The executor or administrator duly authorized under the law of any foreign 
 country to administer upon the estate of the deceased inventor shall, in 
 case the said inventor was not domiciled in the United States at the time of 
 his death, have the right to apply for and obtain the patent. The authority 
 of such foreign executor or administrator shall be proved by certificate of 
 a diplomatic or consular officer of the United States. 
 
 The foregoing section, as to insane persons, is to cover all applications 
 now on file in the Patent Office, or which may be hereafter made. — R. S. 
 4896, as amended May 23, 1908. 
 
 § 39. Powers of. 
 
 Construed with reference to applications. — De La Vergne v. Featherstone, 
 147 U. S. 209; 37 L. Ed. 138; 13 S. Ct. 283. 
 
 § 40. License. 
 
 A license to use a patented invention that does not contain words import- 
 ing assignability is a grant of a mere personal right to the licensee which does 
 not pass to his heirs or representatives and which cannot be transferred to 
 another without the expressed consent of the licensor. — Bowers v. Lake 
 Superior, 149 Fed. 983; 79 C. C. A. 493. 
 
 Hapgood V. Hewitt, 119 U. S. 227; Oliver v. Rumford, 109 U. S. 75; Troy v. 
 Corning, 14 How. 193. 
 
 § 41. Right to Sue. 
 
 When several executors have been appointed under a will and only one has 
 qualified, that one may sue. — Rubber Co. v. Goodyear, 76 U. S. 788; 19 
 L. Ed. .566. 
 
 An assignment of a right to make, use and sell in a limited territory for 
 a limited time is a mere license, and does not give an administrator a right to 
 sue for infringements occurring after the death of the assignee. — Oliver v. 
 Rumford, 109 U. S. 75; 27 L. Ed. 862; 3 S. Ct. 61.
 
 §S 42-45 
 AGGREGATION. 
 
 AGGREGATION 99 
 
 General Statement § 42 
 Arrangement of Parts § 43 
 Combination § 44 
 Duplication § 45 
 Manufacture § 46 {see § 772) 
 
 Old Elements 
 
 General Rule § 47 
 Independent Functions § 48 
 Old Results § 49 
 Old Function § 50 
 Utility — Patentability § 51 
 See — Invention §§ 594, 603, 653, 670 
 
 § 42. General Statement. 
 I The non-patentability of mere aggregations grows out of judicial construc- 
 tion of Sec. 4886, R. S., which limits patentable inventions to " any new 
 and useful art, machine, manufacture, or composition of matter, or any new 
 and useful improvements thereof." The general rules and applications are 
 given in the following sections, while the special applications of the rule to 
 Combinations will be found under that title, and those specially relating to 
 Mechanical Skill will be found under that sub-title under Invention. 
 
 § 43. Arrangement of Parts. 
 
 Of course there is nothing in placing the sections (sectional book-case) 
 one above the other, or the tiers of sections end to end, which is a mere 
 duplication. — Globe-Wernicke v. Macey, 119 Fed. 696; 56 C. C. A. 304. 
 
 Al] those portions of the patent submitted to us relate to matters which 
 were common in the arts, and common aside from the arts in the technical 
 meaning of the word; and the details, therefore, concern merely mechanical 
 skill, and in no degree inventive faculty. — Waterman v. Lockwood, 125 
 Fed. 497; 60 C. C. A. 333. 
 
 Rubber-Tip v. Howard, 20 Wall. 498; Perry v. Revere, 103 Fed. 314. 
 
 § 44. Combination. 
 
 A mere aggregation of parts into a supposed combination producing no 
 new function is not patentable. — Davis v. Parkman, 71 Fed. 961 ; 18 C. C. A. 
 398. 
 
 It is not easy, and perhaps not possible, to formulate a definition or 
 test of a patentable combination of old elements, which will serve in all cases 
 to distinguish it from a mere aggregation of the results of the several elements 
 of which it is constituted. But it is safe to say that the effect produced by 
 the combination must be new and useful, and not such as would suggest 
 itself to the mind of an ordinarily intelligent person experienced in the art 
 to which the supposed invention relates. — Thompson v. Chestnut, 127 Fed. 
 698; 62 C. C A. 454. 
 
 § 45. Duplication. 
 
 The functions of the two presses were not changed. A connection was made 
 between them, and the product of the one subjected to the operation of the 
 other. The connection by which this was done was a mere mechanical im- 
 provement, and which one skilled in the art could solve. The idea of so 
 couplingup two presses so as to print larger paper was but the natural advance 
 incident to new demands upon the art. — Goss v. Scott, 108 Fed. 253; 47 
 C. C. A. 302. 
 
 The test in such cases is not whether duplication exists, but whether 
 duplication produces, not mere duplication of product or function, but a new 
 unitary, additional result, and not the mere aggregate of prior, separate 
 mechanism. The mere elements of the combination are immaterial. In
 
 100 THE FIXED LAW OF PATENTS §§ 46-48 
 
 their indi\ndual relations they may be old, may be mere duplicates; but the 
 test is not the character of the combining elements, but the result flowing 
 from their being combined. — Goss v. Scott, 108 Fed. 253; 47 C. C. A, 302. 
 Parker v. Hulme, Fed. Cas. 10,740. 
 
 Mere duplication of parts is not invention. It is true that the assembling 
 of old elements having a new mode of operation producing a more beneficial 
 result does amount to invention. It is also well settled that there is no 
 invention in merely selecting and putting together parts of different machines 
 in the same art, where each operates in the same way in a new machine 
 producing the same result. — Burnham v. Union, 110 Fed. 765; 49 C. C. A. 
 163. 
 
 Overweight v. Vogt, 102 Fed. 957. 
 
 § 46. Manufacture. 
 
 The proposition that the doctrine of aggregation is restricted in its applica- 
 tion to machines as distinguished from articles of manufacture, does not 
 seem to be sustained by the decided cases. — Antisdel v. Chicago, 89 Fed. 
 308; 32 C. C. A. 216. 
 
 Hailes v. VanWormer. 20 Wall. 353; Reckendorfer v. Faber, 92 U. S. 347; 
 Trimming v. Welling, 97 U. S. 7; Slawson v. Railroad, 107 U. S. 653; Bussey 
 V. Mfg. Co. 110 U. S. 146; Hill v. Woostcr, 132 U. S. 693; Rob. Pat. Sec. 154, 
 182, 185; Campbell v. Bayley, 63 Fed. 463. 
 
 i 
 
 § 47. Old Elements — General Rule. 
 
 It is simply (coating a metal ring with imitation ivory) the application 
 and the action of old and well-known modes and materials in an accu.stomed 
 manner. It is a case of aggregation, not combination. — Rubber v. Welling, 
 97U. S. 7; 24L. Ed. 942. 
 
 Mere aggregation or subdivision is not invention. — King v. Gallun, 109 
 U. S. 99; 27 L. Ed. 870; 3 S. Ct. 202. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Phillips v. Page, 24 How. 167; Brown 
 V. Piper, 91 V. S. 43; Terhune v. Phillips. 99 U. S. 592; Atlantic v. Brady. 107 
 U. S. 192; Slawson v. R. R. 107 U. S. 649; Smith v. Goodyear, 93 U. S. 486. 
 
 If several old devices are so put together as to produce even a better 
 machine or instrument than was formerly in use, but each of the old devices 
 does what it had formerly done in the instrument or machine from which it 
 was borrowed and in the old way, without uniting with other old devices 
 to perform any joint function it seems that the combination is not patent- 
 able. — Brinkerhoff v. Aloe, 146 U. S. 515; 36 L. Ed. 1068; 13 S. Ct. 221. 
 
 Hailes v. VanWormer, 87 U. S. 353; Reckendorfer, v. Faber, 92 U. S. 347. 
 
 That a machine comprising old elements and combinations in which there 
 is not conjoint action is not patentable, see Portland v. Hermann, 160 Fed. 
 91; 87 C. C. A. 247. 
 
 American v. Helmstetter, 142 Fed. 978; Beecher v. Atwater. 114 U. S. 523; 
 Dunlap V. Willbrandt, 151 Fed. 223. 
 
 See also, Pickering v. McCulIough, 104 U. S. 310; 26 L. Ed. 749; Watson 
 V. Cincinnati, 132 U. S. 161; 33 L. Ed. 295; 10 S. Ct. 45. 
 
 § 48. Old Elements — Independent Functions. 
 
 Concededly, Dunbar is entitled to the credit of originating the conception 
 of using a second elevator as an adjunct to the ordinary grain elevator, which 
 could be moved so as to reach the different hatches of the vessel, and dis-
 
 §49 AGGREGATION 101 
 
 charge into the main elevator; but his right to a patent cannot rest upon this 
 conception alone. It must rest upon the novelty of the means which he 
 contrived to embody in the conception and to carry it mto practical apphca- 
 tion He effected a new organization of a portable elevator, but if this did 
 not "involve invention, but was that which could have been done by the 
 skilled mechanic bv selecting known devices, applying them to their appro- 
 priate uses and introducing such modification of detail to fit them for the new 
 environment as would be dictated by experience and good judgment, the 
 patent cannot be sustained. The circumstance that the same congregation 
 of devices has never been assembled in a new location is not controlling, 
 and is often of little value in determining the question of patentable novelty. 
 Their assemblage may be nothing but another instance of the double use. — 
 Dunbar v. Eastern, 81 Fed. 201 ; 26 C. C. A. 330. 
 
 Atlantic v. Brady, 107 U. S. 192; Aron v. Railway, 132 U. S. 90. 
 
 Each of these elements appears to operate separately to produce its own 
 separate individual results, just as they might in connection with any other 
 business where an exhaust fan was needed to draw away the air from a given 
 ijlace and an elevator with endless belts and buckets to carry any given 
 subst'ance to another place or to a different level. There is nothing m the 
 findings or in the case anywhere, to show anything more than a mere juxta- 
 ])osition or aggregation. The combination to be patentable, must produce 
 a different force or effect or result in the combined forces or processes froni 
 that given in their separate parts. There must be a new result produced 
 bv their union ; or if not so, it is only an aggregation of separate elements. 
 — Clisby V. Reese, 88 Fed. 645; 32 C. C. A. 80. 
 
 Reckendorfer v. Faber, 92 U. S. 347; Hailes v. Van Wormer, 20 Wall. 353. 
 
 The aggregation of these several old elements in one structure may have 
 produced, and doubtless did produce, a hot air furnace that was some 
 imi)rovement upon the prior art, in the respect that they may have been 
 stronger, more durable, or easier of construction. But these resuhs were due 
 to the function of each old element acting independently and by itself, with- 
 out co-action with the other elements. A box put together with screws, 
 mitred joints and dowel pins, may be an improvement, in appearance, 
 strength and utility, upon one put together with nails alone, but the elements 
 of screws, miterecr joints and dowel pins is an aggregation of elements, each 
 contributing its own function and not a patentable combination. — Spear 
 V. Kelsey, 158 Fed. 622; 85 CCA. 444. 
 
 § 49. Old Elements — Old Result. 
 
 An aggregation of old and well-known devices, operating in the old way, 
 and producing no new result is not patentable. — Foos v. Springfield, 49 Fed. 
 641 ; 1 C C A. 410. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Pickering v. McCullouph, 104 U. S 318; 
 Rover v. Roth. 132 U. S. 201: Heating Co. v. Burtis, 121 U. S. 286: Florsheim 
 V Schilling. 137 U. S. 64; Mill Co. v. Walker. 138 U. S. 124; Union ik Keith, 
 139 U S. 530; Electric r. T.aRue. 1^9 V. P. 601; Aron v. Railway, 132 L. b. 84; 
 Day V. Railway, 132 U. S. 98; Gardner v. Herz, 118 U. S. 180. 
 
 If Grant's construction is an aggregation of well-known parts, each part 
 doing its own approoriate function in substantially the old way, it does pot 
 show a patentable invention, even though the sum of all the old results is a 
 tire more serviceable or durable than shown in the old art. — Goodyear v. 
 Rubber, 116 Fed. 363; 53 C C A.' .583. 
 
 Hailes V. Van Wormer. 20 Wall. 353; Office v. Fenton. 174 U. S. 492; RiVhards 
 V. Elevator. 158 U. S. 299; Overweight v. Vogt, 102 Fed. 957; Smith v. ^lchols, 
 21 Wall. 112.
 
 102 THE FIXED LAW OF PATENTS §§ 50-52 
 
 The mere bringing together of old parts and allowing each to work out its 
 old effect, without producing some new product or result as a consequence of 
 the union and cooperating action, is a mere mechanical juxtaposition. — 
 Germer v. Art, 150 Fed. 141 ; 80 C. C. A. 9. 
 
 Goodyear v. Rubber, 116 Fed. 363; Overweight v. Vogt, 102 Fed. 957. 
 
 § 50. Old Function. 
 
 The mere combination of a staple made and used according to well known 
 methods with a washer, where neither modified the function of the other was 
 mere aggregation. — Double Pointed v. Two Rivers, lO'J U. S. ,117; 27 
 L. Ed. 877; 3 S. Ct. 105. 
 
 The railway, the guard-plate, and the car, in function and in result, he 
 left unchanged; and the spray-deflectors which he fixed to the latter are 
 wholly inoperative until the water is reached and the entirely distinct and 
 separate service of a boat becomes recjuisite. This requirement made it 
 necessary, of course, that the toboggan should differ somewhat from those 
 which had been used exclusively upon land, but the change which was made 
 was merely structural, and did not involve invention. — Boynton v. Morris, 
 87 Fed. 225; 30 C. C. A. 617. 
 
 Maitland v. Gibson, 6:3 Fed. 840. 
 
 § 51. Utility — Patentability. 
 
 The utmost that can be justly credited to the applicant is that, in their 
 aggregation, he exhibited an appreciated realization of the utility of each of 
 them. It does not appear that he so associated them as to produce any new 
 result as the consequence of their union, and therefore, he did not create a 
 patentable combination. — Roemer v. Peddie, 81 Fed. 380; 26 C. C. A. 440. 
 
 AMENDMENT. 
 
 Statutory Provisions § 52 
 General Statement § 53 
 Broadening Scope of Invention § 54 
 New Matter 
 
 Broadening § 55 
 
 Miscellaneous § 56 
 
 Delay § 57 
 
 See — • Abandonment § 4; Attorneys 
 § 178; Claims § 199; Divisional 
 Patenting § 348; Reissue § 869; 
 Specification § 902 
 
 § 52. Statutory Provisions. 
 
 The fundamental provision as to amendment is in Sec. 4886, R. S., which 
 provides that the inventor * * * " may, upon payment of the fees required 
 by law, and other due proceedings had, obtain a patent therefor," and Sees. 
 481 and 483, R. S., which provide for the appointment of a Commissioner of 
 Patents and the promulgation of rules by him for the conduct of applica- 
 tions. The specific provision as to amendment grows out of 4888 R. S., 
 w^hich prescribes in definite terms the requisites of an application; and Sec. 
 4889 provides for drawings. Under Sec. 4893, the Commissioner is required 
 to cause an examination of the application to determine whether the appli- 
 cant is, under the law, entitled to a patent : and Sec. 4894 places the statutory 
 time-limit as to the completion of the ap]ilication. Sec. 4897 provides for 
 renewal apphcations; Sec. 4903 as to notice of rejection; and Sec. 4917 as to 
 disclaimer. The statute also provides for the surrender and reissue of the 
 patent; but as that is a subject quite by itself and the matter of amendment 
 governed by other and different rules, that subject is found in full under 
 Reissue.
 
 §§ 53-54 AMENDMENT 103 
 
 § 53- General Statement. 
 
 The decisions of the appellate courts are, except in isolated cases, un- 
 concerned with the proceedings in and the regulations of the Patent Office. 
 The legality of the grant and the efifect of the proceedings in the Patent 
 Office as determining the scope of the grant are the main considerations. 
 
 But it should be noted in this connection that the development of the 
 American patent system has kept step with the marvellous growth of Art 
 and Science. The inventor of today is not one who whittles and thinks; 
 he is a trained thinker, and one who combines the art and science of today. 
 The Patent Office examiner is no longer a mere clerk ; he is a trained specialist, 
 both in engineering and in the patent law. While many inventions are 
 stumbled upon by untrained minds, and while there will always be examiners 
 who never get beyond the clerical and the technical, in the main the domain 
 of patents has passed over from the untrained to the most thoroughly 
 skilled specialists. It would seem, under such circumstances, that the matter 
 of preparing an application, examining and amending the same, and the clear 
 statement of a claim should be a simple matter. Not so. Great inventions 
 lie on the borderland of the known. It is easy, now, to say how Tesla should 
 have described and claimed his inventions; it was not when the applica- 
 tions were filed. And there are two other facts which, in the consideration of 
 the specifications and claims of a patent, should be in the mind of both judge 
 and attorney: First, the examination in the Patent Office is the best that it 
 can be under the niggardly policy of Congress, but far short of what it should 
 be, for the simple reason that the constantly-increasing volume of business 
 must be done and done by an insufficient and overworked force. Second, the 
 lamentable fact is that a great proportion of applications are filed by solicitors 
 wholly unqualified for the duty. One of our grave mistakes has been that, 
 while we have raised the standard of efficiency in the Patent Office from year 
 to year, both by internal development and by the addition of examiners of 
 higher skill and training, we have placed no such requirements upon the 
 patent solicitors. Only occasionally have the courts been outspoken on this 
 subject, but he who runs may read, and he will read in the reports — shielded 
 by judicial gentleness — a condemnation of the incompetency of the patent 
 solicitor in general that is startling. Since this book is mainly for the use 
 of the general practitioner, and since the highest duty of the lawyer is to 
 conserve the interests of his client and to keep him out of litigation, I am 
 constrained to place the strongest emphasis upon the necessity and ultimate 
 economy of sending clients about to make application for patent to solic- 
 itors of recognized training and skill, both in law and in science. 
 
 § 54. Broadening Scope of Invention. 
 
 So long as he did not change the structure of his de\'ice or invention, he 
 had the right to change the specification, even though he did it with reference 
 to the patent in suit issued for the same device, which was applied for and 
 i.ssued while his application was pending; and, the specification being as we 
 find it, there is no support for the proposition that for the purpose of preserv- 
 ing the possiljility of a function, which the patentee had repudiated before 
 the patent issued, the claims, though worded difTerently, should be read 
 so as to cover only the exact construction and relation of parts illustrated 
 in the drawing. The proposition is not reasonable, nor, so far as we know, 
 supported by authority. — Western v. Sperry, 58 Fed. 186; 7 C. C. A. 164. 
 
 Courts ought, therefore, to be more careful, under circumstances like 
 those at bar (when amendment was not merely upon objection by the 
 examiner, and not in view of anticipations found) to give a patentee the 
 benefit of all the equities which can be raised in his behalf by any reasonable
 
 104 THE FIXED LAW OF PATENTS § 55 
 
 implication, from what appears on the face of the amendments or from the 
 transaction as it passed through the patent office. — Reece v. Glol)e, 61 Fed. 
 958; IOC. C. A. 194. 
 
 Winans v. Denmead, 15 How. 330; B. & S. Fastener v. Ball, 58 Fed. 818; 
 Leggett V. Avery, 101 U. S. 256; Morgan v. Albany, 152 U. S. 425; Sargent v. 
 Lock Co. 114 U. S. 63; Sheppard v. Carrigan, 116 U. S. 593; Sutter v. Robinson, 
 119 U. S. 530; Crawford v. Heysinger, 123 U. S. 589; Watson v. Railway, 132 
 U. S. 161; Roemer v. Peddie, 132 U. S. 313; Caster v. Spiegel, 133 U. S. 360; 
 Yale V. Berkshire, 135 U. S. 342; Dobson v. Lees, 137 U. S. 258; Corlnn v. Eagle, 
 150 U. S. 38; Knapp v. Morss, 150 U. S. 221; Union v. U. S. 112 U. S. 024; 
 Vulcanite v. Davis, 102 U. S. 222; Royer v. Coupe, 146 U. S. 524. 
 
 The amendment was filed within three months after the filing of the original 
 specifications, and before, so far as appears, other inventors whose rights 
 had been prejudiced had entered the field. Railway v. Sayles, 97 U. S. .554. 
 The original drawings and specification sufficiently show and suggest the 
 claims finally made, or at least are not inconsistent therewith. Hobbs v. 
 Beach, 180 U. S. 383. Subject to the foregoing rules, an inventor may amend 
 his specification so as to include therein all of the advantages within the 
 scope of his invention. Singer v. Cramer, 109 Fed. 652. — Kirchbcrger v. 
 American, 128 Fed. 599; 64 C. C. A. 107. See 215 U. S. 161. 
 
 The validity of such an amendment depends upon the question whether it 
 brought in original matter, or was of something that might be fairly deduced 
 from the original application. In the first instance the amendment would 
 not be justified; in the latter it would. — Cleveland v. Detroit, 131 Fed. 
 853; 68 C.C. A. 233. 
 
 Michigan v. Consolidated, 121 Fed. 232; Hobbs v. Beach, 180 U. S. 396; West- 
 ern V. Sperry, 58 Fed. 186; Sugar v. Yaryan, 43 Fed. 140. 
 
 It may be noted that these broad claims are not found in the original 
 application for the Johns patent. They were not inserted until, five years 
 after the application, and subsequent to the date of the Rowe patent, and to 
 the time when the Rowe device was put upon the market. — Mayo v. 
 Jenckes, 133 Fed. 527; 66 C. C. A. 503. 
 
 Note: This is a most important and far-reaching holding. It places 
 the amendment of an application long coddled in the Patent Office upon 
 substantially the same ground as a reissue wherein the claims are broadened 
 after intervening rights. In my opinion it should be good law. Such a 
 wholesome rule would do much to do away with the practice of delaying 
 issue of patents unduly. 
 
 § 55- New Matter — Broadening. 
 
 No doubt it is competent to amend the specifications while the applica- 
 tion is pending, so long as it is done within the scope of the original applica- 
 tion; but it is not competent, under color of this privilege, to introduce new 
 matter. — Michigan v. Consohdated, 67 Fed. 121 ; 14 C. C A. 232. 
 
 Railway v. Sayles, 97 U. S. 554; Eaglet on v. West, 111 U. S. 490; Brush v. 
 Julian, 41 Fed. 679; Kittle v. Hall, 29 Fed. 508; Refrigerating v. Featherstone, 
 49 Fed. 916; Refrigerating v. Featherstone, 147 U. S. 209; Western v. Sperry, 
 58 Fed. 186; Robinson, 561, 635. 
 
 _ The objection to new matter brought in by amendment of the specifica- 
 tions stands upon the same ground as when it is introduced upon a reissue, 
 and in respect to the latter the statute declares that it shall not be done 
 (sec. 4916). — Michigan v. Consohdated, 67 Fed. 121; 14 C. C. A. 232.
 
 §§ 56-57 AMENDMENT 105 
 
 RaUwav v Sayles, 97 U. S. 554; Eagleton v. West, 111 U. S. 490 Brush v. 
 Julian 41 Fed. 679; Kittle v. Hall, 29 Fed. 508; Refrig. v. Featherstone, 147 
 U. S.' 209; Western v. Sperry, 58 Fed. 186; Robinson 561, 635. 
 
 The question of broadening an application by amendment is raised in- 
 directly but not decided in Westinghouse v. New \ork, 96 ted. 991; 
 37 C. C. A. 6-49. 
 
 We are unable to assent"to the doctrine that an inventor is thus circum- 
 scribed by the words which he may first use to describe the advantages ot 
 his invention, and that he may not afterwards, on further consideration, 
 either upon his own suggestion or that of his counsel, amend his specification 
 so as to assert and maintain all the advantages which his device possesses. 
 — fcinger v. Cramer, 109 Fed. 652; 48 C. C. A. 588. 
 
 Reversed in 192 U. S. 265. 
 
 § 56. New Matter — Miscellaneous. 
 
 In view of the entire change in the specification, as to the invention de- 
 scribed, the patent, to be valid, should have been granted on an application 
 made and sworn to by the administratrix. The specification, as issued, be^s 
 the signature of the deceased, and not of the administratrix, and it is suffi- 
 ciently shown that the patent was granted on the application and oath ot 
 deceased, and for an invention which he never made. — Eagleton v. W est, 
 111 U. S. 490; 28 L. Ed. 49.3; 4 S. Ct. 593. 
 
 See De La Vergne v. Featherstone, 147 U. S. 209. 
 
 The changes made in the application were manifestly to develop the newly 
 conceived theory of the mode of operation, and to add claims for the process. 
 If this was to be accomplished and the theory were to be embodied m practi- 
 cal means, the specifications should have been made to distinct y point out 
 such means, as we have already pointed out. But in this regard the former 
 specifications were retained. If the appfication as amended were to be 
 construed as embodying such an invention as is now claimed, it was another 
 and different invention from that for which the patent was originally sought 
 and, if an amendment having the consequence were permissib e it should 
 have been verified by the oath of the inventor. — American v. Steward, lo5 
 Fed. 731; 84 C. C. A. 157. ^ „. t. 
 
 Rv Po V Savles 97 U S. 554; Eagleton v. West, 111 U. S. 490; Kennedy v. 
 Ha^elton' 128 U.S 667; Mich. Cent.".. Consolidated, 67 Fed. 121; Cleveland .. 
 Detroit, 131 Fed. 853. See 128 Fed. 599. 
 
 § 57. Delay. 
 
 If the applicant is under no obligation touching the delay, there is no 
 rule of law bv which it can be said that, because he may receive an incidental 
 benefit therefrom, his purpose in relation thereto is unlawful. A man s 
 motives will not make wrongful an act which, in itself is not wrongful. - 
 Am. Bell Tel. v. U. S. 68 Fed. 542; 15 C. C. A. 569. 
 
 Heald v. Carey, 11 C. B. 977. 
 
 The inventor does not determine the measure of hi^s rights or of his obli- 
 gations. The law determines that for him, and if the. go v^™"^^,^''^^^ 
 That more speed is desirable in the interest of the public, it should change 
 he law th^e courts cannot do so. Nor can they exact of inveiitors any 
 decree of diligence other than compliance with the statutory provisions. - 
 Crown V. Aluminum, 108 Fed. 845; 48 C. C. A. 72.
 
 106 
 
 THE FIXED LAW OF PATENTS 
 
 § 58 
 
 The claims sued upon are generic. Assuming that this concept of the 
 patentee was complete when the patent was exhibited in the census office 
 in 1890 (eight years before the patent application was filed) so as to be prac- 
 ticable and operative, the machine was sufhciently completed to obtain 
 a patent (if the feature were patentable at all) upon the broad feature 
 claimed. The accessories subsequently developed added nothing either to 
 the concejit, or to the operativeness of the mechanism embodying the 
 concept. What followed, if anything, was not development or evolution, 
 but improvement merely. And an inventor having grasped an idea and put 
 it in mechanical form, may not wait to secure a monopoly upon the broad 
 thought until everything in the nature of mere accessory improvement that 
 makes it commercially better has been run out and perfected. To so hold 
 would put it in the {)ower of a patentee to hold Imck his improvement from 
 the world, indefinitely, obtaining in the end a patent that would exclude 
 everything relating to the art, although the whole world had contributed 
 to the perfecting, commercially, of his conception. — Universal v. Compto- 
 graph, 146 Fed. 981; 77 C. C. A. 227. 
 
 ANTICIPATION. 
 
 Statute Autliority § 58 
 
 General Rules § 59 
 
 Abandoned Device or Experiment 
 
 (see § 1) 
 
 Anticipatory § 60 
 
 Non- Anticipating § 61 
 
 Application § 62 
 Analogousness 
 
 Art § 63 
 
 Use § 64 
 Anticipating an Anticipation — Bur- 
 den of Proof § 65 
 Application § 66 
 Combining Old Elements 
 
 Different Devices § 67 
 
 Different Patents § 68 (see §§ 87- 
 
 91, 693) 
 
 Mechanical Skill § 69 
 Double Fatentmg § 70 (see §§ 348, 
 35&) 
 Evidence of (see § 388) 
 
 Burden of Proof § 71 
 
 Device or Exhibit § 72 
 
 Expert § 73 
 
 Parol § 74 
 
 Prior Patent § 75 
 
 Rebuttal § 76 
 
 Miscellaneous Holdings § 77 
 Experiment § 78 (see § 412) 
 Foreign Invention § 79 
 Foreign Patent or Publication (see 
 §419) 
 
 Burden of Proof § 80 
 
 Date of § 81 
 
 Invention § 82 
 
 Publication — Date § 83 
 
 Same Inventor § 84 
 
 Sufficiency § 85 
 " Infringe-if-Later " Test § 86 
 
 Inoperative Device § 87 
 
 Knowletlge § 88 
 
 Old Elements or Device (sec 55 *JS, 
 
 693) 
 
 Different Use § 89 
 
 Function § 90 
 
 Requiring Adaptation § 91 
 Paper Patent 
 
 Insufficient § 92 
 
 Sufficient § 93 
 Prior Art 
 
 Insufficient § 94 
 
 Sufficient § 95 
 Prior Patent 
 
 Date § 96 
 
 Insufficient § 97 
 
 Sufficient § 98 
 
 Reference on Application § 99 
 Process (see § 813) 
 
 Machine § 100 (see § 768) 
 
 Process Rule § 101 
 
 Miscellaneous § 102 
 Public Use (see § 848) 
 
 Sufficient § 103 
 
 Miscellaneous § 104 
 Publication 
 
 Insufficient § 105 
 
 Sufficient § 106 
 Uncontemplated Use or Function § 
 107 
 
 Miscellaneous Rulings § 108 
 See ^Defenses §§ 320. 321; De- 
 murrer § 325; Designs § 334; Evi- 
 dence §§ 389-93; Infringement §§ 
 483, 525; Interfering Patents § 586; 
 Judicial Notice §§ 708-10; Public 
 Use § 849; Public Use Proceedings 
 § 859 
 
 § 58. Statute Authority. 
 
 The provisions of 4886, R. S., upon wliich novelty (and conversely, an- 
 ticipation) depends, are, —
 
 § 59 ANTICIPATION ' 107 
 
 1. Not known or used by others in this country, before his invention 
 or discovery thereof; 
 
 2. Not patented or described in any printed publication in this or any 
 foreign country before his invention or discovery thereof, or more than two 
 years prior to his application; 
 
 3. Not in public use or on sale in this country for more than two years 
 prior to his application; 
 
 4. Not abandoned. 
 
 And 4923, R. S., provides that, — 
 
 Whenever it appears that a patentee, at the time of making his applica- 
 tion 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 countr}^, before his invention or discovery thereof, 
 if it had not been patented or described in a printed publication. 
 
 While every rule of anticipation is founded in some one of these statutory 
 provisions, the classification varies materially therefrom, and conforms 
 rather to the acts and conditions which constitute anticipation. 
 
 § 59. General Rules. 
 
 It is about as difficult to state a general rule of anticipation as it is to 
 define invention. The difficulty with all such general rules, or attempts 
 at general rules, is that when we come to apply them to a specific case, 
 there are so many variations from the supposed conditions upon which the 
 general rule is predicated that application is difficult, if not impossible. The 
 following may, to a certain extent, be regarded as general rules: 
 
 Admitting the words " originally discovered " to be explained or limited 
 by the subsequent words (act of 1800), still, if the thing had been in use, 
 or had been described in a public work, anterior to the supposed discovery, 
 the patent is void. It may be that the patentee had no knowledge of the 
 previous use or previous description; still his patent is void; the law sup- 
 poses he may have known it. — Evans r. Eaton, 3 Wheat. 454; 4 L. Ed. 433. 
 
 It was left for Bell to discover that the failure was due not to workman- 
 ship, but to the principle which was adopted as the basis of what had to 
 be done. He found that the intermittent current could not be made under 
 any circumstances to produce the vibrations of the human voice, but that 
 the true way was to operate on an unbroken current by increasing and 
 diminishing its intensity. This Reis never thought of, and he failed to 
 transmit speech. Bell did, and he succeeded. Under such circumstances 
 it is impossible to hold that what Reis did was an anticipation of the 
 discovery of Bell. To follow Reis is to fail. To follow Bell is to succeed. 
 — Telephone Cases, 126 U. S. 1 ; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Foreign use for more than two years, in absence of publication or use or 
 sale in this countrv does not negative patentable novelty. — Gandy v. 
 Main, 143 U. S. 587; 36 L. Ed. 272; 12 S. Ct. 598. 
 
 To sustain the defense of anticipation, it is necessary that the anticipatory 
 matter should clearly show the invention subsequently patented in such 
 manner as to enable any person skilled in the art or science to which it 
 relates, to make or construct and practically use the invention for the pur- 
 poses contemplated bv the subsequent patent. — McNeely v. Williames, 96 
 Fed. 978; 37 C. C. A. 641. 
 
 Eames v. Andrews, 122 U. S. 40.
 
 108 THE FIXED LAW OF PATENTS § 60 
 
 That an alleged anticipation must disclose a practically operative device 
 and one which may be constructed by one skilled in the art without the 
 exercise of invention, see fciimonds v. Hathorn, 93 Fed. 958; 36 C. C. A. 24. 
 
 Hanifen v. Godshalk, S4 Fed. 649; Heap v. Tremont, 82 Fed. 449; Consoli- 
 dated V. American, 82 Fed. 99^; also 8o Fed. 662. 
 
 If the question of identity of' method and result is doubtful, the doubt 
 must be resolved in favor of the successful patentee, who had in a practical 
 way, materially advanced the art. — Simonds v. Hathorn, 93 Fed. 958 ; 36 
 C. C. A. 24. 
 V Washburn v. Gould, 3 Story, 122. 
 
 The statute (sec. 4886) conditions the grant that it shall not have been 
 " in public use or on sale in this country for more than two years prior to " 
 the application; and the policy of this provision and its strict construction 
 against the patent are well settled. Egbert v. Lippman, 104 U. S. 333. 
 Nevertheless, the evidence of such public use to defeat the patent must 
 be clear and convincing. — American v. Warren, 141 Fed. 655; 72 C. C. A. 
 649. 
 
 Morgan v. Daniels, 153 U. S. 120. 
 
 The rule in Rates v. Coe, 98 U. S. 31, it is clear, can be applicable only to 
 the one defense " that the improvement had been patented or described 
 in some printed publication prior to the supposed invention." In order to 
 come under the provision of the statute which authorizes that defense, 
 the patent or publication relied on must be prior i!i point of time to the 
 patent in suit. And it is perhaps true in respect to any form of defense 
 that if a patent is referred to simply by number and date, without aver- 
 ment of earlier invention and use, or of the date of the application upon 
 which it was granted, evidence of those particulars would not be competent, 
 because not within the issue. But when the answer is framed, like this 
 one, to show, not a prior patent or publication, but that the grantee of 
 the patent in suit was not, and that the patentee of a patent of later date, 
 issued upon an earlier application, was the first inventor, it is an anomalous 
 proposition that the fact which the statute declares to be a defense can- 
 not be estal^lished by any proof which, under the ordinary rules of evi- 
 dence, is admissible. — Barnes v. Walworth, 60 Fed. 605; 9 C. C. A. 154. 
 
 Western v. Sperry, 59 Fed. 295. 
 
 § 6o. Abandoned Device or Experiment — Anticipatory. 
 
 The device in substantial anticipating form had been publicly used years 
 before and was abandoned by the prior user. Weld; Whatever abandon- 
 rnent there was, was evidently to the public which would give no one the 
 right to obtain a patent for the same de\nce. — Clisby v. Reese, 88 Fed. 645; 
 32 C. C. A. 80. 
 
 Numerous witnesses establish that, before the application was filed, 
 McCarty erected and operated a large model from which the drawings 
 were made. It is true that it was susceptible of improvement, but that does 
 not negative novelty. — Lamson v. Hillman, 123 Fed. 416; 59 C. C. A. 510. 
 
 Telephone Cases, 126 U. S. 1; Rogers v. Mergenthaler, 64 Fed. 799. 
 
 The . . . machine was produced at the hearing in the circuit court, and 
 also at the hearing in this court, and the substantial identity of the two 
 clutch mechanisms was established by concrete proof. The evidence also 
 shows that the clutch was not used for purposesof experiment, or to gratify
 
 §61 
 
 ANTICIPATION 109 
 
 curiosity or to see whether it was successful, or whether anything njore was 
 to be done to perfect it; but that it was put to use in ordinary business 
 as a thing^-hich was completed, and that the reason why it was only used 
 for a short time has no bearing upon its practica operativeness. It thus 
 fSfills thetlsts with respect to anticipation. - Umted v. Greenman, lo3 
 
 ^tu!f: Condit^ 1.^' u' S. 39; Deering.. Winona 155 U. S. 286; Brooks.. 
 Sacks, 81 Fed. 403; Westinghouse v. Stanley, 133 I'ed. 1/4. 
 
 The fact that the clutch in suit is practically operative raises a strong 
 Intim, that the clutch- of the abandoned machine was practically 
 S;3rsinoe1hl1wrcTutches are substantially identical. - United .. 
 Greenman, 153 Fed. 283; 82 C. C. A. 581. 
 
 S6i Abandoned Device or Experiment - Non-Anticipating. 
 The re-invention of a prior lost art or abandoned unpro^^dde^■lc^ is not 
 anticipated by such facts. - Gayler v. Wilder, 10 Ho^^ . 47^ , 13 L. txL 0U4. 
 
 The case to this point admits, that, although Connor's (the anticipating) 
 t LrthJn kent and used for years, yet no test had been applied to it, and 
 its capacity or ?fsisthg heat wJs unknown, there was no evidence to show 
 hat any parUc was attached to it after it passed from nis 
 
 that any P^^"^^'f .,^'' afterwards used as a place of security for 
 
 P''''l^''«nd it a^pcLed that he hf^self did not attempt to make another 
 KKe ^ne hersup^^ledt have invei^ed, but used a different one. - 
 Gayler v. Wilder, 10 How. 477; 13 L. Ed. o04. 
 
 Tel. 22 F. R. 3U9. 
 
 Unsuccessful and abandoned experiments do not affect the vali|ty of a 
 subsequent patent. - Deering v. Winona, lo5 U. fe. 286, 39 L. J.a. lo^, 
 
 15 S. Ct. 118. 
 
 Brown v. Guild, 90 U. S. 181; Coffin v. Ogden, 85 U. S. 120. 
 
 Tt flnnears that Wood applied for a patent and was rejected. His appli- 
 
 If iUs^l'^a, coX ing. ILe only us^ ever made of it by Wood was 
 mVrelv exwrimental. It was never used for any practica purpose. There 
 
 ipal,6lFed.948; 10 C. C. A. 184. 
 
 It is not enough to defeat the patent that someone other than Gilmour 
 
 r ? td'nfce;it';u>;?^u^^ 
 
 MeWhirter, 142 Fed. 967; 74 C. C. A. ^29.
 
 110 THE FIXED LAW OF PATENTS §§62-65 
 
 This machine after having been used a couple of years was thrown aside, 
 competitors getting out a better looking and more salable product than 
 could be produced by means of it; and it was sold soon afterwards to the 
 defendants, in whose stockroom it has been stored away ever since, unnoted 
 and unused, until resurrected for the purpose of this suit. Whatever virtue, 
 therefore, it may have originally had, as it stands, it must be regarded as 
 in the nature of an abandoned experiment, of which no notice need now be 
 taken. — American v. Mills, 149 Fed. 743; 79 C. C. A. 449. 
 
 § 62. Abandoned Device or Experiment — Application. 
 
 If, upon the whole of the evidence, it appears that the alleged prior in- 
 vention or discovery was only an experiment and was never perfected or 
 brought into actual use, but was abandoned and never revived by the 
 alleged inventor, the mere fact of having unsuccessfully applied for a patent 
 therefor cannot take the case out of the category of unsuccessful experiments. 
 — Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 § 63. Analogousness — Art. 
 
 In a case where an insulated cable or wire was in question, the citation 
 of a sub-marine cable coated somewhat similarly for the purpose of render- 
 ing it impervious and not intended at all as a high insulator held not good 
 as a citation. — Ansonia v. Elec. Sup. 144 U. S. 11 ; 36 L. Ed. 327; 12 S. Ct. 
 601. 
 
 Time was wasted in attempting to show that machines relating to diverse 
 and analogous arts, in which some sort of an envelope was wrapped rounds- 
 some sort of a core, prevented the exercise of invention in the formation 
 of a previously unknown machine. — Bonsack v. EUiott, 69 Fed. 335 ; 16 
 C. C. A. 250. 
 
 It is true that the device belongs to another art. But the patent is inter- 
 esting as exhibiting the application of the dove-tail method of connection 
 under conditions that are mechanically similar to those of the device of 
 the patent in suit. — Bullock v. General, 162 Fed. 28; 89 C. C. A. 68. 
 
 § 64. Analogousness — Use. 
 
 Anticipation ought not to be found in prior devices in the art to which 
 a patent belongs unless they are of such a character as to furnish clear, if 
 not unmistakable suggestion, of the improvement in question; and if the 
 anticipatory suggestion comes from another art, it should, of course, have 
 less significance, proportioned inversely to the distance from w'hich it is 
 brought. — Williams v. American, 86 Fed. 641 ; 30 C. C. A. 318. 
 
 We do not think that the disintegration of apples or of cocoanut kernels 
 is so analogous to the disintegration of wet clay that the ingenuity shown 
 in the adoption of the device for disintegrating clay can be minimized by 
 reference to these other arts. — Potts v. Creager, 97 Fed. 78 ; 38 C. C. A. 47. 
 
 § 65. Anticipating an Anticipation — Burden of Proof. 
 
 Where a patent is introduced in suit showing with certainty the date of 
 its publication and prior to the date of the patent in suit it is incumbent 
 upon complainant to show, if not with equal certainty, yet to the satis- 
 faction of the court, that the invention of the patent in suit preceded that 
 date. — Clark v. Willimantic, 140 U. S. 481 ; 35 L. Ed. 521 ; 11 S. Ct. 846. 
 
 St. Paul V. Starling, 140 U. S. 184.
 
 §§66-67 ANTICIPATION 111 
 
 An anticipating design having been produced and established as ante- 
 dating the patent in suit, it became necessary for the patentee to establish 
 to the satisfaction of the court that his invention preceded the time when 
 the design in evidence was shown to have been first made. — Untermeyer v. 
 Freund, 58 Fed. 205; 7 C. C. A. 183. 
 
 Plow Works V. Starling, 140 U. S. 184; Clark v. WiUimantic, 140 U. S. 481. 
 
 That the burden of proof to overcome an anticipation by carrying the 
 date of the patent in suit back of the anticipation proved, is upon the com- 
 plainant, see Rogers v. Fitch, 81 Fed. 959; 27 C. C. A. 23. 
 
 Clark V. WiUimantic, 140 U. S. 492. 
 
 No attempt was made by the complainant to show the actual date of his 
 invention, and in a case of this sort we will not presume that the invention 
 was made prior to the time when the defendants constructed and began to 
 use in their mills the shingle-edging machines which they are now using. 
 If such be the fact, the complainant should have estabhshed it by com- 
 petent evidence, or show that the defendants did not construct their machine 
 at the time stated, nor until subsequent to the date of Wilson's alleged 
 invention. — Wilson v. Townley, 125 Fed. 491 ; 60 C. C. A. 327. 
 
 A public knowledge and use prior to the date of the application being 
 thus clearly shown, the burden was upon the complainant to show that the 
 invention of the patent in suit was made at an earlier date. Complainant 
 must furnish the court with convincing proof that the anticipation has been 
 anticipated. — New England v. Sturtevant, 150 Fed. 131 ; 80 C. C. A. 85. 
 
 Westinghouse v. Saranac, 108 Fed. 221. 
 
 With the facts of complete anticipation in construction and use — known 
 to the patentee several months prior to his application for a patent — settled 
 by the evidence, we are of opinion that the presumption of invention by 
 the patentee, which arises from the patent, application, and grant, is over- 
 come, prima facie by such anticipation in Sherbondy's prima facie concep- 
 tion reduced to practice, so that the burden of proof is transferred to the 
 patentee to establish priority in fact. — Consolidated v. Adams, 161 Fed. 343. 
 
 Westinghouse v. Catskill, 121 Fed. 831; Loom Co. v. Higgins, 15 Blatchf. 
 446; Thayer v. Hart, 20 Fed. 693; Westinghouse v. Saranac, 108 Fed. 221; 
 Westinghouse v. Mutual Life, 129 Fed. 213; Walk. Pat. § 510; Clark v. WiUi- 
 mantic, 140 U. S. 481. ■ 
 
 § 66. Application. 
 
 A mere prior application is not a bar to a subsequent application except 
 as affecting priority. — Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 Statements in a prior application relied on to prove anticipation must 
 be so clear and explicit that those skilled in the art will have no difficulty 
 in ascertaining their meaning. When they are so vague, involved, intricate 
 and contradictory that experts disagree radically as to their meaning and, 
 following the instructions given, construct devices differing in fundamental 
 features, it is safe to reject such a document as an anticipation. — Hillard v. 
 Fisher, 159 Fed. 439; 86 C. C. A. 469. 
 
 § 67. Combining Old Elements — Different Devices. 
 
 Where the thing patented is an entirety, consisting of a single device or 1 
 combination of old elements, incapable of division or separate use, the re- j 
 spondent cannot escape the charge of infringement by alleging or proving
 
 112 THE FIXED LAW OF PATENTS §68 
 
 that a part of the entire thing is found in one prior patent or publi- 
 cation or machine, and another part in another exhibit, and still another part 
 in a third one, and from the three or any greater number of such exhibits 
 to draw the conclusion that the patentee is not the original and first in- 
 ventor of the patented improvement. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 
 68. 
 
 The defendant's theory is not that this invention was anticipated by 
 any one pre-existing machine, taken l)y itself, but that its important features 
 were separately found in two older machines and could have been combined 
 without the exercise of inventive skill. It is true that anybody could have 
 done this if he had ascertained the cause of the defect in the Siemens machine, 
 and the kind of motion, and the proper means of applying it, which would 
 obviate the defect. But the defendant's theory, like many theories of a similar 
 character, assumes what is not apparent, that the cause of the pre-existing 
 defect, and its remedy, were open to the discernment of the skilled mechanic. 
 — Smith V. Macbeth, 67 Fed. 137; 14 C. C. A. 241. 
 
 It is also probably true that by selecting from the various known machines 
 of that character, and indeed by selecting only from those devised with 
 reference to lacing hooks, including especially the Palmer machine, all the 
 elements of the patented machine in suit could be brought together. This, 
 however, on well-settled rules, falls far short of demonstrating that appellee's 
 device contains no patentable qualities, though it compels us to regard 
 them as of a limited and restricted character. — Packard v. Lacing, 70 Fed. 
 66; 16 C. C. A. 639. 
 
 It may be true that an imaginable combination of the two prior patents 
 would closely resemble the patent in suit but such a combination is not 
 obvious and would require patentable invention. — Hart v. Anchor, 92 Fed. 
 657; 34 C. C. A. 606. 
 
 That attempted anticipation by combining the elements and combination 
 of old devices, or showing possible capabilities of old devices, after the fact 
 is not good evidence of anticipation, see. Hatch v. Electric, 100 Fed. 975; 
 41 C. C. A. 133. 
 
 The all-sufficient answer to an imaginary machine such as this being 
 introduced in anticipation (a showing that a combination and arrangement 
 of old presses would produce the same result) is the fact that no one either 
 changed the Globe press, or suggested the possibility of such change. — 
 Goss V. Scott, 108 Fed. 253; 47 C. C. A. 302. 
 
 The finding in the old devices, one portion here, one in another, and so 
 on, should not defeat a patent for the combination, which is only truly 
 anticipated by a prior device having identically the same elements, or their 
 mechanical equivalents, co-operating to produce the same results. — Im- 
 perial V. Crown, 139 Fed. 312; 71 C. C. A. 442. 
 
 § 68. Combining Old Elements — Different Patents. 
 
 It is probably very true that, by selecting the various prior machines in 
 this particular art, all the elements in the device in suit, could be brought 
 together. But to hold that this fact always defeats novelty would be to shut 
 out every combination of old elements from the protection of the patent 
 laws. — Heap v. Tremont, 82 Fed. 449; 27 C. C. A. 316. 
 
 Packard v. Lacing, 70 Fed. 66; Boston v. Berais, 80 Fed. 287.
 
 §§69-71 ANTICIPATION 113 
 
 The elements appear severally in one or another of such prior patents, 
 but are not all united in either. These patents furnish evidence of the prior 
 state of the art, but do not deprive the new combination of patentable 
 novelty. — Milwaukee v. Brunswick-Balke, 126 Fed. 171; 61 C. C. A. 175. 
 
 Parks V. Booth, 102 U. S. 96. 
 
 The line which separates invention from mechanical skill is at best a 
 narrow one, and the difficulty of demarkation in this case is enhanced by the 
 fact that of necessity we look upon the alleged anticipation with eyes in- 
 structed by the patent in suit and other subsequent patents, and must take 
 care that we do not in such hght reconstruct the alleged anticipation so 
 as to see in it the possibilities which may seem very obvious now, but which 
 may not have been disclosed by the patent itself. — Ideal v. Crown, 131 Fed. 
 244; 65 C. C. A. 436. 
 
 Some disclose one element and some another, but none of them, including 
 those already specifically referred to, disclose all the elements or the combina- 
 tion of elements of the patent in suit. For that reason they cannot 
 constitute anticipation. — St. Louis v. American, 156 Fed. 574; 84 C. C. A. 
 340. 
 
 Bates V. Coe, 98 U. S. 31; Emerson v. VanNort, 116 Fed. 974. 
 
 § 69. Combining Old Elements — Mechanical Skill. 
 
 The mechanical skill which may be evoked to exclude the idea of invention 
 must be mechanical skill appUed in accordance with the direction of the 
 alleged anticipating patent; not the skill which, taught by the invention 
 in suit, seeks to reform and reorganize the former patent, so disguising it 
 under a cloud of subtlety of argument and suggestion as to transform it. — 
 Ideal V. Crown, 131 Fed. 244; 65 C. C. A. 436. 
 
 § 70. Double Patenting. 
 
 While the offect of double j^atenting is to render the later patent void by 
 reason of anticipation, only sufficient references are given here to indicate 
 the rule. A full hst of decisions on the subject will be found under Double 
 Patenting. 
 
 If the feature referred to were old and already patented at the time of 
 the patent in suit, it makes no difference that such other patent issued to 
 the same patentee. This suit is brought solely upon the later patent, and 
 the earlier one was outstanding against it when it was issued. — Doig v. 
 Morgan, 122 Fed. 460; 59 C. C. A. 616. 
 
 Underwood v. Gerber, 149 U. S. 224. 
 
 In any case, it was invented before the issue of the patent in suit. That 
 patent, therefore, is not in a prior art, properly so-called, and has priority 
 only as a prior patent issued to the same inventor. — Hart v. Anchor, 92 
 Fed. 657; 34 C. C. A. 606. 
 
 § 71. Evidence of — Burden of Proof. 
 
 The invention or discovery relied upon as a defense, must have been com- 
 plete, and capable of producing the result sought to be accomplished; and 
 this must be shown by the defendant. The burden of proof rests upon him, 
 and every reasonable doubt must be resolved against him. If the thing 
 were embryonic or inchoate; if it rested in speculation or experiment; if 
 the process pursued for its development had failed to roach the point of
 
 114 THE FIXED LAW OF PATENTS § 72 
 
 consummation, it cannot avail to defeat a patent founded upon a discovery 
 or invention which was completed. The law requires, not conjectures but 
 certainty. If the question relate to a machine, as thus exhibited, the con- 
 ception must have been clothed in substantial forms which demonstrate 
 at once its practical efficiency and utility. — Coffin v. Ogdcn, 85 U. S. 120; 
 21 L. Ed. 821. 
 
 Gayler v. Wilder, 10 IIow. 496; Reed v. Cutter, 1 Story, 590; Bedford v. Hunt, 
 1 Mas. 302. 
 
 The defendant must make out the allegation satisfactorily. The evidence 
 must clearly show the anticipation. — Clough v. Gilbert, 106 U. S. 178; 27 
 L. Ed. 138; 1 S. Ct. 198. 
 
 The burden of proof is upon the defendants to establish this defense. 
 For the grant of letters patent is prima facie evidence that the patentee is 
 the first inventor of the device described in the letters patent and of its 
 novelty. — Cantrell v. Wallick, 117 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970. 
 
 Smith V. Goodyear, 93 U. S. 486; Lehnbeuter v. Holthaus, 105 U. S. 94. 
 
 Not only is the burden of proof to make good this defense upon the party 
 setting it up, but it has been held that " every reasonable doubt should be 
 resolved against him." — Cantrell v. WalHck, 117 U. S. 689; 29 L. Ed. 1017; 
 6 S. Ct. 970. 
 
 Coffin V. Ogden, 18 Wall. 120; Washburn v. Gould, 2 Story, 122, 142. 
 
 Anticipation is a question of fact, and the burden of establishing it is 
 on the appellant. — Busch v. Jones, 184 U. S. 598; 46 L. Ed. 707; 22 S. Ct. 511. 
 
 It will be noticed that Dusenbury's application was first filed; so that it is 
 settled law that the burden was thrown on the complainant below to prove 
 priority in behalf of his patent to the satisfaction of the courts and by evi- 
 dence which shall strongly outweigh that of the respondents below, if not 
 beyond a reasonable doubt. — Brooks v. Sacks, 81 Fed. 403; 26 C. C. A. 456. 
 
 Mfg. Co. V. Sprague, 123 U. S. 249; Clark v. Willimantic, 140 U. S. 481; Walk. 
 Pat. Sec. 70. 
 
 Inasmuch as defendants' contention is based on the claim that the Buller 
 or other devices of the prior art were capable of practical successful operation 
 when made of lava or steatite, the burden was upon the defendants to prove 
 this fact as part of their prima facie case. — Kirchberger v. American, 128 
 Fed. 599; 64 C. C. A. 107. See 215 U. S. 161. 
 
 When the defense of anticipation is set up, it is unquestionable that the 
 defendant is charged, not only with the burden of proof upon that issue, 
 but priority of conception and reduction to practice must be clearly made 
 out, by well-authenticated evidence, to defeat the patent. — Consohdated v. 
 Adams, 161 Fed. 343; 88 C. C. A. 355. 
 
 § 72. Evidence of — Device or Exhibit. 
 
 These seven original sketches are undoubtedly rude and imperfect, and 
 do not show, or attempt to show, an organized working machine. But we do 
 not regard this as a vital defect. The claims put in interference do not 
 involve anything more than certain improvements upon machines well 
 known in the art, and contemplate a combination of certain novel features 
 with the loading tools and other devices of the old Peters machine. The ques- 
 tion as to whether these sketches so clearly show the novel features as that
 
 §72 ANTICIPATION 115 
 
 one familiar with the construction and operation of the Peters machine 
 could from these construct a machine embodying the endless belt feature 
 is one addressed to persons possessing a mass of information about the old 
 art. If such persons, from these sketches, could construct a machine con- 
 taining the improvements conceived by Ligowsky, without the further 
 exercise of the inventive faculty, then it is very clear that Ligowsky must 
 be held to have had a sufficient conception in 1887 to entitle him, on a ques- 
 tion of priority, to carry the date of his invention back to the date of these 
 drawings. That they are incomprehensible to one unacquainted with such 
 machinery, or to a mechanic unaware of what they purported to be is no 
 answer. That they do not in all respects show the relation of the novel 
 features to the old loading tools, nor describe precisely the mode of attach- 
 ment, nor, with scientific exactness, show other details of the combination, 
 is not fatal, if the absent features are such as would be readily supplied by 
 a mechanic familiar with the subject, and without requiring further inven- 
 tion. The well-known statement of the doctrine touching the sufficiency 
 of description in the specifications and drawing of an application for a 
 patentable novelty by Justice Bradley, in Loom Co. v. Higgins, 105 U. S. 586, 
 applies with even greater force to the adequacy of such sketch drawings, 
 when the question is one of carrying back the date of an invention to the 
 time of first conception. — Standard v. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 The following extended quotation from the opinion of Judge Coxe (La- 
 combe and Townsend concurring) appears to sum up and conclude the ques- 
 tion of the evidential value of models in proving anticipation. 
 
 It is urged by the complainant that novelty of the combination of the 
 ninth claim cannot be negatived by the Yost model, and in support of this 
 proposition we are referred to Walker on Patents, Sec. 61, and cases there 
 cited. 
 
 Cahoon v. Ring, 1 Cliff. 592, was a trial of certain feigned issues of fact by 
 a jury to determine whether complainants' patent for an improved seeding 
 machine was valid and infringed. At page 611 Judge Clifford charged the 
 
 " You are accordingly instructed to inquire and determine, from the evi- 
 dence, whether Luce made his alleged invention of the vertical machine 
 public, and if he did not, but had used it for no purpose, except simply for 
 his own private experiments, and if it had been broken up prior to the 14th 
 of May, 1857 (the date of Cahoon's application) and its materials used for 
 other purposes, and its essential parts lost, and the invention forgotten 
 or abandoned, that such an invention and use would be no obstacle to the 
 taking out of a patent by Cahoon, or those claiming under him, and that the 
 model, or machine, now in evidence, on that state of facts, would not in- 
 validate the Cahoon patent, if he was an original inventor of his improve- 
 ments, without any knowledge of said machine, and did not derive any of 
 them from Luce." 
 
 In Stainthorp v. Humiston, 4 Fish. P. C. 107, the court says: 
 
 " The machine of Whitfield never went into practical use. Although a 
 working model was made in or about the year 1849, and was soon after used 
 for two or three hours in making candles, by way of experiment, the machin- 
 ery may well be considered as but an abandoned experiment:^' 
 
 In Johnson v. McCullough, 4 Fish. P. C. 170, the court said: 
 
 " I have also examined all the testimony relating to the Shaw model, 
 and find it does not show more than the making of a model, and not of any 
 practical working machine, which is necessary to overthrow a patent." 
 
 In Stilwell v. Cincinnati, 1 Ban & A. 610, the court said of a model made 
 prior to the invention in question: 
 
 " That (the making of a mere model) does not constitute invention, and
 
 116 THE FIXED LAW OF PATENTS § 72 
 
 it can only be used as an item of testimony, reflecting upon the making and 
 using of the wooden lieater in 1845 or 1846. Taking it in connection with 
 the testimony on that point, and weighing all the testimony together, I 
 cannot say, that it is of that clear and satisfactory character, as requires 
 me to find that James Armstrong invented the device, as claimed, in 1845 
 or 1846." 
 
 In Bowers v. Von Schmidt, 63 Fed. 572, the court, at page 577, says: 
 
 " That models or drawings will not constitute invention, so as to amount 
 to anticipation, may be true, but models or drawings may constitute in- 
 vention to avoid anticipation." 
 
 Non constat models and drawings may be used to establish an invention 
 prior to that of the patentee. 
 
 These are all the authorities cited by Mr. Walker, and we are convinced 
 that they do not sustain the broad contention of the complainant. The law, 
 section 4886 of the Revised Statutes, provides that any person may obtain 
 a patent, inter aha, for a machine invented by him " not known or used by 
 others in this country before his invention or discovery thereof." It is 
 clear, as pointed out by Mr. Walker, that knowledge of a model of a machine 
 is not knowledge of the machine itself any more than knowledge of a model 
 of Brooklyn Bridge is knowledge of that structure. But we think the rule 
 should be restricted to a model pure and simple as the word is understood 
 in common parlance, viz., a pattern, a copy, a representation usually upon 
 a reduced scale. The word " model " should not be construed to mean 
 the identical device which is covered by the patent. If this were otherwise 
 a defendant who produces the exact structure of the claims and proves 
 that it was known prior to the date of the alleged invention is completely 
 answered if the complainant can show that the anticipating structure was 
 filed as a model. In other words, the cjuestion is not one of nomenclature 
 but of fact. In the case of a complicated'machine a small model incapable 
 of actual use may be filed for the purpose of explaining and illustrating the 
 drawing; that such a model alone would not anticipate is, of course, per- 
 fectly clear. On the other hand, it frequently happens that the applicant 
 files as his model not a pattern or reproduction of the thing invented by him 
 but the thing itself. Take, for illustration, an application for a patent for 
 a horse-shoe nail when one of the nails made by the inventor is filed as 
 a model, can it be that a subsequent applicant -can hold a patent for that 
 nail or any feature thereof after proof of its prior existence and the knowl- 
 edge thereof by the public? During the pendency of an application a model 
 filed in the Patent Office is supposed to be inaccessible to the public and 
 therefore proof of its filing date is not alone proof of public knowledge at 
 that time, but, on the other hand, such knowledge having been shown by 
 extrinsic evidence, the model is not open to the suspicion that it has been 
 altered and, until proof to the contrary is adduced, must be presumed to be 
 in the condition it was at the date of filing. As before stated, we think 
 the Yost model was something more than a mere model, for the reason 
 that it is a full operative embodiment of the tabulating mechanism, and 
 for the further reason that its existence and purpose is established by evi- 
 dence independent of its connection with the Patent Office. — American v, 
 Wagner, 151 Fed. 576; 81 C. C. A. 120. 
 
 A'oie: Compare this clear statement with the opinion in Buser v. Novelty, 
 151 Fed. 478. 
 
 With reference to this model, it is sufficient to say that it was proven on 
 the trial of the case that it was not an original model of the press which it 
 purported to represent, but was made by the defendant Livengood about 
 six months after the institution of the suit at bar for the purpose of being 
 used as evidence to invalidate the claims of tiie Power patent. It was so
 
 §§73-74 ANTICIPATION 117 
 
 made merely from the witness' recollection of the structure of the press that 
 it purported to represent, which he had not seen for eight or ten years, and 
 the fact that it was not an original model was not disclosed when it was 
 offered in evidence, but was intentionally concealed until the fact was de- 
 veloped on cross-examination. Under the circumstances, we cannot accept 
 the model in question as sufficient evidence to invalidate the claims. — 
 Kansas City v. Devol, Si Fed. 726; 26 C. C. A. 578. Reversed, 84 Fed. 463. 
 
 That when counsel is called upon by the court to differentiate the device 
 of the patent in suit, his failure to do so will not be looked upon with favor, 
 see Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70. 
 
 No writing supports the defendant's contention, and human memory is 
 not to be relied upon as to minute details of transactions occurring twenty- 
 five years before. — United v. Beattie, 149 Fed. 736; 79 C. C. A. 442. 
 
 Keasby v. Carey, 139 Fed. 571. 
 
 §73. Evidence of — Expert. 
 
 It is perhaps possible for an expert, having the patent in suit before him, 
 to build up the structure covered by these claims, by selecting and deftly 
 adapting appliances theretofore known, " yet it would still be true thai 
 neither the same combination in its entirety nor the same operation " had 
 previously been described or in any manner exemplified. — McMichael v. 
 Ruth, 128 Fed.- 706; 63 C. C. A. 304. 
 
 Parks V. Booth, 102 U. S. 96; Bates v. Coe, 98 U. S. 31; Mast v. Stover, 177 
 U. S. 497. 
 
 § 74. Evidence of — Parol. 
 
 Evidence of anticipation consisting wholly of the recollection of witnesses, 
 especially when contradicted and when at variance and when not substan- 
 tiated, but impaired by the production of one of the alleged anticipating 
 articles is not sufficient to negative novelty. — Untermeyer v. Freund, 58 
 Fed. 205; 7 C. C. A. 183. 
 
 The personal recollection of a number of unimpeached and disinterested 
 witnesses of an anticipating device, fully described and identical, though 
 the device itself has passed out of existence, is sufficient to establish 
 prior invention. — American v. Weston, 59 Fed. 147; 8 C. C. A. 56. 
 
 Washburn v. Beat Em. All. 143 U. S. 275: Fruit Jar Co. v. Wright, 94 U. S. 
 92; Egbert v. Lippmann, 104 U. S. 333; Andrews v. Hovey, 124 U. S. 694; Jones 
 V. Barker, 11 Fed. 597. 
 
 The inherent dangers of oral proofs in this class of cases are explained in 
 the Barbed Wire Patent, 143 U. S. 275, and in Deering v. Harvester Works, 
 155 U. S. 286. — Brooks v. Sacks, 81 Fed. 403; 26 C. C. A. 456. 
 
 The unsupported oral testimony which will warrant a finding of prior 
 use, should be clear and satisfactory. It is also open to suspicion. It ought 
 to be sufficient to establish such a use beyond a reasonable doubt. — Mast 
 V. Dempster, 82 Fed. 327; 27 C. C. A. 191.- 
 
 Barbed Wire Pat. 143 U. S. 275; Deering v. Harvester, 155 U. S. 286. 
 
 The brief and fragmentary testimony of the two witnesses is unpersuasive, 
 especially in view of the circumstance that no one whose business made 
 him familiar with the chest, rather than its contents, was called. The evi-
 
 118 THE FIXED LAW OF PATENTS § 74 
 
 dence of Meade indicated where the best witnesses on this subject were to 
 be sought for, and their non-production would seem to require greater caution 
 in accepting the statements of others, — Acme v. Gary, 101 Fed. 269; 41 
 C. C. A. 338. 
 
 Unsupported oral testimony of a prior use is always open to suspicion, 
 and it cannot prevail over the legal presumption of validity which accom- 
 panies the patent, unless it is sufficient to establish such a use beyond a 
 reasonable doubt. — National v. Interchangeable, 106 Fed. 693; 45 C. C. A. 
 544. 
 
 Mast V. Dempster, 82 Fed. 327; In re Barbed-Wire Patent, 143 U. S. 275- 
 Deering v. Harvester, 155 U. S. 286; Miller v. Handley (C. C.) 61 Fed. 100. 
 
 This (alleged prior public use) was more than 20 years after the event. 
 Under the circumstances of the case, this not only throws the practical 
 burden on the complainant, but it also requires that the proofs offered by 
 him should be " full, unequivocal, and convincing." The strictness with 
 which this rule is apphed, and the unwillingness of the courts to regard 
 unsupported oral testimony, given after a lapse of many years, as consti- 
 tuting " full, unequivocal and convincing " proof, are practically illustrated 
 by the Supreme Court in (cases cited). — Swain v. Holyoke, 111 Fed. 408; 
 49 C. C. A. 419. 
 
 Clark V. Willimantic, 140 U. S. 481; Barbed Wire Patent, 143 U. S. 275; Mor- 
 gan V. Daniels, 153 U. S. 120; Deering v. Harvester, 155 U. S. 286; Brooks v. 
 Sacks, 81 Fed. 403. 
 
 He failed to so describe the said apparatus that this court can determine 
 whether they did in fact embody in structure and practical operation the 
 specific form of apparatus used by the defendant. Such evidence, under 
 the familiar rule, called either for corroboration or for some explanation 
 why corroboration was impossible. — Westinghouse v. Catskill, 121 Fed. 831 ; 
 58 C. C. A. 167. 
 
 Testimony that something occurred " about a month " preceding a day 
 unestabfished, except by the unsupported recollection of an interested 
 witness twelve years after, is too indefinite and uncertain to be accepted 
 as establishing a five days' anticipation of a patent. — Bettendorf v. Little, 
 123 Fed. 433; 59 C. C. A. 473. 
 
 Clark V. Willimantic, 140 U. S. 481; Brooks v. Sacks, 81 Fed. 403; Westing- 
 house V. Saranac, 108 Fed. 221. 
 
 Courts have frequently taken the ground that where a long time has 
 elapsed since the alleged use, and the fact depends upon the fading recol- 
 lection of a single witness, that an exhibit of the device or thing actually 
 used must accompany the affidavit. There is, however, no hard and fast 
 rule as to this. In this, as in other cases, the weight and effect of testimony 
 must be passed upon and a conclusion as to the existence of an alleged 
 prior use will be reached if the evidence thereof is clear and satisfactory 
 to the judicial mind. — Sipp v. Atwood-Morrison, 142 Fed. 149; 73 C. C. A 
 367. 
 
 In order to invalidate a patent by oral testimony of prior invention, it 
 must be such as to convince one beyond a reasonable doubt of that fact — 
 Buser v. Novelty, 151 Fed. 478; 81 C. C. A. 16. 
 
 Barbed Wire Case, 143 U. S. 275; American v. Weston, 59 Fed. 147: Columbus 
 V. Standard, 148 Fed. 622.
 
 5§ 75-76 ANTICIPATION 119 
 
 The anticipation relied upon was the oral testimony of one witness whose 
 testimony was collaterally but not directly supported. In holding such 
 testimony sufficient to anticipate, the court said: we are clearly of the opin- 
 ion that such a rejection (i. e. of his testimony) would be unjustifiable for 
 the following reasons: (1) the witness occupies an important position in 
 which mendacity would not be countenanced, and there is no stain upon 
 h^is character (2) He is in the prime of life, of sound mind and memory, 
 and therefore likely to remember the important details in a business in 
 which he has been engaged for over 20 years. 3) He was a disinterested 
 witness, and when he imparted his knowledge of the prior use he did not 
 know of the pendency of this action. (4) In view of the undisputed prior U33 
 of the illusion for a very analogous use, the use he describes seems the natu- 
 ral thing to have done. (5) This is not the case, which so frequently occurs 
 where a witness, having no knowledge of the art in question, testifies as 
 To the minute details of a complicated machine or a complex chemical process 
 which he saw years before. We are now dealing with a witness concededly 
 familiar with the art, who narrates acts of his own, so simple in character 
 h?t he can hardly be mistaken regarding them. (6) He ,s corroborated by a 
 number of witnesses whose testimony though relating to different instances, 
 Ts substantially to the same effect. (7) His inability to remember the rela- 
 tive fineness of the illusion as compared with the weave of the exhibit in 
 suit does not militate against his truthfulness. — National v. Stolts, 157 
 Fed. 392; 85 CCA. 300. 
 
 § 75. Evidence of — Prior Patent. 
 
 Everv invention disclosed in a patent, and not claimed is dedicated to 
 the public, and no one may thereafter appropriate it. It becomes thence- 
 forth as much a part of the art as does the invention disclosed in the same 
 patent and also daimed therein. The question whether an ^dividual is 
 Sr is not, an original and first inventor and discoverer, can only be deter- 
 mined by comparing what he did or discovered with tjiat body of informa- 
 "on upon the subject with which he and all the world -« chargeable, and 
 which is called the " state of the art." — Saunders v. Allen, 60 Fed. 610, 
 9 C C A. 157. 
 
 § 76. Evidence of — Rebuttal. 
 
 As against the defense of anticipation, it is well settled a patentee may 
 show, if he can, the fact of invention by drawings, sketches models, or any 
 other competent proof. - Von Schmidt v. Bowers, 80 Fed. 121 , 25 C C A. 
 393 
 
 ^Valk. Pat. Sec. 70; Loom Co. v. Higgins, 105 U.S. 594; Bates ^- Coe 98 IJ. S. 
 34; Smith v. Vulcanite, 92 U. S. 486; Apparatus Co. v. Woerle, 29 Fed. 451. 
 
 To avoid the defense which this design patent establishes it is necessary 
 for complainant to show that his invention antedates the date of his appli- 
 cation by several months. The burden of proving this is upon complainant. 
 — Lein V. Myers, .105 Fed. 962; 45 C C A. 148. 
 
 That the proof to anticipate an anticipation must be clear and con- 
 vincing, see Westinghouse v. Catskill, 121 Fed. 831 ; 58 C C A. 167. 
 
 For a general discussion of the character of proofs necessary to overcome 
 substantial evidence of anticipation, see with authorities Westinghouse v. 
 Stanley, 133 Fed. 167; 68 C C A. 523.
 
 120 THE FIXED LAW OF PATENTS 5 77 
 
 § 77. Evidence of — Miscellaneous Holdings. 
 
 Proof of such foreign manufacture and use, if known to the applicant for 
 a patent, may be evidence tending to show that he is not the inventor of 
 the alleged improvement; but it is not sufficient to supersede the patent 
 if he did not borrow his supposed invention from that source, unless the 
 foreign inventor obtained a patent for his improvement, or the same was 
 described in some printed pubhcation. — Roemer v. Simon, 95 U. S. 214; 
 24 L. Ed. 384. 
 
 It is, therefore, impossible to say that the sulphuric acid process was a 
 known equivalent at the time. It is easy now, after the event, for scientific 
 men to say, with the knowledge of today, that the thing was obvious. But 
 the crucial facts contradict the assumption. — Cochrane v. Badische, 111 
 U. S. 293; 28 L. Ed. 433; 4 S. Ct. 455. 
 
 Anticipation is a question of fact, and the burden of establishing it is on 
 the appellant. The patent bears a presumption of novelty and invention, 
 and the lower courts, having passed on the evidence, found against appel- 
 lant's construction. Such united judgment this court accepts unless there 
 is a clear showing to the contrary. — Busch v. Jones, 184 U. S. 598; 46 L. Ed. 
 707; 22 S. Ct. 511. 
 
 Brainard v. Buck, 184 U. S. 99. 
 
 During a quarter of a century, the scientific world was struggling with the 
 problem and could not solve it ; and yet, if the claim asserted be well founded, 
 it had already been solved, and the discoverer had made public demon- 
 stration of it in the commercial metropolis of the Union; the scientific 
 world, however, and the public generally remaining in total ignorance of 
 it. How he could thus hide his light under a bushel passes comprehension. 
 The mind cannot readily yield assent to the assertion of a claim under such 
 circumstances, and when it is supported solely by ex parte evidence. — 
 Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 There was no attempt to secure the protection of the law for an invention 
 that, had it been known would have startled the world and made him a mil- 
 lionaire. That he should have been so careful to secure his rights with 
 respect to trifling matters, and evidence such utter disregard of his interests 
 in a matter of great moment challenges belief. This renders the more im- 
 probable the story of his invention. — Electric v. Edison, 61 Fed. 834; 10 
 C. C. A. 106. 
 
 Telephone Cases, 126 U. S. 556; Barbed Wire Patent, 143 U. S. 275. 
 
 The positive testimony of several witnesses produced on the trial is cor- 
 roborated by the actual presence of the machine in court, and yet the testi- 
 mony was apparently rejected on the ground that if Brown, who was man- 
 ufacturing corn-planters, and who was in the business of obtaining patents 
 on similar machinery, had constructed this machine, he would have ap- 
 plied for a patent and continued to manufacture the machine. Such a 
 reason might be suflScient if the testimony were doubtful^ or conflicting. If 
 the evidence on the question of anticipation were conflfcting or doubtful 
 then, no doubt, the circumstance that Brown had never applied for a patent 
 or continued the manufacture of the machine, might be allowed to turn 
 the scale. — Parlin v. Moline, 89 Fed. 329; 32 C. C. A. 221. 
 
 From the similarity of the two patents, it seemed wellnigh manifest 
 that the French patent had been read by the patentee, who was urged
 
 § 78 ANTICIPATION 121 
 
 by the first patentee of the patent in suit to invent an economical method 
 of repairing asphalt pavements. — U. S. v. Standard, 95 Fed. 137; 37 C. C. A. 
 28. 
 
 Note: This is an excellent illustration of the way in which a court may 
 be mistaken as to conclusions inferentially drawn from the record. As a 
 matter of fact, (the writer having prepared the defense in this case), the 
 French patent was not only unknown to the patentee, but was absolutely 
 unknown to the American art. The French patent to Crochet had been 
 misclassified in the patent office and was discovered only after three searches 
 had been made and then almost accidentally, among the classes relating 
 to stuccoes and similar objects made from plaster and cements. The point 
 to be observed is that an inference of this character is generally unsafe; 
 and when allowed to turn the weight of evidence, when a question is in 
 doubt, renders the decision of no more value than the inference itself. 
 
 It will therefore be observed that, while the Cleveland Company is now 
 denying the priority of the Hebbard use, it formerly asserted such priority 
 solemnly and repeatedly, by declarations of record, by offering evidence 
 in support thereof, and by the earnest arguments of its counsel, in a suit 
 involving substantially the same question as is now presented. It may be 
 admitted that no estoppel is made out by the foregoing facts, but we can- 
 not agree that they should have no influence upon the burden or degree of 
 proof required of the defendant in the present case. At the least, they called 
 upon the Cleveland Company for a satisfactory explanation why witnesses 
 whom it formerly relied upon as truthful and accurate were now challenged 
 as untrustworthy and not to be beheved. In the absence of such explana- 
 tion, we think that the court should not have treated the facts referred 
 to as if they involved merely some unimportant inconsistency between 
 the position taken then and the position taken now by the Cleveland Com- 
 pany. It does not agree with our sense of fair dealing that in one juris- 
 diction a party should succeed by upholding the truthfulness and reliability 
 of witnesses, and should thereafter attack the same witnesses in another 
 jurisdiction as persons not credible, merely because the exigencies of his 
 case require a change of attitude. We do not deny that such change is per- 
 missible where the element of estoppel or other suflScient objection does not 
 exist, but to treat the change, when no satisfactory explanation has been 
 offered, as without influence upon the burden or the degree of proof, seems 
 to us to be going too far. — Empire v. Cleveland, 102 Fed. 354; 42 C. C. A. 
 393. 
 
 The courts uniformly require strict and convincing proof of a prior use 
 not thus set up for the purpose of defeating a patent, and especially when 
 the invention has been a long time in general use, and has several times 
 been through the ordeal of Htigation. — Loew v. German-American, 107 
 Fed. 949; 47 CCA. 94. 
 
 § 78. Experiment. 
 
 It is freely admitted that the patent of an originator of a complete and 
 successful invention cannot be avoided by proof of any number of incom- 
 plete and imperfect experiments made by others at an earlier date. This is 
 true, though the experimenters may have had the idea of the invention and 
 may have made partially successful efforts to embody it in a practical form. 
 And though this doctrine has been more frequently asserted when 
 patents for machines have been under consideration, we see no reason 
 why it should not be applied in cases arising under patents for chemical 
 products. — American v. Fiber. 90 U. S. 566; 23 L.Ed. 31.
 
 122 THE FIXED LAW OF PATENTS § 79 
 
 We are satisfied Smith's invention did not anticipate Reynolds'. He and 
 Reynolds had conferences on the subject of their work, and Smith sketched 
 something, but whatever it was no one can tell; the sketches were evi- 
 dently considered unimportant, for they were not even preserved. He had 
 ideas on this subject, but he certainly had not perfected such invention. 
 Reynolds' conduct was not an admission that he had. It may be that the 
 latter feared litigation and delay in the patent office, because of something 
 Smith said, and for that reason wanted Smith to delay his application. 
 If he induced such delay it did not invalidate his patent. He was the orig- 
 inal inventor and was lawfully entitled to the patent. His conduct was 
 not fraudulent, either as respects Smith or the public. — National v. Belcher, 
 71 Fed. 876; 18 C. C. A. 375. 
 
 Nothing, is shown but occasional, tentative experiments by the Farn- 
 hams, made years ago to meet their personal and temporary wants. Pre- 
 cisely what they accomphshed is uncertain; no sample of their device 
 is exhibited. Whatever it may have been it was never applied to nor in- 
 tended for the public use; it was a mere makeshift for a temporary purpose, 
 which disappeared with the occasion that called for it, never known to 
 anybody but the Farnhams, and now is almost forgotten by them. — Schenck 
 V. Diamond, 77 Fed. 208; 23 C. C. A. 122. 
 
 ' Thus the respondent's patent points out, on mathematical principles, 
 exactly what was required to make a last operative. The result is that, 
 so far as claim 2 is concerned, the patent in suit accomplished only a crude 
 experiment, without practical success. As the latter was reached in the 
 respondent's last, the complainant is not entitled to stand in its way. — ■ 
 Miller v. Mawhinney, 105 Fed. 523; 44 C. C. A. 581. 
 
 For nearly 20 years it remained nothing but an ambiguous description 
 of incomprehensible drawings. It emerged from oblivion solely to meet 
 the exigencies of this litigation. The inquiry is pertinent, why was it that 
 this machine was permitted to remain unused? Since the success of the 
 device of the patent in suit every effort has been made by infringers to 
 evade it by introducing specious changes of form, and yet, if we are to 
 accept the contention of appellant, there is an operative machine in exist- 
 ence doing the work as well as the machine of the patent in suit and free 
 to anyone who desires to use it. Is not the presumption almost conclusive 
 that it was not used because it was not usable? — Cimiotti v. American, 115 
 Fed. 498; 53 C. C. A. 230. 
 
 Considering this patent as an alleged limiting or anticipating document, 
 what would a person skilled in the art of barrel making produce from in- 
 specting the drawings of the patent and following it? Nothing but a tight, 
 unventilated barrel, with a cylindrical center and cones at the ends. For 
 nearly 30 years it had been on the public record without producing any 
 effect on the art or trade of barrel making. It cannot be said that a patent 
 for a device which fails to accomplish the desired end is an anticipation 
 of one which successfully accomplishes it. — Farmers' v. Spruks, 127 Fed. 
 691 ; 62 C. C. A. 447. 
 
 Note: This and other similar holdings are in absolute contradiction of 
 the rule that a mere paper patent, if it discloses the principle, anticipates. 
 It is, to my mind, an approximation to the proper rule. 
 
 § 79. Foreign Invention. 
 
 That testimony of a witness that he had seen the device used abroad, 
 and that the same had been imported along with chests of tea ever since
 
 §§ 80-82 ANTICIPATION 123 
 
 he had known of China teas, is not sufficient to defeat a patent through 
 pubHc use by importation, see Acme v. Gary, 101 Fed. 269; 41 C. C. A. 338. 
 
 Much time and space have been devoted to an effort to estabHsh " prior 
 use " in Germany. Since such prior use if established, would be no defense, 
 under sec. 4923, it is difficult to understand why the record is thus encum- 
 bered. — Badische v. Kalle, 104 Fed. 802; 44 C. C. A. 201. 
 
 There is no proof which would warrant a conclusion that the patentee 
 at the time of his application did not beheve himself to be the original 
 and first inventor and discoverer. Therefore, under sec. 4923, testimony 
 tending to show knowledge or use in a foreign country need not be discussed. 
 — Badische v. Kalle, 104 Fed. 802; 44 C. C. A. 201. 
 
 The French machine, of which the machine of the patent was a close 
 copy, was imported a year and a half prior to the filing of the patent appli- 
 cation. No proof was offered to carry the date of invention back of the 
 date of filing. The patentee made machines, prior to his application, which 
 were copies of the French machine. Held: Anticipation. — Stuart v. Auger, 
 149 Fed. 748; 79 C. C. A. 60. 
 
 § 8o. Foreign Patent or Publication — Burden of Proof. 
 
 One of the joint inventors had taken out foreign patents on the same 
 invention. Held: Upon these patents being proved by the defendant, 
 the burden of proof was cast upon the complainant to show that the joint 
 inventors were the earlier inventors. — De Laval v. Vermont, 135 Fed. 772; 
 68 C. C. A. 474. 
 
 The burden was on appellant to establish that he invented his device 
 prior to the date of issuance of the foreign patent, and that beyond a rea- 
 sonable doubt. It is well settled that, if a defendant seeks to invalidate 
 the patent in suit by showing, by oral testimony, prior invention, the proof 
 must be clear, satisfactory, and beyond a reasonable doubt. Barbed Wire 
 Case, 143 U. S. 275; American v. Weston, 59 Fed. 147. It is also the law 
 that, if a plaintiff seeks to maintain the patent in suit by showing by oral 
 testimony invention prior to a patent which anticipates it and would other- 
 wise invalidate it, the proof must be of the same character. — Columbus v. 
 Standard, 148 Fed. 622; 78 C. C. A. 394. 
 
 Thayer v. Hart, 20 Fed. 693. 
 
 § 8i. Foreign Patent or Publication — Date of. 
 
 But in order that the foreign patent may invalidate the patent in suit, 
 it is not sufficient that it antedates that patent. If, notwithstanding such 
 antedating, the patentee invented his device prior to the date of the foreign 
 patent, then his patent is not invalidated thereby. — Columbus v. Standard, 
 148 Fed. 622; 78 C. C A. 394. 
 
 Seymour v. Osborne, 11 Wall. 555. 
 
 § 82. Foreign Patent or Publication — Invention. 
 
 The act of Congress provides that when the patentee believes himself 
 to be the first inventor, a previous discovery in a foreign country shall 
 not render his patent void, unless such discovery, or some substantial part 
 of it, had been before patented or described in a printed publication. — 
 O'Reilly V. Morse, 15 How. 62; 14 L. Ed. 601.
 
 124 THE FIXED LAW OF PATENTS § 82 
 
 This is not the case of an interference in the patent office, or of a contest 
 in the courts between two original inventors for priority of invention, in 
 which it is the estabhshed rule under Sec. 4923, Rev. St. U. 8., that an 
 original inventor, who applies for letters patent of the United States, cannot 
 be'cleprived of his right to a patent by the fact that an inventor had made 
 in a foreign country, at a prior date, the same original invention, but which 
 had not been described at a prior date in a patent or in a printed publication. 
 This question then arises: Can an iiifringcr defeat letters patent of the 
 United States to an original inventor in a foreign country by proof that 
 a few days before the date of a prior foreign patent to the same inventor, 
 but not before the date of the application for such patent, and less than 
 two years before the date of the application for a United States patent, 
 the invention was used in this country by a person who did not invent it? 
 
 It is contended by the defendant that, under section 4886 of the Revised 
 Statutes, the Rawson patent was void, on the ground that the improvement 
 was known and used in this country before the invention thereof, because 
 the actual inventor is not permitted to show that the date of his invention 
 was prior to the date of his foreign patent. 
 
 The section gives to an inventor, foreign or domestic, the right to a patent 
 unless certain conditions existed, neither of which in fact existed in this 
 case. The Rawson invention had not been patented or described in any 
 country before the patentees invented it, had not been in public use or on 
 sale for more than two years prior to their application, had not been aban- 
 doned, and had not been known or used in this country by anyone before 
 the date of the invention. If no other disabilities prevent, an inventor 
 may obtain a patent of the United States for an invention made and pre- 
 viously patented in a foreign country, unless the same has been introduced 
 into pul)lic use in the United States for more than two years prior to the 
 application (section 4887), which is, in substance, the qualification which 
 exists in section 4886, as applicable to any invention; and it is not neces- 
 sary that the introduction shall have been made with the consent of the 
 inventor. It is, however, said that the section requires that the invention 
 must not have been known or used in this country before the date of the 
 invention, and that the date of the publication of the foreign Rawson patent 
 is the date de jure. The section applies to all inventions, irrespective of 
 the place of their origin, and the term " date of invention " is used without 
 discrimination between classes of inventions. The theory of the defendant 
 is that, as to the domestic inventor, knowledge in this country must pre- 
 cede the actual date of the invention, but that, as to a foreign inventor, 
 knowledge in this country need only precede the date of the publication 
 of his foreign patent. We are of opinion that the language of the section 
 refers to the actual, and not an artificial date, and that, where there is no 
 contest between inventors, if knowledge in this country did not precede 
 the actual date of the invention, unless it had been used in this country 
 for two years before the application, the inventor was entitled to a patent. 
 This question was before Judge Dallas in Hanifen v. Godshalk Co., 78 Fed. 
 811, and before Judge Townsend in Hanifen v. Price, 96 Fed. 435, whose 
 opinions are in conformity with those herein expressed. Our conclusion 
 is that, as against an infringer, the patentee in a United States patent for 
 an invention previously made by him and patented in a foreign country 
 may, to avoid alleged use in this country by an infringer before the date 
 of the foreign patent, show the date of the application for the foreign patent, 
 for the purpose of showing the actual date of his invention in a foreign 
 country. — Welsbach v. American, 98 Fed. 613; 39 C. C. A. 185. 
 
 Ireson v. Pierce, 39 Fed. 797; Roemer v. Simon, 95 U. S. 214; EHzabeth v. 
 Pavement, 97 U. S. 126; Lander v. Cowles, 16 O. G. 405; Andrews v. Hovey, 
 123 U. S. 267; id. 124 U. S. 694.
 
 S§ 83-85 ANTICIPATION 125 
 
 § 83. Foreign Patent or Publication — Publication — Date. 
 
 A foreign patent, or other foreign printed publication describing an in- 
 vention, is no defense to a suit upon a patent of the United States, unless 
 published anterior to the making of the invention or discovery secured by 
 the latter, provided that the American patentee, at the time of making 
 application for his patent, beheved himself to be the first inventor or dis- 
 coverer of the thing patented. He is obliged to make oath to such belief 
 when he applies for his patent; and it will be presumed that such was his 
 belief until the contrary is proven. — Ehzabeth v. American, 97 U. S. 126; 
 24 L. Ed. 1000. 
 
 Act 1836, 55 S. at L. 117,7, 15; Act 1870, 16 S. at L. 198, 24, 25, 61; R. S. 4886, 
 4887, 4920. Curt Pat. Sec. 375, 375a. 
 
 § 84. Foreign Patent or Publication — Same Inventor. 
 
 Under section 4887, an existing foreign patent is not a bar to a subse- 
 quent United States patent for the same invention to the same inventor, 
 unless the invention has been in public use in this country for two years 
 prior to the appUcation. — Electric v. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 § 85. Foreign Patent or Publication — Sufficiency. 
 
 If a foreign invention had been printed or patented, it was already given 
 to the world and open to the people of this country, as well as of others 
 upon reasonable inquiry. They would therefore, derive no advantage 
 from the (this) invention here. It would confer no benefit upon the com- 
 munity, and the inventor therefore, is not considered to be entitled to the 
 reward. But if the foreign discovery is not patented, nor described in any 
 printed publication, it might be known and used in remote places for ages, 
 and the people of this country be unable to profit by it. The means of 
 obtaining knowledge would not be within their reach, and so far as their 
 interest is concerned, it would be the same thing as if the improvement 
 had not been discovered. It is the inventor here that brings it to them 
 and places it in their possession, and as he does this by the effort of his own 
 genius, the law regards him as the first and original inventor, and protects 
 his patent, although the improvement had in fact been invented before, 
 and used by others. — Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 The statutes authorize the granting of patents only for such inventions as 
 have not been patented or described in any printed publication in this or 
 any foreign country before the applicant's embodiment of his own concep- 
 tion. It may be a hardship to meritorious inventors, who, at the expendi- 
 ture of much time and thought, have hit upon some ingenious combination 
 of mechanical devices, which for aught they know, is entirely novel, to find 
 that, in some remote time and place, someone else, of whom they never 
 heard, had published to the world, in a patent or a printed publication, 
 a full description of the very combination over which they have been puzzling; 
 but in such cases the act, none the less, refuses them a patent. — New 
 Departure v. Bevin, 73 Fed. 469 ; 19 C. C. A. 534. 
 
 It is a well settled and familiar doctrine that an invention patented here 
 is not to be defeated by a prior foreign patent unless its descriptions or 
 drawings contain or exhibit a substantial representation of the patented 
 invention in such full, clear, and exact terms as to enable any person 
 skilled in the art or science to which it appertains, without the necessity 
 of making experiments, to practise the invention. — Hanifen v. Godshalk, 
 84 Fed. 649; 28 C. C. A. 507. 
 
 SejTnour v. Osborne, 11 Wall. 516; Cahill v. Brown, Fed. Cas. 2,291; Rob. 
 Pat. sec. 329.
 
 126 THE FIXED LAW OF PATENTS § 86 
 
 Great stress is laid upon the English patent to Rose as embodying antici- 
 patory features, but the Rose device did not do the thing that this device 
 does. It did not undertake to do it, and, so far as appears, no one ever 
 thought of its being applied to such a situation, and doing the work in the 
 manner in which the device in question does it. Quite likely the Rose patent 
 had some of the ideas involved in the patent in question, — as, for instance, 
 the idea of radiating heat by means of coils of wire, — but it did not de- 
 scribe, or even suggest, the distribution of heat, either in detail or in sub- 
 stance, in the manner and by the means employed in the complainants' 
 device. As was said by the circuit court, under the rules applying to foreign 
 patents it cannot be viewed as anticipating the McElroy invention. — Con- 
 solidated V. West End, 85 Fed. 662; 29 C. C. A. 386. 
 
 That the patent was allowed by the patentee to expire in 1891 (when 
 only four years old) through non-payment of a renewal fee, required by 
 British law, is cogent evidence that the patent was found to be inoperative 
 or valueless. — Streator v. Wire-Glass Co., 97 Fed. 950; 38 C. C. A. 573. 
 
 If the light thrown by NichoU's provisional specifications on the art 
 30 years ago met the test laid down by the court in reference to a prior 
 foreign patent, that it must be " sufficient to enable those skilled in the art 
 to understand the nature and operation of the invention, and to carry it 
 into practical use," and " that it must be an account of a complete and 
 operative invention, capable of being put into practical operation " (Sey- 
 mour V. Osborne, 11 Wall. 516) it is inconceivable that the device suggested 
 would not have been seized upon in the 20 odd years ensuing before Firm's 
 patent, and embodied in a practical press. The fact that it did not so in- 
 struct press builders proves the disclosures were not sufficient to so instruct. 
 
 — Goss V. Scott, 110 Fed. 402; 49 C. C. A. 97. 
 
 The Galand device complies fully and clearly with all the requisites ne- 
 cessary to constitute a foreign anticipation. Not only is its essential prin- 
 ciple described in his patent, but the details are also fully set out, and a 
 pistol constructed substantially in accordance therewith has gone into ex- 
 tensive use in the French army. — Colt v. Wesson, 127 Fed. 333; 62 C C. A. 
 167. 
 
 Being a foreign publication, it does not contain a substantial repre- 
 sentation of the patent improvement in such clear and exact terms as to 
 enable a person skilled in the art to construct and practise the invention. 
 
 — Kirchberger v. American, 128 Fed. 599 ; 64 C. C. A. 107. See 215 U. S. 161. 
 Seymour v. Osborne, 11 Wall. 516; Eames v. Andrews, 122 U. S. 40; Chase v. 
 
 Fillebrown, 58 Fed. 374. 
 
 § 86. " Infringe-if-Later " Test. 
 
 That which infringes if later would anticipate if earlier. — Knapp v. 
 Morss, 150 U. S. 221 ; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Peters v. Active, 129 U. S. 530; Thatcher v. Burtis, 121 U. S. 286; Grant v. 
 Walter, 148 U. S. 547; Gordon v. Warder, 150 U. S. 47. 
 
 That which infringes if later anticipates if earlier. — Miller v. Eagle Mfg. 
 Co. 151 U. S. 186; 38 L. Ed. 121 ; 14 S. Ct. 310. 
 
 If one invention infringes another if later, it anticipates it if earlier. — 
 Wells V. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Peters v. Active, 129 U. S. 530; Knapp v. Morss, 150 U. S. 221; Miller v. Mfg. 
 Co. 151 U. S. 186.
 
 §§ 87-88 ANTICIPATION 127 
 
 If it would infringe, it would anticipate if earlier. — Eames v. Worcester, 
 123 Fed. 67; 60 C. C. A. 37. 
 
 MiUer v. Eagle, 151 U. S. 186. 
 
 A person making, using, or selling the patented device would infringe, 
 and he would not be permitted to escape on the plea that it was not intended 
 for use on an underwaist or a belt (the patent being for a hose supporter). 
 It follows, as a necessary corollary, that such a structure in the prior art 
 will anticipate irrespective of its connection, use or lack of use. — Parra- 
 more v. Siegel-Cooper, 143 Fed. 516; 74 C. C. A. 386. 
 
 Rule followed in Standard v. Ramsay, 143 Fed. 972; 75 C. C. A. 158. 
 
 We are fully convinced that these motors if later in time would infringe 
 the Eikemeyer patent; and, since they were in fact prior in the art, the 
 patent must be held void for lack of invention. — General v. Corliss, 160 
 Fed. 672; 87 C. C. A. 560. 
 
 § 87. Inoperative Device. 
 
 That this was a comparatively small machine and used only for applying 
 moldings to combs is not material. — Peters v. Active, 129 U. S. 530; 32 
 L. Ed. 738; 9 S. Ct. 389. 
 
 Woodbury v. Keith, 101 U. S. 490. 
 
 That the fact that the devices of the prior art were not commercially 
 successful until after the invention of the electric generator, does not bar 
 the devices of the prior art from anticipating subsequent devices invented 
 after the generator invention made such devices commercially successful, 
 see Kelly v. Springfield, 92 Fed. 614; 34 C. C. A. 570. 
 
 That a device which is essentially a toy, without practical use, and not 
 known and suggesting the invention will not be held to anticipate, see 
 Westinghouse v. New England, 110 Fed. 753; 49 C. C. A. 151. 
 
 We are not satisfied that the apparatus is inoperative, but incline to the 
 opinion that the alleged defects are merely in details of construction, which 
 would be readily obviated by the skilled mechanic. The presumption 
 arising from the grant of the United States patent must prevail in the ab- 
 sence of proof to overthrow it. — Edison v. American, 114 Fed. 926; 52 
 C. C. A. 546. 
 
 § 88 Knowledge. 
 
 The fact that the inventor obtained all the assistance and information 
 possible from writings and from persons skilled in the art, obtained the 
 best counsel obtainable and acted upon it, does not detract from his in- 
 vention. — O'Reilly v. Morse, 15 How, 62; 14 L. Ed. 601. 
 
 The fact that the inventor had no prior knowledge of the anticipating 
 patent may entitle him to claim the quality of invention, but as he is deemed 
 in a legal point of view to have had this and all prior patents before him 
 his invention rests upon a modification of these too trivial to be the subject 
 of serious consideration. — Duer v. Corbin, 149 U. S. 216; 37 L. Ed. 707, 
 13 S. Ct. 850.
 
 128 THE FIXED LAW OF PATENTS § 89 
 
 That a single instance incontrovertibly established a prior knowledge 
 and use by a single person, is sufficient to defeat a patent, see Bannerman v. 
 Sanford, 99 Fed. 294; 39 C. C. A. 534. 
 
 Coffin V. Ogden, 18 Wall. 124. 
 
 Giving to Deprez's theorem all the value to which it is entitled, its appli- 
 cation by Tesla to the production of a new, original and most beneficial 
 practical result by new and described means and the use of polyphase alter- 
 nating currents, — in brief, by the polyphase system, — and the apparatus 
 of Tesla was an invention of a very high order. The defense of non-patent- 
 ability was elaborated in the record in the most painstaking manner, and 
 with abundant reference to statements and theories of scientists who pre- 
 ceded Tesla, and who were trying to discover the laws of a mysterious force, 
 the utilization of which is still far from complete development. Each was 
 prospecting in a mine not thoroughly explored, and dimly lighted, and each 
 produced something of value; but the attempt to minimize Tesla's invention 
 of the method of successfully using electricity for very important purposes 
 by means theretofore thought to be impracticable rested upon a very in- 
 adequate foundation. — Westinghouse v. New England, 110 Fed. 753; 
 49 C. C. A. 151. 
 
 There is no evidence in the record which indicates that Gilmour obtained 
 the conception from Brown of fastening the two tables together. As the 
 means for embodying this arrangement in the machine are the essence of 
 the invention described in the patent, and all that was new in the existing 
 state of the art, we are of opinion that the defense interposed was not proven. 
 Brown did not communicate anything new or patentable to Gilmour. He 
 only communicated that which was accessible to all who might have chosen 
 to familiarize themselves with the prior art. — Lincoln v. McWhirter, 142 
 Fed. 967; 74 C. C. A. 229. 
 
 The Watts patent is a design patent. It illustrates and describes an 
 interlocking tile of precisely the form of one of the figures in the patent in 
 suit. The tiles manufactured under this patent were of pottery ware, and 
 were used for wainscoting. Watts, the inventor, is the owner of one-third 
 of the present patent. Furness (the inventor of the patent in suit) had seen 
 this Watts pottery tile before he applied for his patent. It is apparent, 
 therefore, that what Furness did — and all that he did — was to make the 
 Harland yielding but not interlocking tile in the form of the Watts unyield- 
 ing and interlocking tile. Was it invention to apply the old interlocking 
 device to yielding tile? Was it invention to change the material of the old 
 interlocking tile and make it yielding? From wliichever point of view we 
 examine the present case no patentable invention is to be found. There 
 was no original conception in applying the old interlocking device to yielding 
 tiles. Conversel}% there was no invention in changing the material of the 
 old interlocking tiles. — New York v. Sierer, 158 Fed. 819; 86 C. C. A. 79. 
 
 Aron V. Manhattan. 132 U. S. 90; Higgin v. Murdock, 132 Fed. 810; General 
 V. Yost, 139 Fed. 568; Florsheim v. Schilling, 137 U. S. 64; Phillips v. Detroit, 
 111 U. S. 604; Bro^vTi v. D. C. 130 U. S. 87; Potts v. Creager, 155 U. S. 605. 
 
 § 89. Old Elements or Device — Different Uses. 
 
 The structure was not designed for the same purpose ; no person looking 
 at it or using it would understand that it was to be used in the way the 
 de-vice in suit is used, and it is not shown to have been really used and oper- 
 ated in that way. — Clough v. Gilbert, 106 U. S. 166; 27 L. Ed. 138; 1 S. Ct. 
 198.
 
 5§ 90-91 ANTICIPATION 129 
 
 With a strong disinclination to permit the remains of old experiments 
 to destroy the pecuniary value of a patent for a useful and successful in- 
 vention, and remembering that the defendants must assume a weighty 
 burden of proof, I am of the opinion that the patentee's invention has been 
 clearly proved to have been anticipated. — Brush v. Condit, 132 U. S. 39; 
 33 L. Ed. 251; 10 S. Ct. 1. » 
 
 Coffin V. Ogden, 85 U. S. 120; Reed v. Cutter, 1 Story, 590; Pickering v. McCul- 
 lough, 104 U. S. 310; Curtis on Patents, sees. 89-92; Hall v. Macneale, 107 
 U. S. 90. . 
 
 A prior device which in some degree performs the function of the patent 
 in suit, but the purpose and function of which was wholly different, and 
 which in no way pointed out the function of the device in suit cannot be 
 construed as an anticipation. — Edison v. Electric, 66 Fed. 309; 13 C. C. A. 
 
 487. 
 
 The patent in suit is for a dress stay. The alleged anticipation is a corset 
 patent. The two subject matters seem to be essentially dissimilar. The 
 respective inventors were dealing with plainly distinct problems. The 
 difficulty which the one proposed to overcome was very different from that 
 which the other desired to surmount. Their improvements were not both for 
 use upon the same article or in the same way, and the means which they 
 severally employed were not, in any admissible sense, identical. — Lublin 
 V. Stewart, 77 Fed. 303; 23 C. C. A. 176. 
 
 Its (the Goldie nail) use and functions are different. It was adapted to 
 an entirely different art from a spike. — Diamond v. Goldie, 84 Fed. 972 ; 
 28 C. C. A. 589. 
 
 Electric Co. v. LaRue, 139 U. S. 601; Potts v. Creager, 155 U. S. 606, 
 
 § go. Old Elements or Device — Function. 
 
 The court did not err in refusing the instruction that before the invention 
 could be held invalid by reason of a prior patent it was not sufficient to find 
 one element in one patent and another in another. If the patent had been 
 for a combination of new and old elements producing a new result such 
 instructions might have been correct, but as it was merely a new aggre- 
 gation of old elements in which each element performed its old function 
 and no new result was produced by their combination the instruction was 
 properly refused. — Adams v. Bellaire. 141 U. S. 539; 35 L. Ed. 849; 12 
 S. Ct. 66. 
 
 To constitute anticipation of a later patent it is enough that such con- 
 struction had been in well-established use, whether it originated in design 
 or by accident. — National v. Quick, 74 Fed. 236; 20 C. C. A. 410. 
 
 The fact that the device of the prior patent was intended to, and will, 
 accomplish more than the device of the patent in suit, does not prevent its 
 being an anticipation of the latter. It is sufficient that in part it was in- 
 tended to, and will, accomplish the same result, and that in the same way. 
 — Columbus V. Standard, 148 Fed. 622; 78 C. C. A. 394. 
 
 §91. Old Elements or Device — Requiring Adaptation. 
 
 It is not sufficient to constitute an anticipation that the device relied 
 upon might, by modification, be made to accompHsh the function performed 
 by the patent in question, if it were not designed by its maker nor adapted, 
 nor actually used, for the performance oi such functions. — Topliff v. Topliff, 
 145 U. S. 156; 36 L. Ed. 658; 12 S. Ct. 825.
 
 130 THE FIXED LAW OF PATENTS §§ 9^-93 
 
 There is generic sameness, we concede, but there are differences, and the 
 Patent Office and both lower courts found novelty and invention in those 
 differences. — Busch v. Jones, 184 U. S. 598; 46 L. Ed. 707; 22 S. Ct. 511. 
 
 We are not satisfied from the rebuttal testimony of complainant's expert 
 that it will not flow in this way. The most that he says is that the small 
 packing will have to be so large that there would probably be a waste of 
 oil. But that does not eliminate his patent from the prior art. — Nathan v. 
 D. L. & W. 157 Fed. 685; 85 C. C. A. 453. 
 
 An alleged infringer is far from maintaining anticipation by showing 
 what more or less approximates the patented article, but which, nevertheless, 
 requires to be adjusted so as to accomplish a new purpose before it can 
 come into the same field with it. — O'Brien v. Foster, 159 Fed. 710; 86 
 C. C. A. 464. 
 
 § 92. Paper Patent — Insufl&cient. 
 
 The contention that these prior patents must be treated as failures — 
 as mere paper patents of no especial value — is untenable. " The very 
 fact " of the grant of a patent for the process described, " is some evidence 
 of its operativeness, as well as of its utilitv," when introduced by way of 
 anticipation. — National v. Swift, 104 Fed.'87; 43 C. C. A. 421. 
 
 On the one hand, in Packard v. Lacing Stud Co. 70 Fed. 66, we explained 
 why, under some circumstances, a prior device cannot be rejected as an 
 anticipation, although it has not been perfected into a practical and mer- 
 chantable machine. On the other hand, the entire topic of inventive 
 suggestions which have not been put into useful operation, including what 
 is known as " paper patents," is a difficult one, so that in each case a practi- 
 cal rule of judicial determination can rarely be worked out, except by a thor- 
 ough and keen analysis of all the surrounding circumstances. — Dececo v. 
 Gilchrist, 125 Fed. 293; 60 C. C. A. 207. 
 
 Park's History of Medicine (2d Ed.) p. 312. 
 
 In determining the question of identity of the inventive idea, it is not 
 a sufficient answer to say of any alleged anticipation that it was a mere 
 paper patent, and that the same had not been operative or commercially 
 successful; for prior existing conditions might not have stimulated full 
 development. — Ideal v. Crown, 131 Fed. 244; 65 C. C. A. 436. 
 
 In these circumstances, the rule frequently invoked in the case of mere 
 paper patents may with much greater force be applied to these machines, 
 which, even though they may have worked imperfectly, were confessedly 
 capable of a limited, successful, practical operation. Where such patents, 
 or machines constructed under them, embody the principle covered by a later 
 patent; the mere fact that they are not capable of successful practical 
 working because of objections as to minor matters of detail in construction 
 will not deprive them of their effect as defenses where they sufficiently 
 disclose the invention claimed in the later patent. — Van Epps v. United, 143 
 Fed. 869; 75 C. C. A. 77. 
 
 Pickering v. McCuUough, 104 U. S. 310. 
 
 § 93. Paper Patent — Sufficient. 
 
 It may be assumed that these were paper patents, not capable of success- 
 ful operation. But this does not defeat their relevancy as limitations upon 
 the scope of the patent in suit, provided they sufficiently embody the ele-
 
 §§ 94-95 ANTICIPATION 131 
 
 ments and disclose the principle of operation oif said patent. — Westinghouse 
 V. Christensen, 128 Fed. 437; 63 C. C. A. 179. 
 
 Pickering v. Lomax, 104 U. S. 310; Packard v. Lacing-Stud, 70 Fed. 66; 
 Dashiell v. Grosvenor, 162 U. S. 425. 
 
 Under ordinary circumstances, a patent which caused no advance in the 
 art should have small effect upon a successful patent of 20 years later. — 
 — Daylight v. American, 142 Fed. 454; 73 C. C. A. 570. 
 
 The Healy device was to some extent a paper patent, since it never came 
 into general or extensive use. Although issued about 18 years prior to the 
 patent in suit, it never seems to have suggested to anyone a construction 
 like that of the Robins patent, which was designed to, and does substantially, 
 obviate all of the disadvantages of the Healy patent. — Robins v. American, 
 145 Fed. 923; 76 C. C. A. 461. 
 
 If the new function existed in the machines made under the patent, 
 it was accidental, unrecognized by the patentee and no disclosure thereof 
 made to the pubhc. — Hillard v. Fisher, 159 Fed. 439; 86 C. C. A. 469. 
 
 Tilghman v. Proctor, 102 U. S. 711. 
 
 § 94. Prior Art — Insufl&cient. 
 
 The prophetical suggestions in English patents of what can be done, 
 when no one has ever tested by actual and hard experience and under the 
 stress of complication the truth of these suggestions, or the practical diffi- 
 culties in the way of their accomplishment, or even whether the suggestions 
 are feasible, do not carry conviction of the truth of these frequent and 
 vague statements, and the result which was then reached is not shaken by 
 merely a single sentence in the English patent. — Westinghouse v. Great 
 Northern, 88 Fed. 258; 31 C. C. A. 525. 
 
 A machine or combination which is not designed by its maker, nor actu- 
 ally used nor apparently adapted to perform the function of a patented 
 machine, or combination, but which is discovered in a remote art and was 
 used under radically different conditions to perform another function, 
 neither anticipates nor limits the scope of the patent. — National v. Inter- 
 changeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Ansonia v. Electrical, 144 U. S. 11; Topliff v. Topliff, 145 U. S. 156; Potts v. 
 Creager, 155 U. S. 597; Westinghouse v. Air-Brake Co. (C. C.) 59 Fed. 581; 
 Walk. Pat. (2d Ed.) p. 54, sec. 68. 
 
 Where mechanical improvements have moved so fast as they have in 
 the last half century, great caution is required in investigating alleged 
 anticipations which date back nearly the whole of that period; and, so far 
 as they did not go into use, so there was no practical exhibition of them, 
 it is often difficult to determine whether they disclosed such full, clear, 
 and exact terms as are necessary to anticipate. — Draper v. American, 161 
 Fed. 728; 88 C. C. A. 588. 
 
 § 95. Prior Art — Sufficient. 
 
 Devices, though not claimed to fully anticipate the patent in suit, are 
 important in their bearing upon the construction of this patent and upon 
 the alleged infringement bv the defendants. — Deering v. Winona, 155 U. S. 
 286; 39 L. Ed. 153; 15 S.^Ct. 118. 
 
 We must presume the patentee was fully informed of everything which 
 preceded him, whether such were the actual fact or not. There is no doubt
 
 132 THE FIXED LAW OF PATENTS §§ 90-97 
 
 that the patent laws sometimes fail to do justice to an individual who may, 
 with the light he had before him, have exhibited inventive talent of a high 
 order, and yet be denied a patent by reason of antecedent devices which 
 actually existed, but not to his knowledge, and are only revealed after a 
 careful search in the Patent Office. But the statute (4886) is inexorable. 
 It denies the patent if the device were known or used by others in this 
 country before his invention. Congress having created the monopoly, 
 may put such limitations upon it as it pleases. — Mast Co. v. Stover Co. 177 
 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708. 
 
 In view of the prior art, of which his own prior patent must be deemed 
 a part, the claims in question must be confined to combinations substan- 
 tially embodying the si^ecific elements claimed. — Davis v. Morris, 81 Fed. 
 407; 26C. C. A. 460. 
 
 James v. Campbell, 104 U. S. 382; McCreary v. Canal Co. 141 U. S. 459. 
 
 That the court is not limited in its examination of the prior art to the 
 specific class to which the invention belongs, see Kelly v. Clow, 89 Fed. 297 ; 
 32 C. C. A. 205. 
 
 We have no doubt that Hardy had no knowledge of any of these former 
 patents, for they had not been much extended in use or public notice ; but 
 the consequence of their existence no less affects his claim for novelty than 
 if he had known all about them, notwithstanding their obscurity. — Sanders 
 V. Hancock, 128 Fed. 424; 63 C. C. A. 166. 
 
 Evans v. Eaton, 3 Wheat. 454; Steams v. Russell, 85 Fed. 218; Sewall v. 
 Jones, 91 U. S. 171; Crompton v. Knowles, 7 Fed. 199. 
 
 § 96. Prior Patent — Date. 
 
 It is true Bishop's patent was not set up by way of defense in the answer; 
 but there is no dispute as to the time it was issued, and that fact, together 
 with Bishop's testimony, makes it clear that his invention which was ex- 
 emplified in the Wiggins Ferry, was made as far back as 1858, anticipating 
 Bradv according to his own showing for at least seven or eight years. — 
 Atlantic V. Brady, 107 U. S. 192; 27 L. Ed. 438; 2 S. Ct. 225. 
 
 Defendant may show that the invention claimed was patented or described 
 in some printed publication. (not before the American patent was granted 
 — nor before the application was filed but) before the patentee's supposed 
 invention or discovery thereof. — Clark v. Willimantic, 140 U. S. 481 ; 35 
 L.Ed. 521; 11 S. Ct. 846. 
 
 U. S. R. S. 4920. 
 
 It is indispensable to the maintenance of the defense that the combina- 
 tion had been patented prior to his invention or discovery thereof that the 
 defensive patent should have been issued before the patentee under the 
 patent in suit made his invention. As the patent was not issued until after 
 complainant conceived and perfected his device, nor until after he had applied 
 for a patent for it, it is neither competent nor material evidence upon the 
 issues in this case. — Anderson v. Collins, 122 Fed. 451 ; 58 C. C. A. 669. 
 
 Bates V. Coe, 98 U. S. 31; DuBois v. Kirk, 158 II. S. 58; Walk. Pat. sec. 55. 
 
 § 97. Prior Patent — Insufficient. 
 
 The fact that a former patent cited suggests the possibility or advantage 
 of performing the function of the patent in suit is not sufficient to be con- 
 strued as anticipation. — Gordon v. Warder, 150 U. S. 47; 37 L. Ed. 992; 
 14 S. Ct. 32.
 
 §§ 98-99 ANTICIPATION 133 
 
 The Dodson patent was an instance of the intermeshing of projections 
 on the surface of an abutment with corresponding projections on the sur- 
 face of a cyhnder. It is not shown to have produced disintegrations of the 
 clay, and is one of those wrecks and failures of inventive genius that are 
 constantlv found lining the path of the successful inventor, who^takes the 
 last step which wins. — Potts v. Creager, 97 Fed. 78 ; 38 C. C. A. 47. 
 
 Nor can we think that the existence in the Patent Office of something 
 which might merely supply a hint, but was not specifically described or 
 claimed as intended to be covered by a patent, ought to be held as an an- 
 ticipation of an otherwise valid invention. Inventors are not precluded 
 by the embryonic and shapeless ideas found in former patents, any more 
 than they are by such undeveloped matter existing elsewhere. — Canda v. 
 Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 § 98. Prior Patent — Sufficient. 
 
 The learned judge who decided this case in circuit apparently laid stress 
 on the proposition that the respondent could not defend itself against a 
 suit for infringement brought by Mann (the owner of the foreign patent 
 set up in anticipation) provided Mann's patent were in vigor in this country. 
 Even If this were true, and even if the complainant also, were in a smiilar 
 position with reference to Mann, it would not necessarily be decisive of this 
 case. This litigation is not with Mann, or with Mann's patent, but it is 
 in favor of those who, in the most adverse view of them, have improved 
 on Mann, so that, if the improvement amounts to invention, the respond- 
 ent if he has used the improvement, cannot shield itself behind Mann. — 
 Dececo v. Gilchrist, 125 Fed. 293; 60 C. C. A. 207. 
 
 The BuUer patent does not anticipate the patent in suit because: (1) The 
 defendants have failed to show that it is capable of successful practical 
 operation, or that the objections thereto were such as could be obviated 
 without the exercise of the faculty of invention. (2) Because, being a for- 
 eign publication, it does not contain a substantial representation of the patent 
 improvement in such clear and. exact terms as to enable a person skilled 
 in the art to construct and practise the invention. (3) It appears that it 
 does not operate upon the theory or in the manner covered by the invention 
 m suit. — Kirchberger v. American, 128 Fed. 599; 64 C. C. A. 107. See 
 215 U. S. 161. 
 
 Sage V. W^^lCoop, 104 IT. S. 319; SejTnour v. Osborne, 11 Wall. 516; Eames v. 
 Andrews, 122 U. S. 40; Chase v. Fillebrown, 58 Fed. 374. 
 
 It may be true that the patented can was the first which was ever actually 
 manufactured and put upon the market ; but whether such as are described 
 in the prior patents were ever actually made or not is an immaterial con- 
 sideration. These patents show so plainly what they purport to show that 
 he who runs can read; and their effect in negativing novelty of the claim 
 cannot be impaired bv anv argument that thev are impracticable structures. 
 — Ironclad v. Dairyman's, 143 Fed. 512; 74 C. C. A. 372. 
 
 § 99. Prior Patent — Reference on Application. 
 
 That a prior patent cited as a reference against the claim of the patent in 
 suit, while the application was before the commissioner, followed by allow- 
 ance of the claim, is evidence of novglty and patentable difference, see 
 Warren v. Casey, 93 Fed. 963; 36 C. C. A. 29. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94.
 
 134 THE FIXED LAW OF PATENTS §§ 100-103 
 
 § 100. Process — Machine. 
 
 A process patent can only be anticipated by a similar process. It is not 
 sufficient to show a piece of mechanism by which the process might have 
 been performed. — Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 
 S. Ct. 698. 
 
 A process patent, such as that of Jones, is not anticipated by mechanism 
 which might with slight alterations have been adapted to carry out the 
 process, unless, at least, such use of it would have occurred to one 
 whose duty it was to make particular use of the mechanism described. In 
 other words, a process patent can be anticipated by a similar pro,cess. A 
 mechanical patent is anticipated by a prior device of like construction 
 and capable of performing the same function but it is otherwise with a proc- 
 ess patent. The mere possession of an instrument or piece of mechanism 
 contains no suggestion whatever of all the possible processes to which it may 
 be adapted. (New Process v. Maus, 122 U. S. 413.) If the mere fact that 
 a prior device might be made effective for carrying on a particular process 
 were sufficient to anticipate such process, the assured result would follow 
 that, if the process consisted merely of manipulation, it would be antici- 
 pated by the mere possession of a pair of hands. — Carnegie v. Cambria, 
 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 That where complainant held a patent for a process and for a machine 
 for carrying out that process, and the distinguishing novel feature of the 
 process lay in the use of the patented machine, and not in the steps of the 
 process, the steps of the process being all old and old in combination, th3 
 novelty of the result of the operation of the machine could not impart 
 patentable noveltv to the process, see United States v. Assvrian, 100 Fed. 
 965; 41 CCA. 123. 
 
 That a patent for a process is anticipated by a machine capable of per- 
 forming the process and so used, see Johnson v. Chisholm, 115 Fed. 625; 
 53 C C A. 123. 
 
 § 10 1. Process — Process Rule. 
 
 A process patent can only be anticipated by a similar process. — Johnson 
 V. Foos, 141 Fed. 73; 72 C C A. 105. 
 Carnegie v. Cambria, 185 U. S. 403. 
 
 § 102. Process — Miscellaneous. 
 
 The method of Burnham, whether workable or not, was not the process 
 of Johnson, and his patent is not an anticipating patent for that reason as 
 well as because it had not been issued at the date of the Johnson application. 
 — Johnson v. Foos, 141 Fed. 73 ; 72 C C A. 105. 
 
 Bates V. Coe, 98 U. S. 31; Dubois v. Kirk, 158 U. S. 64; Anderson v. Collins, 
 122 Fed. 451. 
 
 There can, of course, be no anticipation of Johnson's method, which was 
 purely mechanical, by one which involved chemical agencies alone. — 
 Johnson v. Foos, 141 Fed. 73; 72 C C A. 105. 
 
 § 103. Public Use — Sufficient. 
 
 The identical combinations having been previously used for the same 
 purpose, there is no invention. — Dane v. Chicago, 131 U. S. cxxvi; 23 L. Ed. 
 82.
 
 I 104 ANTICIPATION ^"^^ 
 
 If the hoe made by the Tool Company infringes t^^^ 
 
 L. Ed. 124. 
 
 When defendant assumed and P--^ that he had made ^ 
 
 device shown and claimed by ^^^Pl^/'^f;^^.^^^ j^;;4''and ^^^^^^^ were held 
 time was prior to compainant's patent the ansv.er and ae ^^ ^^^^ 
 
 good. — Anderson v. Miller, 129 U. b. /O, 6Z i.. -C.a. ooo, 
 
 Fed. 147 ; 8 C. C. A. 56. 
 
 There can be no doubt that under the decisions^ 
 
 150 U. S. 388; Brown v. Davis, lib U. b. -^/. 
 
 1 r^^^ con+ to the French government in response to a 
 
 150 sample cans were sent to \^6^J^/^"\ . invention of the patent 
 
 request for cans of that character before the date of imentio^^^^^ ^^^^ 
 
 STp^hcltn^^^^^^^^^^ boo.s.-American . 
 
 Morris, 142 Fed. 166; 73 C. C. A. 384. 
 Brush V. Condit, 132 U. S. 39. 
 
 5 104. Public Use — Miscellaneous. 
 
 92U. S. 347; 23 L. Ed. 719. 
 
 The fact that the -ticipating device was ooucealed ^^^^^^^^ 
 ruKurroriSlre C S p^u-Sic-mS:. Conda, .32 V. S. 39; 
 33L. Ed. 251; 10 S. Ct. 1. 
 
 Conceding that there was sufficient -idence of use in England (of the 
 patented article '^^"'^X^^^Tn/^SL:^^^'^^^'^ any new and 
 Sr, mSlnTett^d not in'^Jbl^c use o^on ^^J^^^^ 
 
 vears prior to his apphcation may *f '" f„ P^*\"' ^S'" ides " unless 
 truethereisnorestnot,onastopaceor county sec. «^^^^^^^ 
 
 the same has been mtroduced mto P"°''"„"^ '"^ j^u .hat the public use or
 
 136 THE FIXED LAW OF PATENTS §§ 105-106 
 
 the patentee should not be denied by reason of the fact that he had made 
 use of it or put it on sale abroad for more than two years, provided it were 
 not so used or sold in this country. — Gandv v. Main, 143 U. S. 587 ; 36 
 L. Ed. 272; 12 S. Ct. 598. 
 
 § 105. Publication -— Insufficient. 
 
 A description in an encyclopedia before patent of an improvement claimed 
 to be anticipatory, unsupported by any proof that it was operative, is not 
 sufficient to defeat a patent. — Seymour v. McCormick, 60 U. S. 96 : 15 
 L. Ed. 557. 
 
 It must be admitted that, unless the earlier printed and published de- 
 scription does exhibit the later patented invention in such a full and in- 
 telligible manner as to enable persons skilled in the art to which the in- 
 vention is related to comprehend it without assistance from the patent, 
 or to make it or repeat the process claimed, it is insufficient to invalidate 
 the patent. — Cohn v. U. S. 93 U. S. 366; 23 L. Ed. 907. 
 
 Some of the expressions taken by themselves, seem to foreshadow the 
 Jones idea; but there was nothing in any of these discoveries that filled 
 the requirement of the law (Rev. Stat. sec. 4886) of a description in a publi- 
 cation sufficient to anticipate the patent. — Carnegie v. Cambria, 185 U. S. 
 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 It, therefore, serves no useful purpose to strive to show that the Brush 
 patent was anticipated because some pre-existing scientist has described 
 a battery which corresponds with the general phraseology of the claims, 
 provided their language should be so construed as to include the class of 
 batteries which has been mentioned, a construction which is forbidden by 
 the history of the invention and by a disinterested examination of the patent. 
 — Electric v. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 The description must be such as to show that the article described in the 
 patent can be certainly arrived at by following the description, without 
 the assistance of local prior knowledge or local prior use in the foreign country 
 where the description is published. — Badische v. Kalle, 104 Fed 802- 
 44 C. C. A. 201. ' 
 
 Atlantic i'. Parker, 16 Blatch. 295. 
 
 _ Of all these publications, so far as they contain suggestions which Mouras 
 did not indicate, they are "mere vague and general representations not 
 sufficient to enable those skilled in the art or science to understand the 
 nature and operation of the invention and to carry it into practical use." — 
 Cameron v. Saratoga, 159 Fed. 453; 86 C. C. A. 483. 
 Seymour v. Osborne, 11 Wall. 555. 
 
 § 106. Publication — Sufficient. 
 
 A prior publication which describes a process or machine with sufficient 
 exactness to enable one skilled in the art to employ it is a publication which 
 will anticipate. — Downton v. Yaeger, 108 U. S. 466; 27 L. Ed. 789; 3 S. Ct. 
 
 Seymour v. Osborne, 11 Wall. 516; Cohn v. Corset, 93 U. S. 366. 
 
 The " description in a printed publication " of the statute is to be found 
 within the four corners of such printed pubhcation. — Badische v. Kalle. 
 104Fed. 802; 44C. C. A. 201. '
 
 §§107-108 ANTICIPATION 137 
 
 S 107. Uncontemplated Use or Function. 
 
 The fact that incidentally the process of the patent in suit was performed 
 bv the ace denta operation^o certain substances, which was not understood 
 KS acciden^tal phenomenon gave no hint ^^^^^^^ discoverer of the 
 process in suit will not be regarded. - Tilghman v. Proctor, 102 U. b. .07, 
 26 L. Ed. 279. 
 
 The case is one for the appUcation of the doctrine, well settled in the law 
 of patents that novelty is not negatived by a prior accidental production 
 o the sar^e tiJng%hen the operator does not recognize the rneans by which 
 ?he accXntal rf ult is accor^plished and no knowledge of them or of the 
 rnethod of its employment is derived from it by anyone. - Wickelman .. 
 Dick, 88 Fed. 264; 31 C. C. A. 530. 
 
 Pittsburgh .. Cowles, 55 Fed. 301; Chase . Fillebrown 58 Fed. 377, Topliff 
 V. Topliff, 145 U. S. 161; Tilghman v. Proctor, 102 U. S. 707. 
 
 The essence of the invention was the provision of new means to accom- 
 plilh an w result in a new way by a radical departure f - f ^ P^^fjj^^ 
 TnTViP^P Hrcumstances the fact that the old Gorge pocket of 18/8 might 
 be foiced a oZd to apposition in which it might receive and ho d the promi- 
 nence of the abdomen Ltead of that of the hip bone is immaterial. - Young 
 V. Wolfe, 130 Fed. 891 ; 65 C. C. A. 199. 
 
 We are brought to the argument that these prior constructions do not 
 negative invention because they were not designed to be used for the pur- 
 Dole stated in the patent in siit. In the consideration of this question 
 Te are notunmindf'ul of the rule as stated by this court - ^^'^jkelman . 
 Dick, 88 Fed. 264, 266. See also Boyd v. Cherry, 50 Fed. 2/9, 283, Clougn 
 
 '• B!ilt''order^to%pTy this doctrine to the case at bar, we must not only 
 treat thrde Tee of the prior patent as an accidental construction, but we 
 rst gnoreSe evidenc'e that it was used in the manner contemplated m 
 The patent in suit. - American v. Carter-Crume, 150 Fed. 333, 80 C. C. A. 
 339. 
 
 To assert that Moran's invention (air-locks for caissons) is anticipated 
 bv freLht eleva ors which pass through several stories of a building, the 
 opeiSoneacli floor being closed by two-part doors, is tantamount to as- 
 Sfthat he who solves the problem of aerial navigation will be entitled 
 to no'credit because similar vehicles with the same motive I-^^r h-e *-- 
 eled successfully over the land and through the water. - Rourke v. Mc 
 Mullen, 160 Fed. 933; 88 C. C. A. 115. 
 
 S io8. Miscellaneous Rulings. 
 
 So far as the defense of anticipation is concerned, it must be established 
 as of a dSe antelr to the patentee's invention or discovery; not merely 
 prior to the amplication for, ir the dating of his patent.- Von Schmidt .. 
 Rnwpr? 80 Fed 121 ; 25 C. C. A. 323. 
 
 Woodman ;.'Sdmpson, Fed.t'as. 17,979; Merw. Pat. Inv. sec. 323. 
 
 His lone delay in making application for the patent creates a strong 
 countervaihng presumption, but is reasonably and adequately explained 
 bv the suTrrnding facts and circumstances, and thus explained, ought not to 
 prevail S"^^ the very convincing evidence that has been adduced by the 
 complainants. - Frost v. Cohn, 119 Fed. 50o; 56 C. C. A. 185.
 
 138 
 
 THE FIXED LAW OF PATENTS 
 
 109 
 
 Burdick was the first to make an air brush on the plan of concentric 
 nozzles; and the primary character of his invention is not to be destroyed 
 by references to patents for oil burners. Of course the oil burners cannot be 
 used iu painting pictures. And if the arts are analogous enough to charge 
 Burdick with notice of the concentric nozzles in oil-burners, nevertheless it 
 required invention to adapt the-m to co-operate with other elements, not 
 present in the oil-burners, so as to produce Burdick 's unquestionably new 
 combination. — Wold v. Thayer, 148 Fed. 227; 78 C. C. A. 350. 
 
 APPEALS. 
 
 The Statutes 
 
 Appeals to the Supreme Court §109 
 Appeals to Circuit Court of Appeals 
 §110 
 Assignments of Error 
 
 Sufficiency § 111 
 
 Miscellaneous Rules § 112 
 Certification § 113 
 
 Commissioner of Patents — Actions 
 of § 114 
 
 Cross- Appeals § 115 
 Decrees {see § 301) 
 
 Final — What Constitute § 116 
 
 Interlocutory — Defined § 117 
 
 Interlocutory — What Determined 
 
 on Appeal § 118 
 
 Interlocutory — When Appealable 
 
 § 119 
 
 Interlocutory — Miscellaneous 
 
 Rules § 120 
 
 Stipulation § 121 
 Demurrer — Injunction § 122 {see 
 § 323) 
 Dismissal 
 
 On Motion § 123 
 
 Without Prejudice § 124 
 
 Exceptions 
 
 Master's Report § 125 
 
 Sufficiency § 126 
 
 Waiver § 127 
 Finality § 128 
 Findings § 129 
 Jurisdiction § 130 {see § 713) 
 Law Actions {see § 733) 
 
 What considered on § 131 
 
 Miscellaneous § 132 
 Orders § 133 
 Parties § 134 
 Record 
 
 Encumbering § 135 
 
 Stipulated § 136 
 
 Miscellaneous Rules § 137 
 Rehearings § 138 {see § 868) 
 Remanding § 139 
 Second Appeal § 140 
 Subject-Matter § 141 
 Supersedeas § 142 
 Supreme Court § 143 
 
 Miscellaneous Rules § 144 
 
 See — Comity § 250; Costs § 273; 
 
 Decrees § 301; injunction §§ 535- 
 
 45; Interferences § 583; Jurisdiction 
 
 §713 
 
 § 109. The Statutes — Appeals to the Supreme Court. 
 
 Prior to the Circuit Court of Appeals Act of Mar. 3, 1891, all appeals 
 in patent causes were from the circuit courts directly to the Supreme Court 
 by sec. 690, R. S. By the act of 19 Feb. 1897, the paragraph of said section 
 providing for appeals to the Supreme Court in patent causes was repealed; 
 but the section following (699, R. S.) was not so amended, and consequently, 
 by the first paragraph of sec. 699, an appeal lies directly from the Court 
 of Appeals, D. C, to the Supreme Court. Herein lies the reason why the 
 decisions of the Court of Appeals, D. C, prior to January 1, 1912, were not 
 included in this work as a part of the fixed law. But with the repeal of § 099 
 by the Judicial Code Act, in effect Jan. 1, 1912, this court becomes a court 
 of last resort in patent causes, and its decisions are fixed law from that 
 date. While it might be said that the repeal of § 699, by retroaction, made 
 the previous decisions of the Court of Appeals, D. C. fixed law, it has not 
 been deemed expedient to so regard them in the absence of any authority. 
 
 Appeals may, however, reach the Supreme Court in patent causes by 
 either of the following provisions of the Judicial Code: 
 
 Sec. 239. In any case within its appellate jurisdiction, as defined in sec- 
 tion 128, the circuit court of appeals at any time ma}' certify to the Supreme 
 Court of the United States any questions or propositions of law concerning 
 which it desires the instruction of that court for its i)roper decision; and 
 thereupon the Supreme Court may either give its instruction on the ques- 
 tions and propositions certified to it, which shall be binding upon the cir-
 
 §§ 110-111 APPEALS 139 
 
 cuit court of appeals in such case, or it may require that the whole record 
 and cause be sent up to it for its consideration, and thereupon shall decide 
 the whole matter in controversy in the same manner as if it had been brought 
 there for review by writ of error or appeal. 
 
 Sec. 240. In any case, civil or criminal, in which the judgment or decree 
 of the circuit court of appeals is made final by the provisions of this Title, 
 it shall be competent for the Supreme Court to require by certiorari or 
 otherwise, upon the petition of any party thereto, any such case to be certi- 
 fied to the Supreme Court for its review and determination, with the same 
 power and authority in the case as if it had been carried by appeal or writ 
 of error to the Supreme Court. 
 
 § no. The Statutes — Appeals to Circuit Court of Appeals. 
 
 The Federal Judicial Code is not a repeal or general revision of the Circuit 
 Court of Appeals Act and amendments thereto, but is a continuation of these 
 previous acts except where the change is clearly manifest. The following 
 are without substantial change from the former law. 
 
 Sec. 116. There shall be nine judicial circuits of the United States, con- 
 stituted as follows: 
 
 ************ 
 
 Sec. 117. There shall be in each circuit a circuit court of appeals, which 
 shall consist of three judges, of whom two shaU constitute a quorum, and 
 which shall be a court of record, with appellate jurisdiction, as hereinafter 
 limited and established. 
 
 Sec. 128. The circuit courts of appeals shall exercise appellate jurisdiction 
 to review by appeal or writ of error final decisions in the district courts, in- 
 cluding the United States district court of Hawaii, in all cases other than 
 those in which appeals and writs of error may be taken direct to the Supreme 
 Court, as provided in section two hundred and thirty-eight, unless otherw se 
 provided by law; and except as provided in sections two hundred and thirty- 
 nine and two hundred and forty, the judgments and decrees of the circuit 
 courts of appeals shall be final in all cases in which the jurisdiction is de- 
 pendent entirely upon the opposite parties to the suit or controversy being 
 aliens and citizens of the United States, or citizens of different States; 
 also in all cases arising under the patent laws, under the copyright laws, 
 under the revenue laws, and under the criminal laws, and in admiralty cases. 
 
 When, however, the subject-matter of the appeal is a question of juris- 
 diction, appeal lies directly to the Supreme Court, even when the cause 
 of action arises under the Patent Laws. 
 
 From a final decree of a Circuit or District Court on a question of juris- 
 diction, whether of the cause or of the person, the appeal lies directly to 
 the Supreme Court, and this Court is without jurisdiction to entertain it. 
 — Waterman v. Parker, 107 Fed. 141; 46 C. C. A. 203. 
 
 Shepard i'. Adams, 168 U. S. 618. 
 
 Preliminary injunction appeals have been a most fruitful source of apel- 
 late decision since the passage of the C. C. A, Act. The law has been amended, 
 and the entire subject-matter is so closely related to — and in fact of the 
 very essence of — the right to a preliminary injunction, that such appeals 
 are best considered in connection with Injunctions. 
 
 § III. Assignments of Error — Sufficiency. 
 
 A writ of error covers all questions which arose on the trial. — Hogg v. 
 Emerson, 6 How. 437; 12 L. Ed. 505. 
 
 Note: It is thought that this rule has not always been followed.
 
 140 THE FIXED LAW OF PATENTS §111 
 
 Nothing can be assigned for error which contradicts the record; nor can 
 any appellant be allowed to assign for error the ruling of the court in respect 
 to any defense not set up in his plea or answer. — Bates v. Coe, 98 U. S. 31; 
 25 L. Ed. 68. 
 
 The complainant has filed twenty assignments of error. It is hardly con- 
 ceivable that the court below could have fallen into as many as twenty 
 distinct different errors in passing upon the two questions at issue; and this 
 court will not enter seriatim into an examination of these several assignments, 
 but will treat the matter in a more compendious manner. — Ashton v. Coale, 
 52 Fed. 314; 3 C. C. A. 98. 
 
 Assignments of error ought to be strictly confined to the subject brought 
 before the appellate court, whether on appeal or by writ of error. — Game- 
 well V. Municipal, 61 Fed. 208; 9 C. C. A. 450. 
 
 Error is assignable upon an order or ruling, but not upon the opinion 
 of a court or the reasons given for a ruling. — Russell v. Kern, 69 Fed. 94; 
 16 C. C. A. 154. 
 
 Caverly v. Deere, GG Fed. 305. 
 
 Where counsel for an appellant or plaintiff in error files a brief and makes 
 an oral argument, and does not allude in either to any of his assignments 
 of error, he must be taken to have waived it. — American v. Buckskin, 72 
 Fed. 508; 18 C. C. A. 662. 
 
 The assignments of error are three in number, and are set forth in the 
 statement which precedes this opinion. The first assignment is not dis- 
 tributive or severable as between the five claims. The proposition to which 
 appellants commit themselves is that their construction is not an infringe- 
 ment of any one of the five claims. This court cannot sustain the assign- 
 ment in form and effect as made without declaring that no one of the claims 
 is infringed. So, also, as to the second assignment. The proposition therein 
 put forward by appellants is that neither of the patents is valid. The court 
 cannot sustain this assignment without holding that both are invalid. But 
 two of the claims were infringed, and one of the patents, namely, that num- 
 bered 456,122, is valid. Assuming that the two assignments of error meet 
 the technical rules of this court, — a matter not here decided, since a court 
 of error may, of its own motion, reverse for an error not assigned, — this 
 court must necessarily overrule said assignments. The situation here is 
 plain enough without elaboration. — Standard v. Crane, 76 Fed. 767; 22 
 C. C. A. 549. 
 
 The assignment is predicated, not as it ought to have been, upon the 
 ruling of the court, but upon the reason given for the decision. That, we 
 have more than once declared, is improper and unavailing. — Clark v. Deere, 
 80 Fed. 534; 25 C. C. A. 619. 
 
 Caverly v. Deere, 66 Fed. 305; Russell v. Kern, 69 Fed. 94. 
 
 An assigmnent of error which is predicated upon the opinion of the court, 
 or upon a reason given by the court for its ruling or decree, is not available. 
 It is something done by the court, — a ruling, judgment, order or decree, — 
 and not a reason therefor, which may be assigned as error. A sufficient 
 assignment in this case would have been simply that the court erred in dis- 
 missing the bill. — Evans v. Suess, 83 Fed. 706; 28 C. C. A. 24. 
 
 Caverly v. Deere, 66 Fed. 305; Russell v. Kern, 69 Fed. 94; Clark v. Deere, 
 80 Fed. 534.
 
 §§112-115 APPEALS 141 
 
 s 112 Assignments of Error — Miscellaneous Rules. 
 
 The appellate court reversed the trial court holding that the claims were 
 
 f^f f. lid to be too general. But if this be so, we think the error is plain, 
 ^ A tV.twPmav in the exercise of our discretion, and ought to, notice it. 
 
 adverting to it. — Wessel v. United, 139 Fed. U , a C. U A. 4-o. 
 
 CCA. Rules, 90 Fed. cxlvii; Andrews .. National, 77 Fed. 774; National .. 
 Spiro, 78 Fed. 774. 
 
 The assignment of errors is to be filed in the court below before the court 
 
 was a futile act. - Mast v. Superior, 154 Fed. 45, 83 C. t. A. 157. 
 
 5 113. Certification. ■ , , ^ t • 
 
 ThP circuit court on division certified the single question of fact of m- 
 
 frilgement S That it could not be entertained. - Wilson .. Barnum, 
 
 8 How. 258; 12 L. Ed. 1070. 
 
 It is only a difference on a special point of law which can be di^^^^^^^^^^^ 
 stated that may be certified to this court under sec. 6o2 R. S. - California t. 
 Mohtor, 113 U.S. 609; 28 L.Ed. 1106; oS.Ct. 618. 
 
 Wayman .. Soutiiard, 10 Whe^t. 20; Denm^^^ 
 
 V Cooper, 10 How. 54; Darnels v. R. R. 3 Wall. 250. 
 
 123 U. S. 426; Fire Ins. Assn. v. Wickman, 128 U. b. 4Zb. 
 
 Whpther the supreme court will review a decision of the circuit court of 
 
 37L. Ed. 445; 13 S. Ct. 594. 
 
 S 114 Commissioner of Patents — Actions of. 
 
 of the Interior is conclusive that none is to be implied. Butterwortn 
 Hoe 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25. 
 
 9 b. G. 403; 12 O. G. 475; 13 O. G. 771; 16 O. G. 220. 
 
 S 115. Cross- Appeals. , , ., .4. 
 
 ,bv. nftrin^aVe ^Sa^.x;:x' -4S?l£i 
 
 S a more favorabk decree, he must enter a cross appeal, that when the
 
 142 THE FIXED LAW OF PATENTS § 116 
 
 decree comes before the appellate court he may be heard. For when the 
 decree is affirmed or reversed by the appellate court, it becomes the decree 
 of that court, and cannot be the subject of another appeal. — Corning v. 
 Troy, 15 How. 451; 14 L. Ed. 768. 
 
 That a decree holding certain claims sued on invalid, and certain other 
 claims sued on valid and infringed and ordering an injunction, is not a final 
 decree, and is not appealable by complainant by cross-appeal, see Ex parte 
 National, 201 U. S. 156; 26 S. Ct. 404. 
 
 On an interlocutory decree declaring certain claims void and others 
 valid, the complainant is not entitled to a cross appeal or to the decrees 
 holding certain claims void. — Marden v. Campbell, 67 Fed. 809; 15 C. C. A. 
 ■26. 
 
 Gamewell v. Municipal, 61 Fed. 208. 
 
 That decree allowed an injunction, and for that reason the defendants 
 had a right to review it by appeal, and this court had jurisdiction to con- 
 sider and determine upon that appeal what kind of a decree ought to be 
 rendered. The complainant had no right to maintain a cross-appeal, be- 
 cause no injunction was granted against it, and the decree was not final. — 
 Minnesota v. Dowagiac, 126 Fed. 746; 61 C. C. A. 352. 
 
 Both parties appealed from interlocutory decree, holding one claim 
 valid and another void. Held: Inasmuch as the decree of the circuit court 
 is not final, the only appeal which can be considered is from so much of 
 such decree as grants an injunction. — Kilmer v. Griswold, 67 Fed. 1017; 
 15 C. C. A. 161. 
 
 § ii6. Decrees — Final — What Constitute. 
 
 As it is admitted that the court below has not yet acted upon the man- 
 date of this court, and entered a final decree in pursuance thereof, there is 
 no final decree, from which only an appeal can be taken. — Corning v. Troy, 
 15 How. 451 ; 14 L. Ed. 768. 
 
 The Palmyra 10 Wheat 502; Chace v. Vasquez, 11 Wheat 429. 
 
 In the Federal courts no appeal can, as a general rule, be taken, except 
 from a final decree. — Ex parte National, 201 U. S. 156; 26 S. Ct. 404. 
 Forgay v. Conrad, 6 How. 201; McLish v. Roff, 141 U. S. 661. 
 
 Complainant Brush Co., as co-complainant with hcensee moved to be 
 dismissed as a party. Motion denied. Brush Co., appeals. Held: That the 
 decision below on the question was a final decision in the sense of giving 
 the right of appeal under the act. — Brush v. Electric, 51 Fed. 557 ; 2 C. C. A, 
 373. 
 
 2 Dan. Ch. 1192; Williams v. Morgan, 111 U. S. 689; Forgay v. Conrad, 
 6 How. 203; Bronson v. Railroad, 2 Black. 530; Trust Co. v. Grant, 135 U. S. 
 209; Sharon v. Sharon, 67 Cal. 195; Terry v. Sharon, 131 U. S. 46. 
 
 Although there may be an interlocutory decree declaring certain claims 
 void and others valid^ yet there is only one final decree. It would be con- 
 trary to all well-conceived notions to imagine two final decrees in a patent 
 cause of this character. — Marden v. Campbell, 67 Fed. 809; 15 C. C. A. 26. 
 
 Whatever was before this court by virtue of that appeal, and was dis- 
 posed of, has been finally done, and must be regarded as settled. The cir-
 
 APPEALS ^ 43 
 
 §110 
 
 oiiit court is bound by such decree as the law of the case and must carry 
 'tnto execution according to the mandate. The decree of this cour upon 
 any r^atter within its jurisdiction can neither be modified reversed, enlarged 
 nor rspend^d by circuit court; nor can any other or less or greater relief 
 be accorded than that prescribed by its decree and mandate. Any matter 
 undecided and left open by the mandate the court below may hear and 
 decide and its decree in relation to such new matters can be examined here 
 onlv uDon a new appeal. That the decree and mandate of this court have 
 precise?' the sTme^finality as was attached to the. decree and mandates 
 Ke supreme court, befor^ the estabhshment of the circuit courts of appeal 
 is too obvious for elaboration. - BisseU v. Goshen, 72 Fed. 545, 19 t. L. A. 
 
 25. 
 
 The iniunction decree appealed from was not a mere prehminary injunc- 
 tion granted n the exercise of the discretion of the circuit court The case 
 had bee fully prepared by both parties. It came on regularly to be hea d 
 ofthe merits and was so heard. The court was obliged to decide and did 
 dec de tTat the complainant's patent was vaUd and infringed. Upon this 
 basis the court awarded, as it was bound to do, a perpetual injunction and 
 an accounting. Under the rule of the supreme court as to an appealable 
 finardecree this was not one, although the merits had been determined and 
 nothing rerAained to be done except to ascertain the damages. - BisseU .. 
 Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 Ft^rffav V Conrad 6 How. 204; Barnard v. Gibson, 7 How. 656; Humiston v. 
 sISvp2wl\L106-, Railroad .. Swasey, 23 Wall. 405; Bronson ^. Railroad, 
 2 mack 528; Bostwick .. Brinkerhoff, 106 U. S. 3; Grant y Ins. Co^ 106 U.S 
 429 Parsons v. Robinson, 122 U. S. 112; St. Louis .. Southern, 108 U. S_ 24 
 Iroii Co. V. Martin, 132 U. S. 91; McGourkey v. Railway, 146 U. S. 536, Llder 
 V. McClaskey, 70 Fed. 557. 
 
 A decree on the merits sustaining infringement (without injunction) 
 is not a final decree for the purpose of an appeal. - Lockwood v. Wickes, 
 75 Fed. 118; 21 C. C. A. 257. 
 
 Perkins v Tourniquet, 6 How. 206; Barnard v. Gibson, 7 How. 650; Humis- 
 ton .Sinthorp 2 Wall- 106; Crawford .. Points, 13 How. 11; Iron v. Martin, 
 132 U. S. 91. 
 
 One portion of a given decree may be final, and for that reason reviewable 
 on appeal, while th'e remamder may be intedocutory^^^^^ reason 
 
 not appealable. - Standard v. Crane, 76 Fed. ^67, 22 C. C. A. 549. 
 
 Forgavt. Conrad, 6 How. 202; Iron Co. t-. Meeker 109 US. 180; McFarland 
 V HaU n Tex. 69i; Malone v. Marriott, 64 Ala. 486; Williamson v. Field, 2 
 Barb. Ch. 281; Dickerson v. Codwise, 11 Paige, 189. 
 
 A decree finding title, infringement and awarding an injunction and ac- 
 countingTs not an intei'locutory decree and is not appealable under sec. 7 
 but is a final decree and is appealable under sec. 6. - Standard v. Crane, 76 
 Fed. 767; 22 C. C. A. 549. 
 
 Disapproving^ Robbins, 52 Fed. 337; s. c. 
 
 64^F"f 384;''Schmond f.ltwfod,^Ved. 10; Green .. Mills, 69 Fed. 852. 
 
 That after a case has been to the master and determined, and the final 
 decree corrected and determined on appeal, the appellate _ court will not 
 
 entertain a second appeal on e^ddence ^Jf ^^1/%? c'^'i^ts"'' 
 status of the case, see Tuttle v. Clafflm, 82 Fed. 744; 27 C. C. A. 255.
 
 144 THE FIXED LAW OF PATENTS §§ 117-118 
 
 It is further contended, that as the decree finally disposes of the first 
 claim of the patent, an appeal would he independently of the statute. But 
 as that part of the decree did not finally dispose of the whole case, which 
 was retained for the purpose of an accounting upon the claims held valid, 
 the right to appeal from the dismissal of the bill as to the first claim, would 
 be suspended until the final decree. — Western v. Williams-Abbott, 108 Fed. 
 952; 48 C. C. A. 159. 
 
 Harden v. Printing Press, 67 Fed. 809. 
 
 As the case below passed off on demurrer, no testimony having been 
 heard, we are at liberty to consider only the allegations of the bill and the 
 specification and claim of the patent. We are at liberty, however, to ex- 
 amine the patent in the light of that common knowledge of facts and prin- 
 ciples which is possessed by all persons of average inteUigence. — Mahler v. 
 Animarium, 111 Fed. 530; 49 C. C. A. 431. 
 
 Brown v. Piper, 91 U. S. 37; Richards v. Elevator, 158 U. S. 299; Engraving 
 V. Hoke, 30 Fed. 444. 
 
 § 117. Decrees — Interlocutory — Defined. 
 
 A decree sustaining a patent, awarding an injunction and ordering an 
 accounting, is an interlocutory decree and is appealable under the act of 
 1891. — Jones v. Munger, 50 Fed. 785; 1 C. C. A. 668. 
 
 Iron Co. V. Martin, 132 U. S. 91; Daniell Ch. Pr. 5 ed. 986-1019; Richmond 
 V. Atwood, 48 Fed. 910. 
 
 The " interlocutory order or decree " made appealable by amended 
 section 7 must be one wherein the court grants, contiiuies, refuses, dissolves, 
 or refuses to dissolve an injunction. The state of the record or progress 
 of the cause must be such, when said appealable " interlocutory order or 
 decree " is entered, that a " final decree " upon the matter with which said 
 " interlocutory order or decree " has to do may yet be made. The contrast 
 suggested by the words " interlocutory order or decree " and " final decree " 
 as used in the first paragraph of amended section 7, is between a decree which 
 is preliminary to a hearing on the merits, and hence discretionary in the 
 court, and one which follows a hearing on the merits, and is hence final, 
 conclusive, and as of right in the prevailing party; between a decree which 
 is meant to preserve the subject-matter of the litigation, or prevent irrepa- 
 rable injury, till a hearing on the merits can be had, and a decree which 
 follows the hearing on the merits, and ultimately determines the rights of 
 the litigants. The " interlocutory order or decree " made appealable by 
 amended section 7 must be one which leaves the cause pending on the issues 
 in the court of original jurisdiction. — Standard v. Crane, 76 Fed. 767; 22 
 C. C. A. 549. 
 
 § 118. Decrees — Interlocutory — What Determined on Appeal. 
 
 Appeals from orders are not to be confounded with appeals from final 
 decrees, and the rule stated (as to the force and effect to be given a prior 
 adjudication) will not prevent our review of the adjudication itself, when- 
 ever it and the record upon which it was made, shall be presented upon 
 appeal. The tendency of any different rule would be to produce confusion, 
 and convert the review of the interlocutory order into a review of the final 
 adjudication upon which it was founded. — American v. National, 51 Fed. 
 229; 2C. C. A. 165. 
 
 The record before us is complete. Everything is here for our considera- 
 tion which was before the court below. We must go to the full merits, as 
 shown by the record, in order to determine whether t he interlocutory decree
 
 § 118 APPEALS 145 
 
 for a perpetual injunction is founded in error, and, if we determine the prop- 
 erty right adversely to the complainant the injunction should be dissolved; 
 and no sufficient reason has been suggested why the accounting, — to which 
 the complainant is not entitled, and, which would be an evasion of a right, 
 and therefore, inequitable and improper, under our view of the case — 
 should proceed. — Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 While an appellate court interferes reluctantly with discretionary in- 
 junctions, on an appeal from an interlocutory decree for a perpetual in- 
 junction and an accounting, upon a complete record the court will decide the 
 appeal upon its merits without waiting for an accounting. — Richmond v. 
 Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 As to what the court will consider on appeal from an interlocutory order, 
 see note in Consolidated v. Pacific, 53 Fed. 385; 3 C. C. A. 570. 
 
 The case came here on appeal from an interlocutory decree granting an 
 injunction but was heard as well on the merits. The court had jurisdiction 
 to review the case on its merits. — Consolidated v. Pacific, 58 Fed. 226 ; 7 
 C. C. A. 195. 
 
 Iron Works v. Smith, (no opinion filed.) 
 
 It is a rule of equitable convenience that when the whole record touching 
 the decree so far as it supports the injunction comes up before the court of 
 appeals, or can come there, so that the court has before it everything in this 
 respect which the circuit court had or which the court of appeals would 
 have on an appeal from a final decree, the court will go fully into the merits 
 of the appeal. — Marden v. Campbell, 67 Fed. 809; 15 C. C. A. 26. 
 
 Richmond v. Atwood, 52 Fed. 10. 
 
 Inasmuch as the hearing of the merits of the bill, answer, and proofs, 
 and the whole record is before us, we are able to dispose finally of the case 
 in accordance with what is now the settled rule of practice. — Crosby v. 
 Ashton, 94 Fed. 516 ; 36 C. C. A. 335. 
 
 The appeal being from an interlocutory decree, it was attempted to dis- 
 pose of the issue on the ground that no recovery could be had because com- 
 plainant had failed to mark its articles patented. Held: the decree below 
 not having as yet become final, the appeal brings before this court for review 
 only so much of the decree as awarded an injunction. — Metallic v. Brown 
 104 Fed. 345; 43 C. C. A. 568. 
 
 Several issues of fact are raised by the pleadings, a consideration of which 
 at this time would tend to embarrass the trial court in the consideration 
 of the case on the final hearing, and this court, should the case be again 
 brought here by appeal. The cause is not in condition to be heard as to 
 these matters now, and it must be understood that what is said is upon the 
 record as now before this court, and not as to the merits as they may be 
 hereafter presented. — American v. Phoenix, 113 Fed. 629; 51 C. C. A. 339. 
 
 Loew V. Filter Co. 107 Fed. 9.50. 
 
 In addition to a defense of the novelty of the claims of the patent, the ap- 
 pellees contend that, inasmuch as this is only an appeal from an order allowing 
 an injunction pendente lite, this court may not consider any other question 
 than whether the court below has abused its legal discretion in allowing the 
 injunction, all other defenses being postponed until a final hearing. (After 
 holding the contrary, citing Knoxville v. Africa, 77 Fed. 501 ; Mast 'v. Stover 
 177 U. S. 485 ; Smith v. Vulcan, 165 U. S. 518 ; Bissell v. Goshen, 72 Fed. 545 ; 
 Watch V. Robbms, 52 Fed. 337; Blount v. Societe, 53 Fed. 98; Duplex v. 
 Campbell, 69 Fed. 250 the court added): But it must be conceded that upon
 
 146 THE FIXED LAW OF PATENTS §§ 119-122 
 
 such an appeal the case against the patent must be a very plain one before the 
 court would be justified in holding it void for want of novelty upon its face, 
 or in reaching the same result upon a contested question of anticipation aris- 
 ing upon prior patents and their exemplification by ex parte affi avits of 
 patent experts. — Co-operating v. Hallock, 128 Fed. 596; 64 C. C. A. 104. 
 Milner v. Yesbera, 111 Fed. 386; Higgins v. Soberer, 100 Fed. 459. 
 
 § 1 19. Decrees — Interlocutory — When Appealable. 
 
 The decree appealed from is one dissolving pro tanto the perpetual in- 
 junction heretofore in force, and is an appealable interlocutory order or 
 decree, within the act of Peb. 18, 1895, which amends sec. 7 of Mar. 3, 1891, 
 so as to allow appeals from interlocutory orders or decrees dissolving in- 
 junctions. — Bissell V. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 Note: Not appealable under later amendment to the statute. 
 
 § 120. Decrees — Interlocutory — Miscellaneous Rules. 
 
 It is equally clear that congress intended, by allowing an appeal from an 
 interlocutory decree, to allow an appeal from a perpetual injunction ordered, 
 and allowed upon a final hearing of the merits, where the same decree refers 
 the cause to a master for an accounting. — Bissell v. Goshen, 72 Fed. 545 • 
 19 C. C. A. 25. 
 
 Richmond v. Atwood, 52 Fed. 10; Dudley v. Hunger, 50 Fed. 785; Marden v 
 Mfg. Co. 67 Fed. 809; Mfg. Co. v. Griswold, 67 Fed. 1017; American v. National' 
 51 Fed. 229; Curtis v. Wheel Co. 58 Fed. 784; Consolidated v. Accumulator, 
 55 Fed. 485; Blount v. Societe, 53 Fed. 98; Watch Co. v. Robbins, 52 Fed. 337; 
 Industrial v. Electric, 58 Fed. 732; Consolidated v. Pacific, 58 Fed. 226- Andrews 
 V. Pipe, 61 Fed. 782. 
 
 We conclude that the question whether a complainant should be per- 
 mitted, in a given case, to waive his right to an injunction and thereby 
 postpone the right of appeal until the decree becomes in all respects final, 
 is one which may be safely remitted to the discretion of the trial court. — 
 Lockwood V. Wicks, 75 Fed. 118; 21 C. C. A. 257. 
 Following, 
 
 Richmond v. Atwood, 52 Fed. 10; Jones v. Hunger, 50 Fed. 785. 
 
 The interlocutory decree held one of the claims of the patent valid and 
 infringed, and the other claims invalid or not infringed, and the complainant 
 appealed from so much thereof as related to the claims which were adjudged 
 invalid or not infringed. Thereupon the respondent below, now the appellee, 
 filed a motion to dismiss on the ground that the appeal was premature. 
 The respondent below took an appeal from so much of the interlocutory 
 decree as adjudged one of the claims valid and infringed. The motion to 
 dismiss this appeal must be allowed on the authority of our decision in 
 Marden v. Campbell, 67 Fed. 809; and also Ex parte National EnameUng, 
 201 U. S. 156. — Library v. Yawman, 147 Fed. 245; 77 C. C. A. 387. 
 
 §121. Decrees — Stipulation. 
 
 A stipulation has been agreed upon between the parties that a decree 
 might be entered in this case in conformity with and upon the filing of a 
 decree in another suit between the same parties. Held: The court below 
 having entered a decree conformable to that stipulation, the appellants 
 cannot maintain an assignment of error. — McCafferty v. Celluloid, 104 Fed. 
 305; 43 C. C. A. 540. 
 
 Railroad v. Ketchum, 101 U. S. 289. 
 
 § 1 22. Demurrer — Injunction. 
 
 Complainants, although they were prepared to go on with the motion they 
 had made (for a preliminary injunction) were subjected on appeal to the same
 
 §§ 123-124 APPEALS 147 
 
 consequences as if the preliminary hearing had been a final one. If complain- 
 ants in every case must understand that a motion for preliminary injunction 
 requires the same showing as on final hearing, very few motions of that sort 
 would be made. We think the case comes within the exceptions pointed out 
 in Mast v. Stover, 177 U. S. 485, and are impressed with the conviction that 
 complainants have not had their day in court, and that it ought to be accorded 
 them. — Brill v. Peckham, 189 U. S. 57; 47 L. Ed. 706; 23 S. Ct. 562. 
 
 § 123. Dismissal — On Motion. 
 
 An appellant cannot as of right dismiss his own appeal. U. S. v. Minn. 18 
 How. 241 ; That ordinarily, on a dismissal on his own motion, the appellant 
 is not entitled to an order expressed without prejudice, follows from what is 
 said in the case cited at page 242, that usually the court will not allow such 
 a dismissal if the appellant intends at some future time to bring another 
 appeal. How very cautious the Supreme Court usually is to shut out pre- 
 sumptions of anv qualification in connection with such orders appears from 
 U. S. V. Griffith," 141 U. S. 212. 
 
 Where, after a hearing, r. cause is disposed of by the court on appeal, 
 for some reason not touching the merits, it is now well settled that the 
 judgment should usually show that it is without prejudice. So, on his own 
 motion k) dismiss, an appellant may sometimes show inadvertence or mis- 
 take or some other special reason which may entitle him to equitable con- 
 sideration and a special order. But we have no suggestion of any such 
 exceptional matter here. We have no judicial knowledge of anything except 
 what we have stated, and that there has been no hearing by us on the merits. 
 Whether, under our expressions in Gamewell Fire-Alarm Telegraph Co. v. 
 Municipal Signal Co. 61 Fed. 208 and in Marden v. Mfg. Co. 67 Fed. 809, 
 the appellant is not, in any event, sure of all he desires to reserve, is for him 
 to consider. As he moves to dismiss his appeal of his own volition, we have 
 no occasion whatever to aid him, under the circumstances of the case, either 
 by any special order, or by any expressions of opinion. — Donallan v. 
 Tamage Patent, 79 Fed. 585; 24 C. C. A. 647. 
 
 § 124. Dismissal — Without Prejudice. 
 
 The Supreme Court has show^n a growing tendency to approve the prac- 
 tice of making it clear that a dismissal is without prejudice, or without a 
 hearing on the merits, where there has been no such hearing. — Greene v. 
 United, 124 Fed. 961 ; 60 C. C. A. 93. 
 
 Manifestly, whether the court below erred or did not err in entering a cer- 
 tain decree is a question to be presented upon review of such decree. It has 
 nothing to do with a motion to dismiss appeal from such decree. The facts 
 and circumstances which make the appeal effective or not all arise subsequent 
 to the entry of the decree. — Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669. 
 
 We are not able to see that the court below violated any rule of equity prac- 
 tice, or abused its legal discretion, in making the decree here complained of. 
 No testimony had been taken in the case, and there had been no hearing 
 or decree upon the merits. The hearing of the motion for a preliminary 
 injunction upon opposing ex parte affidavits and the denial of the motion 
 did not bar the dismissal of the bill by permission of the court in the exer- 
 cise of its sound discretion. Nor was leave to dismiss precluded because the 
 defendant was called on to answer the bill under oath, and did so. The 
 appellant, we think, was deprived of no substanti-il right by the dismissal. 
 We cannot agree that future litigation thus made possible amounted to 
 legal prejudice. — Penn v. Columbia, 132 Fed. 808; 66 C. C. A. 127.
 
 148 THE FIXED LAW OF PATENTS §§ 125-129 
 
 §125. Exceptions — Master's Report. 
 
 It is too late to raise exceptions here upon ruling of master on damages. 
 
 — Kinsman v. Parkhurst, 59 U. S. 289; 15 L. Ed. 385. 
 
 Exceptions to a master's report raised for the first time in the Supreme 
 Court will not be entertained. — Topliff v. Topliff, 145 U. S. 156; 36 L. Ed. 
 658; 12 S. Ct. 825. 
 
 McMicken v. Perin, 59 U. S. 507. 
 
 §126. Exceptions — Sufficiency. 
 
 An appeal lies only upon a bill of exceptions, certified, allowed and signed 
 by the judge which constitutes a writ of error. — Phoenix v. Lanier, 95 U. S. 
 171; 24 L. Ed. 383. 
 
 Pomeroy v. Bk. 1 Wall. 592. 
 
 As no exception appears to have been taken thereto these findings must 
 be accepted as conclusive. — Kirk v. U. S. 163 U. S. 49; 41 L. Ed. 66; 
 16 S. Ct. 911. 
 
 That exceptions under rule 11 must be definite, clear and specific, and not 
 vague and general — see Mast v. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 §127. Exceptions — Waiver. 
 
 When a party excepts to a ruling upon the trial but does not stand upon 
 such exception, and elects to proceed, he thereby waives his exception. — 
 Campbell v. Haverhill, 155 U. S. 610; 39 L. Ed. 280; 15 S. Ct. 217. 
 
 § 128. Finality. 
 
 It seems to us that the opinions and decrees of this, as a court of appellate 
 jurisdiction, are final and conclusive upon every point actually decided, 
 and that it is the clear duty of the lower court to give effect to the decree 
 here rendered. — Bissell v. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 Sibbald v. U. S. 12 Pet. 488; Stewart v. Solomon, 97 U. S. 361; RIetcalf v. 
 City, 68 Fed. 859; Sanford, Petitioner, 160 U. S. 247; 16 Sup. Ct. 291; Southard 
 V. Russell, 16 How. 547; Durant v. Essex, 101 U. S. 555; Kingsbury v. Buckner, 
 134 U. S. 650; Smelting v. BUlings, 150 U. S. 31; Gaines v. Rugg, 148 U. S. 228. 
 
 Whatever was before the court, and is disposed of, is considered as finally 
 settled. The inferior court is bound by the decree as the law of the case. 
 
 — In re Gamewell, 73 Fed. 908; 20 C. C. A. 111. 
 
 Sibbald v. U. S. 12 Pet. 488; Gaines v. Rugg, 148 I^. S. 228; In re Sanford, 
 160 U. S. 247; Southard v. Russell, 16 How. 547. 
 
 § 129. Findings. 
 
 The lower courts found that the invention was a broad one, and that the 
 machine used by the Continental Company was an infringement. And these 
 were questions of fact upon which, both of the courts concurring, their 
 findings will not be disturbed unless clearly wrong. — Continental v. Eastern, 
 210 U. S. 405; 51 L. Ed. 922; 28 S. Ct. 748. 
 
 Deslions v. LaCompagnie, 210 U. S. 95. 
 
 An appeal in a case tried before a judge without a jury (under sec. 649 R. S.) 
 taken upon the findings of fact, can present no other question on appeal. — • 
 Klein v. Seattle, 77 Fed. 200; 23 C. C. A. 114. 
 
 Trust Co. V. Wood, 60 Fed. 346; Blanchard v. Bank, 75 Fed. 249; Gravson 
 V. Lynch, 163 U. S. 468.
 
 130-131 
 
 APPEALS 149 
 
 Again, the court below has considered this question in the Hght of the state 
 of the art, and of the confiicting testimony of the witnesses, and has decided 
 that Seeley's combination was an invention. This conclusion is presump- 
 tively correct, and ought not to be reversed unless an obvious error has 
 intervened in the application of the law, or some serious mistake has been 
 made in the consideration of the facts by the circuit court. — Kinloch v. 
 Western, 113 Fed. 659; 51 C. C. A. 369. 
 
 National v. Interchangeable, 106 Fed. 693; Mann v. Bank, 86 Fed. 51; Tilgh- 
 man v Proctor, 125 U. S. 136; Kimberly v. Arms, 129 U. S. 512; Furrer v. 
 Ferris, 145 U S. 132; Warren v. Burt, 5S Fed. 101; Plow v. Carson, 72 Fed. 387; 
 Trust Co. V. McClure, 78 Fed. 209; Exploration v. Adams, 104 Fed. 404. 
 
 These findings of fact by the court below (that neither an express contract 
 nor a presumption that such contract existed had been provedj must receive 
 the respect and consideration to which such findings are always entitled in 
 a reviewing court. They are prima facie conclusive, and nothing but a 
 showing that the preponderance of evidence is clearly and unmistakably 
 against them, would justify this court in reversing them. — Pressed Steel v. 
 Hansen, 137 Fed. 403; 71 C. C. A. 207. 
 
 § 130. Jurisdiction. 
 
 Neither can the allowance of the writ by the circuit court give jurisdiction, 
 where the only question is the amount of costs to be taxed ; and the amount 
 allowed is less than $2000. The discretionary power in this respect vested 
 in the circuit court by the Act of July 4, 1836, sec. 17, is evidently confined 
 to cases which involve the construction of the patent laws, and the claims 
 and rights of the patentees under them. But the amount of costs which 
 either party shall be entitled to recover is not regulated by these laws. The 
 costs claimed are allowed or refused in controversies arising under the 
 Patent Acts upon the same principle and by the same laws which govern 
 the court in the taxation of costs in any other case that may ccrme before 
 it. The same laws, therefore, must be applied to them in relation to the 
 writ of error, and must limit the jurisdiction of this court as in other cases. 
 — Sizer v. Many, 16 How. 98; 14 L. Ed. 861. 
 
 The sum taxed being less than $2000, no writ of error will lie under the 
 Act of 1789. This Act gives no jurisdiction to this court over the judgment 
 of a circuit court, when the judgment is for less than that sum. — Sizer v. 
 Many, 16 How. 98; 14 L. Ed. 861. 
 
 A decree sustaining the validity of a patent, awarding injunction and 
 an accounting is an interlocutory decree ; and upon appeal from such decree 
 the court will not pass upon the merits of the case as from a final decree. — 
 Columbus V. Robbins. 52 Fed. 337; 3 C. C. A. 103. 
 
 (Overruled in Bissell v. Goshen, 72 Fed. 545.) See 148 U. S. 266. 
 
 E^iShSonT'v. Atwood. 48 Fed. 910; Jones v. Munger, 50 Fed. 785; Barnard 
 r. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106; Iron (.0 i'- Martin, 
 132 U. S. 91; Tourniquet v. Perkins, 16 How. 84; Be^be v. Russell 19 How. 
 283; Craighead v. Wilson, 18 How. 199; Farrelly v. AVoodfolk, 19 How. 288; 
 Green v. Fisk, 103 U. S. 518. 
 
 § 131. Law Actions — What Considered on. 
 
 In a suit at law where evidence was taken and the question of infringement 
 was determined, this court will not review the evidence as if it were a suit 
 in equitv. - St. Paul v. Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803.
 
 150 THE FIXED LAW OF PATENTS § 133 
 
 Since the adoption of the seventh amendment to the Constitution, declaring 
 that no fact tried by a jury shall be otherwise re-examined by any court of 
 the United States than according to the rules of the common law, the Supreme 
 Court has repeatedly affirmed the doctrine that upon writ of error the Federal 
 courts are confined to the consideration of exceptions to the evidence and to 
 the instructions given or refused to the jury, and that they have no concern 
 with questions of fact, or the weight to be given to the evidence which was 
 properly admitted. — Singer v. Brill, 54 Fed. 380; 4 C. C. A. 374. 
 
 Parsons v. Bedford, 3 Pet. 436; Barreda v. Silsbee, 21 How. 107; Railroad v. 
 Fraloff, 100 U. S. 31; Ins. Co. v. Ward, 140 U. S. 91. 
 
 It is impossible for us to say that the jury disregarded the instructions. 
 There is nothing in the bill of exceptions to show that they did. The pre- 
 sumption is, on the other hand, that they strictly observed it. — Harper v. 
 Wilgus, 56 Fed. 587; 6 C. C. A. 45. 
 
 The only recognized exception to the statutory rule which in common law 
 cases tried without a jury limits the review, on writ of error, to " rulings of 
 the court in the progress of the trial " and to the question " of the sufficiency 
 of the facts found to support the judgment," is that _" a party may insist 
 upon a finding in his favor on the ground that there is a total lack of evi- 
 dence to support a contrary finding, or, if he have the burden of the issue, 
 on the ground that the e\ndence in his favor is inadequate, unimpeached, 
 and without conflict or uncertainty." But, to raise such a question as one 
 of law, the exception or motion must be specific to that effect, distinguishing 
 it from a question of the weight of evidence. — Keene v. Barratt, 100 Fed. 
 590; 40 CCA. 571. 
 
 Exposition v. Republic, 96 Fed. 687; Martinton v. Fairbanlcs, 112 U. S. 670. 
 
 Where the parties consent that the case be tried before a judge or referee, 
 the only question presented by the writ of error is whether there is any error 
 of law in the judgment upon the facts as found by the judge or referee. The 
 court's findings upon questions of fact are not subject to review in the 
 appellate court if there is any legal evidence upon which such findings 
 could be made. — American v. BuUivant, 117 Fed. 255; 54 C C A. 287. 
 
 U S V Dawson, 101 U. S. 569; Boogher v. Insurance Co. 103 U. S. 90; Miles 
 i; IJ S 103 U. S. 304; Paine v. Railroad, 118 l^. S. 152; Stanley v. Board, 121 
 U S 535; Hathaway v. Bank, 134 IT. S. 494; Rogers v. U. S. 141 U. S. 548; 
 7 Enc. PI. & Prac. 847-8; Myers v. Brown, 102 Fed. 250. 
 
 § 132. Law Actions — Miscellaneous. 
 
 For a general statement as to requirements as to exceptions and as to 
 briefs in the first circuit, see National v. Leland, 94 Fed. 502; 37 C C A. 372. 
 
 It is the rule that, if the bill of exceptions does not contain all of the 
 evidence, the question whether a general verdict or finding of the lower court 
 was supported by the evidence, will not be considered. — Leslie v. Standard, 
 98 Fed. 827; 39 C C A. 314. 
 
 It must always be presumed in such a case, that any defect in the eia- 
 dence presented would be removed by a full statement, but, while every 
 presumption must be indulged in favor of the judgment, it should be a 
 reasonable presumption, not inconsistent with what is shown in the record; 
 and when a finding has been directed in favor of the defendant in a case, 
 and the bill of exceptions, though not purporting to contain all of the evi- 
 dence, contains a statement of evidence in behalf of the plaintiff, sufficient
 
 §§ 133-135 APPEALS 151 
 
 on every issue to have justified a verdict in his favor, the rule manifestly 
 ought not to apply, especially if it be apparent that the action of the court 
 was the result of a misapprehension of the bearing of the proof adduced. — • 
 Leslie v. Standard, 98 Fed. 827; 39 C. C. A. 314. 
 
 § 133. Orders. 
 
 Orders relating to the conduct of a trial and to amendments adjusting 
 the parties to a controversy are generally treated as orders made in the 
 exercise of discretion, and not subject to exception and review. In an 
 equity case, however, where the appeal brings up questions of law and 01 
 fact, the court of review may doubtless examine to see whether the case, 
 as presented, is, either upon the law, the facts, or the pleadings, an inequi- 
 table case; and if, for any reason, it so appears, relief may and should be 
 withheld. — ConsoUdated v. West End, 85 Fed. 662; 29 C. C. A. 386. 
 
 We cannot review the order of the court below refusing to stay the taxa- 
 tion of costs, or in fixing the amount of the bond to be given on appeal. 
 The order is not reviewable, unless upon an appeal from the final decree. — ■ 
 Crown V. Baltimore, 136 Fed. 184; 69 C. C. A. 519. 
 
 Martin v. Hazard, 93 U. S. 302. 
 
 § 134. Parties to. 
 
 The law gives the party aggrieved an appeal from a final decree of an 
 inferior court. But it does not give the party who is not aggrieved an appeal 
 from a decree in his favor, because the judge has given no reasons, or recited 
 insufficient ones for a judgment admitted by the appellant to be correct. — 
 Corning v. Troy, 15 How. 451; 14 L. Ed. 768. 
 
 All the parties against whom a joint judgment or decree is rendered, must 
 unite in the writ of error or appeal, or it will be dismissed, unless there has 
 been a summons and severance, or some like proceeding, or sufficient cause is 
 shown for the non-joinder. — Hedges v. Seibert, 50 Fed. 643; 1 C. C. A. 594. 
 
 Masterson v. Herndon, 10 Wall. 416; Feibelman v. Packard, 108 U. S. 15; 
 Estis V. Trabue, 128 FJ. S. 225. 
 
 As a patentee may be joined as a co-complainant against his consent 
 originally, no good reason is perceived why he may not be so retained for 
 the prosecution of the rights of his licensee, after judgment once rendered, 
 and the cause remanded for further proceedings. The patentee may be 
 content with a decree against him ; but when his co-complainant is not, and 
 has the right of appeal, the doctrine of summons and service may be invoked, 
 and upon the refusal of the patentee to join in the appeal after being duly 
 notified to do so, the appeal of his licensee may be allowed upon the entry 
 of such refusal of record, the judgment remaining conclusive as to the party 
 refusing. — Excelsior v. City of Seattle, 117 Fed. 140; 55 C. C. A. 156. 
 
 Masterson v. Herndon, 10 Wall. 416; Fost. Fed. Prac. sec. 505. 
 
 § 135. Record — Encumbering. 
 
 The record contains embodied in the bill of exceptions, the whole of the 
 testimony and evidence offered at the trial by each party in support of the 
 issue. It is very voluminous, and as no exception was taken to its compe- 
 tency or sufficiency either generally or for a particular purpose, it is not 
 properly before this court for consideration, and forms an expensive and 
 unnecessary burden upon the record. This court has had occasion in many 
 cases to express its regret on account of irregular proceedings of this nature. 
 -Pennock v. Dialogue, 2 Pet. 1; 7 L. Ed."327.
 
 152 THE FIXED LAW OF PATENTS §§ 136-137 
 
 Where appellee needlessly encumbers record with some 50 immaterial 
 patents, imder Rule 10 half of the costs of printing will be assessed upon 
 appellee. — B. & S. Fastener v. Kraetzer, 150 U. S. Ill- 37 L Ed 1019- 
 14 S. Ct. 48. ' • • , 
 
 We deem it proper to say that in view of the size which oftentimes in 
 patent cases the zeal of counsel and the ingenuity of experts unduly swell 
 the records and briefs, so called (in this case the record contained 2 '>00 
 pages and one of the briefs 484 pages), it is not to be expected that courts 
 and especially appellate ones, will follow the lead thus set and discuss every 
 question raised. — Goss v. Scott, 110 Fed. 402; 49 C. C. A. 97. 
 
 §136. Record — Stipulated. 
 
 An appeal is good taken upon a judgment rendered upon an agreed state- 
 ment of facts. — Stimpson v. Railroad, 10 How, 329; 13 L. Ed. 441. 
 3 Blackstone, 377; Stephens Plead. 92; U. S. v. Ehason, 16 Pet. 291. 
 
 As the parties to this suit have stipulated as to what the record is in this 
 suit, and the clerk of the circuit court certifies the transcript, it must be 
 accepted as sufficient for the purposes of this suit. — Lake Shore v. National. 
 110 U. S. 229; 28 L. Ed. 129; 4 S. Ct. 33. 
 
 The proper course of the clerk was for him to observe the agreement 
 of counsel, and leave the parties to abide the consequences. The endeavor 
 of counsel to eliminate matter which has been found to be superfluous and 
 unnecessary to a review in the appellate court is one to be encouraged. — 
 Lamb v. Lamb, 120 Fed. 267; 56 C. C. A. 247. 
 
 The jurisdiction of this court is appellate only. Its review in law or 
 equity is limited to the record of matters which were before the trial court, 
 and cannot be enlarged or affected by subsequent stipulations betw^een the 
 parties. — Austin v. American, 121 Fed. 76; 57 C. C. A. 330. 
 
 Maxwell Land-Grant Case, 122 U. S. 365; Randolph v. Allen, 73 Fed. 23; Case 
 
 § 137. Record — Miscellaneous Rules. 
 
 The Peck patent, which is printed in the record, cannot be considered 
 by the court, for the reason that it was not set up in the answer, and was first 
 mtroduced as evidence in the court below in support of a motion for rehear- 
 ing and to reopen the case, which was denied. — Andrews v. Thum. 67 Fed. 
 911; 15 C. C. A. 67. 
 
 Apart from any authority, it would seem that on principle the decision 
 of this court upon a defective presentation of the case should not be con- 
 clusive of it in all respects. An amended bill is a continuation of the original 
 bill, and forms a part of it. The original and amended bills constitute one 
 pleading and one record. It is clear that at the time these parties were 
 heard in this court upon the original bill the controversy between them was 
 no longer presented by the original bill, but was contained in a record made 
 up of the original bill and the amended and supplemental bills. So the dis- 
 missal of the original bill did not work a dismissal of the controversy. — 
 Berliner v. Gramophone, 113 Fed. 750; 51 C. C A. 440. 
 
 1 Dan. Ch. PI. & Pr. 402, c. 6. sec. 7; French v. Hay, 22 WaU. 246; Phosphate 
 Co. V. Brown, 74 Fed. 323; Miller v. Mclntyre, 6 Pet. 62. 
 
 The court finds itself unable, upon the transcript from the court below, 
 to determine with any degree of certainty the rights of the parties to this
 
 §§ 138-140 APPEALS 153 
 
 litigation. Ordered that the decree of the court below be set aside, and the 
 case remanded, with direction to remand the rules with leave to both par- 
 ties to take such additional proofs as they may be advised. — Standard v. 
 Computing, 145 Fed. 627; 76 C. C. A. 384. 
 
 § 138. Rehearings. 
 
 The refusal of the circuit court to grant a rehearing is not open to considera- 
 tion here. — Boesch v. Graff, 133 U. S. 697; 33 L. Ed. 787; 10 S. Ct. 378. 
 
 Biiffington V. Harvev, 95 U. S. 99; Steiues v. Franklin, 81 U. S. 15; Pittsburgh 
 V. Heck, i02 U. S. 20; Kennen v. Gilmer, 131 U. S. 22. 
 
 The petition was not filed within the 15 days limited by rule 16 of the cir- 
 cuit court, and therefore did not operate to extend the time within which 
 the defendants below could appeal, imder the circumstances found to exist 
 bv this court in Andrews v. Thura, 64 Fed. 149. — Marden v. Campbell, 
 67 Fed. 809; 15 C. C. A. 26. 
 
 On a motion for a rehearing the final decree is suspended and an appeal 
 therefrom does not lie until such motion is decided. — Andrews v. Thum, 
 72 Fed. 290; 18 C. C. A. 566. 
 
 In the opinion announcing an allowance of a rehearing, the court de- 
 scribes the disclaimer as one by which the complainant " seeks to restrict 
 the claims in controversy " so as to " avoid the effect of the anticipating 
 devices referred to by the Court of Appeals." And then, after recognition 
 of the rule that the Circuit Court has no power, upon the ground of newly 
 discovered evidence, to reopen a question which has been finally decided 
 by the Court of Appeals, without the permission of the appellate tribunal, 
 the opinion proceeds thus: " But in the present case the complainant's 
 patent, as it now stands, has never been before the Circuit Court of Appeals, 
 and has therefore never been considered. It is in effect a new patent, and 
 the subject of its validity or invalidity has never been decided by any 
 tribunal." Do these considerations justify the action of the Circuit Court 
 in granting a rehearing without leave of this court? The decisions of the 
 Supreme Court require a negative answer. — American v. Sample, 136 Fed. 
 857; 70C. C. A. 415. 
 
 Ex parte Sibbald, 12 Pet. 488: Ex parte Dubuque, 1 Wall. 69; Stewart v. 
 Solomon, 97 U. S. 361; In re Potts, 166 U. S 263. 
 
 § 139. Remanding. 
 
 "\Miile the appellate court is not bound so to do, it maj^, in its discretion, 
 and should, when equity so requires, make full direction as to the manner 
 in which the case shall be disposed of below. — Richmond v. Atwood, 52 
 Fed. 10; 2 C. C. A. 596. 
 
 This court, however, has no power to remand except for the purpose 
 of giving effect to some judgment of its own. — Marden v. Campbell, 67 
 Fed. 809; 15 C. C. A. 26. 
 
 Roemer v. Simon, 91 U. S. 149; Smith v. Weeks, 53 Fed. 758. 
 
 § 140. Second Appeal. 
 
 A second appeal hes only when the court below, in carrying out the man- 
 date of this court, is alleged to ha^e committed an error. But on an appeal 
 from the mandate, it is well settled, that nothing is before the court but the 
 proceedings subsequent to the mandate. Whatever was formally before 
 the court, and was disposed of bv its decree, is considered as finallv disposed 
 of. — Corning v. Trey, 15 How.'451; 14 L. Ed. 768.
 
 154 THE FIXED LAW OF PATENTS §§ 141-142 
 
 Himley r. Rose, 5 Cranch, 313; Canter v. Ocean, 1 Pet. 511; The Santa Maria, 
 10 Wheat. 431; Rice v. VVheatley, 9 Dana, 272. 
 
 It has been settled by the decisions of this court, that after a case has 
 been brought here and decided, and a mandate issued to the court below, 
 if a second writ of error is sued out it brings up for revision nothing but the 
 proceedings subsequent to the mandate. None of the questions which 
 were before the court on the first writ of error can be reheard or reexamined 
 upon the second ; and there is nothing now before the court but the taxation 
 of costs. — Sizer v. Many, 16 How. 98; 14 L. Ed. 861. 
 
 7 Wheat. 58; 12 Pet. 488. 
 
 § 141. Subject-Matter. 
 
 A point not taken in the court below cannot be made here. — Klein v. 
 Russell, 86 U. S. 433; 22 L. Ed. 116. 
 
 No appeal lies from a mere decree respecting costs and expenses. — 
 Glendale v. Smith, 100 U. S. 110; 25 L. Ed. 547. 
 Canter v. Ins. Co. 3 Pet. 307. 
 
 It is, of course, well understood that a court of equity is to decide on the 
 law and fact, and that an appeal in equity is an appeal upon the law and fact 
 involved in the cause. — Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 LeGuen v. Gouveneur, 1 Johns. Cas. 500; Adams Equity, 375; Briergs Petition, 
 29 N. H. 553; Blake v. Oxford, 64 N. H. 302. 
 
 This court cannot now upon this assignment of error, enter into the con- 
 sideration of the question whether or not the patent in suit was anticipated 
 by the Gauthier patent and, therefore, was itself void. That inquiry in- 
 volved a question of fact for the jury, and it was properly submitted to the 
 jury. No exception was taken in the trial, either to the submission of the case 
 to the jury, or to the charge of the court. On the writ of error to this court 
 we are confined to the consideration of questions of law, — the rulings of 
 the trial court upon questions of evidence, and the instructions given or 
 referred to the jury. We have no concern with the weight to be given to 
 evidence which has been properly admitted. — Harper v. Wilgus, 56 Fed. 
 587; 6 CCA. 45. 
 
 The objections made by the appellants, touching the form of the bill, 
 whether supplemental or original, and those as to the sufficiency of the alle- 
 gations of the bill, were not raised in the court below, and cannot be taken 
 for the first time in this court. — Herrick v. Giant Leveller, 60 Fed. 80; 
 8 C C A. 475. 
 
 The only question open is as to whether the court erred in holding that 
 the plea was sustained by the evidence. If it was not supported, it should 
 have been overruled, and the defendant ordered to answer. — Hartz v. 
 Cleveland, 95 Fed. 681 ; 37 C C A. 227. 
 
 Dalzell V. Mfg. Co. 149 U. S. 315; Farley v. Kittson, 120 U. S. 303. 
 
 § 142. Supersedeas. 
 
 The circuit court had a discretion to grant or refuse a supersedeas and 
 its discretion cannot be controlled by a mandamus. — Re Haberman, 147 
 U. S. .525; 37 L. Ed. 266; 13 S. Ct. 527. 
 
 Ex parte Hawkins, 147 U. S. 486. 
 
 When an appeal was allowed from the decree granting the perpetual 
 injunction the circuit court, as it was authorized to do under sec. 7 of the 
 court of appeals act, granted an appeal with supersedeas, on a bond con-
 
 §§ 143-144 APPEALS 155 
 
 ditioned that the defendant should prosecute the said appeal to effect arid 
 pay all costs and damages if it failed to make said appeal good, " as well 
 as all damages and profits resulting from its manufacture and sale of the 
 infringing sweepers after the date of the said decree." This only operated 
 to stay or suspend the injunction pending the appeal. It had no effect 
 or operation as a license to defendant. The status of the defendant was 
 simply that of persons engaged in infringing and not restrained bv operation 
 of the injunction. — Bissell v. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 § 143. Supreme Court. 
 
 In order to invoke the exercise of our jurisdiction in the instruction of 
 the circuit court of appeals as to the proper decision of questions or propo- 
 sitions of law arising in the classes of cases mentioned, it is necessary that 
 such questions or propositions should be clearly and distinctly certified, 
 and that the certificate should show that the instruction of this court as 
 to their proper decision is desired. — Columbus v. Robbins, 148 U. S. 266; 
 37 L. Ed. 445; 13 S. Ct. 594. 
 
 An appeal to the Supreme Court does not lie in an action to compel the 
 Commissioner to Issue a patent, because it neither involves a question 
 aflfecting a patent right nor a sum of $5000. — Durham v. Seymour, 161 
 U. S. 235; 40 L. Ed. 682; 16 S. Ct. 452. 
 
 This court will not consider questions not presented to and passed upon by 
 the lower court. — U. S. v. Am. Bell Tel. 167 U. S. 224; 42 L. Ed. 144; 
 17 S. Ct. 809. 
 
 Statement: The examiners-in-chief affirmed the decision of the primary 
 examiner, " requiring a division of these claims for an art and for an inde- 
 pendent machine used to perform the art; " and on appeal the Commissioner 
 affirmed the examiners-in-chief in part only. Rehearing was denied and an 
 appeal taken to the court of appeals D. C, which affirmed the decision of the 
 Commissioner. An appeal and a writ of error were allowed, the court stating: 
 " We are inclined to the view that this case is not appealable to the Supreme 
 Court of the United States, but, as the question has never been directlj'' 
 decided, so far as we are advised, we shall grant the petition in order that 
 the question of the right of appeal in such a case may be directly presented 
 for the determination of the court of last resort." Held: The opinion or 
 decision of the court, reviewing the Commissioner's decision, is not final, 
 because it does not preclude any person interested from contesting the 
 validity of the patent in court; and, if the decision of the Commissioner 
 grants the patent, that is the end of the matter as between the government 
 and the applicant; and if he refuses it, and the court of appeals sustains him, 
 that is merely a qualified finality, for, as we have seen, the decision of that 
 court may be challenged generally and a refusal of patent may be reviewed 
 and contested by bill as provided. — Frasch v. Moore, 211 U. S. 1; L. Ed.; 
 29 S. Ct. 6. 
 
 Steinmetz v. Allen, 192 U. S. 543; Butterworth v. U. S. 112 U. S. 60; Rous- 
 seau V. Brown, 21 App. D. C. 73. 
 
 The rule of Frasch v. Moore, 211 U. S. 1, followed in Johnson v. Mueser, 
 212 U. S. 283: L. Ed.; 29 S. Ct. 390. 
 
 It is believed by this court that the practice of certification is intended to 
 be availed of onlv when the certifving court is in doubt about the specific-ques- 
 tion or questions certified. — Sigafus v. Porter, 85 Fed, 689; 29 C. C. A. 391. 
 
 § 144. Miscellaneous Rules. 
 
 Defenses mentioned in a brief but not raised upon the argument will 
 not be considered here. — Agawam v. Jordan, 74 U. S. 583; 19 Ij, Ed. 177.
 
 156 THE FIXED LAW OF PATENTS §§ H5-147 
 
 Where the record shows that complainant declared infringement for cer- 
 tain claim or claims and waived the others, only the claims declared upon 
 will be considered on appeal. — Doze v. Smith, 69 Fed. 1002; 16 C. C. A. 581. 
 
 It appears that, where the validity of a patent is the main question in 
 a co-pending suit, the court will, if possible so to do, leave such (luestion 
 to a full determination in such co-pending suit, see Hunt v. Milwaukee, 1 48 
 Fed. 220; 78 CCA. 116. 
 
 Upon this appeal the appellant only has appeared. Being, therefore, with- 
 out the benefits accruing from a presentation of both sides of the case, we 
 deem it advisable only to consider the particular grounds upon which the Cir- 
 cuit Court acted, and shall not consider ourselves precluded from examining 
 anew other questions and reaching a different conclusion should another case 
 be fully presented. — Hartford v. Hollander, 163 Fed. 948; C. C. A. 
 
 ARBITRATION. 
 
 Decision of Arbitrator — Force and | Effect § 1 15 
 
 § 145. Decision of Arbitrator — Force and Effect. 
 
 Nothing is exhibited in the record to show that the arbitrator erred in the 
 construction of the patent, and if he did not and his finding as to the character 
 of the machine manufactured by the respondent is correct, it is settled law 
 that his decision is correct. — Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 Gill V. Wells, 89 U. S. 1; Gould v. Rees, 15 Wall. 194; Vance i'. Campbell, 
 1 Black. 428; Prouty v. Ruggles, 16 Pet. 341; Carver v. Hyde, 16 Pet. 514; 
 Brooks V. Fiske, 15 How. 212; Stimpson v. R. R. 10 How. 329. 
 
 ART. 
 
 Statutory Provision § 146 I Art and Process § 148 
 
 Definition § 1 47 | See — Process § 813 
 
 § 146. Statutory Provision. 
 
 Any person who has invented or discovered any new and useful art, 
 machine, manufacture, or composition of matter, or any new and useful 
 improvements thereof * * *. — 4886, R. S. 
 
 § 147. Definition. 
 
 No one has, and I think no one ever will, give a satisfactory definition 
 of the word " art " as used in the Patent Statute. The Supreme Court has 
 thus defined it by illustration : 
 
 In this art — or, what is the same thing under the patent law, this process, 
 this way of transmitting speech — electricity, one of the forces of nature, 
 is employed ; but electricity, left to itself, will not do what is wanted. The 
 art consists in so controlling the force as to make it accomplish the purpose. 
 It had long been believed that if the vibrations of air caused by the voice 
 in speaking could be reproduced at a distance by means of electricity, the 
 speech itself would be reproduced and understood. How to do it was the 
 question. Bell discovered that it could be done by gradually changing the 
 intensity'' of a continuous electric current, so as to make it correspond ex- 
 actly to the changes in the density of the air caused by the sound of the 
 voice. This was his art. He then devised a way in which these changes 
 of intensity could be made and speech actually transmitted. Thus his art 
 was put in practical use. — Telephone Cases, 126 U. S. 1 ; 31 L. Ed. 863; 
 8 S. Ct. 778. 
 
 But the thing which Bell patented was a machine — a telephone. Is 
 an" art," therefore, a " machine? " The process of making nitro-glycerine 
 was a new and useful " art," and patentable; and the article itself, as a 
 manufacture, was patentable. Aerial navigation is a new and useful art; 
 but it is self-evident that no one will be granted a patent on the art of flying.
 
 § 148 ASSIGNMENT 157 
 
 «Sl We'have all^f us seen persons possessed of some remarkable mechan- 
 fca art such Is turning an almost perfect sphere, or givmg a tool a remark- 
 Lblv fine temper or dyeing an article with remarkable exactness. These are 
 
 coilfto reward those pionee^ whose basic discoveries have often been oo 
 
 tCtrm '^art '' afused in the statute, has opened the way for the courts 
 to buuTup the doctHne of equivalents and estabhsh that aristocracy among 
 inventors known as " Pioneers." 
 
 S 148. Art and Process. 
 
 We think that the method or art covered by the patent is patentable as 
 
 Coming V. Burden, 56 U. S. 252; Cochrane v. Deener, 94 U. S. 780, Tilghman 
 V. Proctor, 102 U. S. 707. 
 
 The Datent for the art does not necessarily involve a patent for the par- 
 tion£ means empLed for using it. Indeed, the mention of any means, 
 inle sDecrficatTon or descriptive portion of the patent, is only necessary 
 to sLwKt the art can be used; for it is only useful arts - arts which may 
 be S to advantage -that can be made the subject of a patent. The 
 
 V. Procto?, 102 U. S. 708; New Process v. Maus, 122 U. S. 413. 
 
 Tt is manifest that the subject-matter of the claims (a system for hotel 
 nnd resSS checks) is not a machine, manufacture or composition of 
 matter Hwth^^^^^^^ language of the statute at all, it must be as a " new and 
 Sul art '' One of the°defi^nitions given by Webster of the ^jcj' art 
 useiui dit. pmnlovment of means to accomphsh some desired end, 
 
 patentable. - Hotel v. Lorraine, 160 Fed. 467, 87 C. C. A. 451. 
 Fowler v. City of N. Y., 121 Fed. 747. 
 
 ASSIGNMENT. 
 
 Conditions and Reservations § 15d 
 
 Construction § 154 
 
 Statutorv Provisions § 149 
 Definition § 150 
 Action to Compel § 151 (see § 24) 
 Before Patent § 152 
 
 Copartnership § 155 (see § 270) 
 Corporation § 156 (see § 271)
 
 158 
 
 THE FIXED LAW OF PATENTS 
 
 §§ 149-150 
 
 Debtor and Creditor § 157 
 
 Evidence § 158 (see § 388) 
 
 Execution § 159 
 
 Future Inventions 
 Legality § 160 
 Recording § 161 
 What are Not § 162 
 Miscellaneous Rules § 163 
 
 Interests Assignable § 164 
 
 License § 165 {see § 749) 
 
 Notice 
 
 Bona Fide Purchaser § 166 
 Constructive § 167 
 ■ Parol § 168 
 
 Part Interest § 169 
 
 Pendente Lite § 170 
 Power of Attorney § 171 
 Recording § 172 {see § 388) 
 Reissue § 173 (see § 869) 
 Specific Performance § 174 
 Territorial § 175 
 Miscellaneous Rulings § 176 
 See — Attor7ieys § 179; Bankruptcy 
 § 182; Employer and Employe §§ 
 365-6; Evidence § 394; Infringe- 
 ment §§ 449-51, 509-13; License 
 § 749; Licensor and Licensee § 765; 
 Mortgage § 778; Royalties § 897; 
 -Sto^e Statutes § 920; Title § 925 
 
 § 149. Statutory Provisions. 
 
 Sections 4895, 4897, 4898, 4899, 4934 and 5046 pro\'ide for the assignment 
 and recording assignments of inventions and of letters patent. 
 
 § 150. Definition. 
 
 The monopoly thus granted is one entire thing and cannot be divided 
 into parts except as authorized by law. 
 
 The patentee or his assigns may, by instrument in writing, assign, grant 
 and convey, either (1) the whole patent comprising the exclusive right to 
 make, use and vend the invention throughout the U. S. ; or, (2) an undivided 
 part or share of that exclusive right ; or, (3) the exclusive right under the 
 patent within and throughout a specified part of the United States. (Rev. 
 Stat. sec. 4898.) A transfer of either of these three kinds of interests is an 
 assignment properly speaking, and vests in the assignee a title in so much 
 of the patent itself, with a right to sue infringers; in the second case jointly 
 with the assignor, in the first and third cases in the name of the assignee alone. 
 Any assignment or transfer short of one of these, is a mere Hcense, giving the 
 licensee no title in the patent; and no right to sue at law in his own name for 
 infringement. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 
 11 S. Ct. 334. 
 
 R. S. sec. 4919; Gayler v. Wilder, 51 U. S. 477; Moore v. Marsh, 74 U. S. 515. 
 
 A grant, transfer, or conveyance of these exclusive rights throughout 
 the United States, or a grant of an undivided part of these exclusive rights, 
 or a grant of these exclusive rights throughout a specified part of the United 
 States, is an assignment of an interest in the patent, by whatever name it 
 may be called. A grant, transfer, or conveyance of any right or interest 
 less than these is a Hcense. — Paulus v. Buck, 129 Fed. 594; 64 C. C. A. 162. 
 
 Waterman v. Mackenzie, 138 U. S. 252; Union v. Johnson, 61 Fed. 940; Pick- 
 hardt v. Packard, 22 Fed. 530. 
 
 ■ An assignment which is neither an undivided interest in the whole patent, 
 nor of an exclusive right within a certain territory, is a mere hcense. — 
 Pope V. Gormully, 144 U. S. 238; 36 L. Ed. 420; 12 S. Ct. 637. 
 
 Whether a transfer of a particular right or interest under a patent is an 
 assignment or license does not depend upon the name by which it calls 
 itself, but upon the legal effect of its provisions. — Waterman v. Mackenzie, 
 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 Wilson V. Rousseau, 45 U. S. 646; " Gayler v. Wilder, 51 U. S. 477; Mitchell 
 V. Hawley, 83 U. S. 544; Hayward v. Andrews, 106 U. S. 672; Oliver v. Rumford, 
 109 U. S. 75.
 
 § 151 ASSIGNMENT 159 
 
 § 151. Action to Compel. 
 
 Unquestionably, a contract for the purchase of any portion of a patent 
 right may be good as between the parties as a license, and enforced as such 
 in the courts of justice. — Gayler v. Wilder, 10 How, 477; 13 L. Ed. 504. 
 
 Where the invention belonged to the employer and the employee obtained 
 the patent by fraud in his own name, an action to compel a surrender will lie. 
 — Appleton V. Bacon, 67 U. S. 699; 17 L. Ed. 338. 
 
 The clause of the decree below, appointing a trustee to execute an assign- 
 ment, if the patentee should not himself execute one as directed by the decree, 
 was clearly within the chancery powers of the court as defined by the statute 
 of Maryland. — Ager v. Murray, 105 U. S. 126; 26 L. Ed. 942. 
 
 As the patent upon plaintiff's own showing conferred no title or right 
 upon the defendant, a court of equity will not order him to assign it to the 
 plaintiff — not only because that would be to decree a conveyance of prop- 
 erty in which the defendant has, and can confer, no title ; but also because 
 its only possible value or use to the plaintiff would be to enable him to im- 
 pose upon the public by asserting rights under a void patent. — Kennedy v. 
 Hazelton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. 
 
 Post V. Marsh, L. R. 16 Ch. Div. 395; Oldham v. James, 14 Irish Ch. 81. 
 
 If it appears by the bill or otherwise, that the want of title (even if caused 
 by the defendant's own act, as by his conveyance to a bona fide purchaser) 
 was known to the plaintiff at the time of. beginning the suit, the bill will 
 not be retained for assessment of damages, but must be dismissed and the 
 plaintiff left to his remedy at law. — Kennedy v. Hazelton, 128 U. S. 667; 
 32L. Ed. 576; 9 S. Ct. 202. 
 
 Columbine v. Chichester, 2 Phil. 27; Ferguson v. Wilson, L. R. 2 Ch. 77; 
 Morse v. Elmendorf, 11 Paige, 277; Milkman v. Ordway, 106 Mass. 232, 256. 
 
 The proceedings supplementary to execution, as authorized by the laws 
 of New York, are a substitute for, and in all respects have the same force 
 and effect as, an ordinary creditor's bill. The receiver, in such proceedings, 
 becomes invested with the title to all the property — equitable as well as 
 legal — belonging to the judgment debtor at the time of their institution; 
 and the court has the power of a court of equity in such a suit to compel 
 him to appropriate his property, including that out of the state (see Fenner 
 V. Sanborn, 37 Barb. 610), and transfer it to the receiver towards the satis- 
 faction of the judgment. In Ager v. Murray, 105 U. S. 126, it was decided 
 that, notwithstanding a patent cannot be seized and sold on execution, 
 it can be reached by a creditor's bill, and applied to satisfy a judgment 
 against the owner, and a transfer by him be compelled for that purpose 
 by the court. Although in the present case the court did not — as it might 
 have done — compel Newton to make a written transfer to the receiver 
 of his title to the patent, it is entirely clear that any equitable title which he 
 may have had vested in the receiver, and passed by the sale to Vermilyea, 
 and from Vermilyea to the defendant, by the assignment from Vermilyea. 
 Newton never acquired anything but an equitable title to the patent, the 
 right to compel a reformation of the agreement of March 6, 1889. He did 
 not acquire the legal title, because, without an assignment such as the statute 
 requires to effect the transfer of a patent interest, that title remained in the 
 prior owner, the present defendant. Gayler v. Wilder, 10 How. '498. As 
 that equitable title had, at the date of his assignment to Dooley, passed 
 to the receiver, and the complainant's title is derived through that assign-
 
 160 THE FIXED LAW OF PATENTS § 152 
 
 ment, she took nothing by the instrument. — Newton v. Buck, 77 Fed. 614; 
 23 C. C. A. 355. 
 
 Facts: Defendant was employed by complainant as engineer in charge 
 of its plant to manufacture and to improve its product. He was paid from 
 $4000 to $10,000 a year for his ser\aces. He made several improvements 
 and assigned several patents thereon to complainant absolutely; in fact 
 he made no claim to the title of any of his improvements until about the 
 time he left the employ of the complainant, when he claimed as his own and 
 refused to assign title to the six inventions in suit. There was no written 
 agreement between the parties, and no parol agreement specifically agree- 
 ing to assign title was proved. Held: We do not think that the complainant 
 here, in the absence of express contract to that effect, from the mere relation 
 of employer and employee, in connection with the facts and circumstances 
 disclosed in the record, is entitled, in equity and good conscience, to an 
 assignment from the defendant of his whole right, title and property in 
 the inventions in question. If entitled to anything, complainant is only 
 entitled to a shop right or license that would enable it to use these inventions 
 without paying a royalty therefor, a right which does not strip defendant 
 of his entire property right in the product of his own inventive faculty. 
 It is by distinguishing between claims for mere shop rights or license, and 
 claims for the entire and exclusive property right in the inventions of the 
 employee, that the cases cited are to be profitably read. This distinction 
 has been observed in many cases, both federal and state. — Pressed Steel v. 
 Hansen, 137 Fed. 403; 71 C. C. A. 207. 
 
 Opinion by Gray, C. J., Dallas, C. J. concurring; and Acheson, C. J. 
 dissenting and holding that the facts bring the case within the rule in Solo- 
 mons V. U. S., 137 U. S. 342; McAleer v. U. S., 150 U. S. 424; Gill v. U. S., 
 160 U. S. 426. 
 Citg. and reviewing fully main authorities, 
 
 McClurg V. Kingsland, 1 How. 202; Dalzell v. Dueber, 149 U. S. 315; Lane v. 
 Locke, 150 U. S. 193; Bensley v. N. W. Horsenail Co. 26 Fed. 250; Hermann v. 
 Hermann, 29 Fed. 92; Boston v. Allen, 91 Fed. 248; Joliet v. Dice, 105 111. 649; 
 Fuller V. Bartlett, 68 Wis. 73. 
 
 Note: This decision is conclusive, it seems to me, upon this point: Re- 
 gardless of the character of the services rendered by the employee, in the ab- 
 sence of a written agreement or a parol agreement unmistakably proven 
 by which the employee agreed to pass the title of his inventions to his em- 
 ployer, such employer will secure only a shop right or license ; and that a sharp 
 distinction must be drawn between the ordinary conditions of private em- 
 ployment and the special conditions of government employment, such as dis- 
 closed in the Solomons, McAleer, and Gill cases above cited by Acheson, J. 
 dissenting. 
 
 § 152. Before Patent. 
 
 The thing to be assigned is not the mere parchment on which the grant 
 is written. It is the monopoly which the grant confers; the right of property 
 which it creates. And when the party has acquired an inchoate right to it, 
 and the power to make that right perfect and absolute at his pleasure, the 
 assignment of his whole interest, whether executed before or after the patent 
 is issued is equally within the provisions of the act of Congress. — Gayler 
 V. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 It is well settled that a recorded assignment of a perfected invention, 
 made before a patent has been issued, carries with it the patent when it is 
 issued. — Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 Gayler v. Wilder, 10 How. 477.
 
 § 153 ASSIGNMENT 161 
 
 While it is, perhaps, not necessary to decide whether in any case a sale 
 of an invention which is never patented carries with it anything of value, 
 we are of opinion that the rights growing out of an invention may be sold, 
 and that in the present case the sale, with the right to use it in connection 
 with the existing patent and its reissue or renewals, protects defendants 
 from liabiUty. — Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767. 
 
 Such an instrument, though executed before the patent is granted, trans- 
 fers the legal title to the assignee. — Hendrie v. Sayles, 98 U. S. 546 ; 25 
 L. Ed. 176. 
 
 Gayler v. Wilder, 10 How. 477; Rathbone v. Orr, 5 McLean, 131; Rich v. 
 Lippincott, 2 Fish. 1; Herbert v. Adams, 4 Mas. 15; Dixon v. Moyer, 4 Wash. 72. 
 
 An assignment of a patent is good if made before the patent is actually 
 obtained and should not be treated as a sale of personal property that was 
 not in existence. — Brush v. CaUfornia, 52 Fed. 945; 3 C. C. A. 368. 
 
 Gayler v. Wilder, 10 How. 477; Littlefield v. Perry, 21 WaU. 205. 
 
 § 153. Conditions and Reservations. 
 
 It would seem that conditions and reservations stated in the recorded 
 assignments are sufficient to charge purchasers with notice as to such matters, 
 — Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 The concluding pro^asion, that the net profits arising from sales, royalties, 
 or settlements, or other sources, are to be divided between the parties to 
 the assignment so as to give the patentee one fourth thereof, does not in any 
 respect, modify or Umit the absolute transfer of title. It is a provision by 
 which the consideration for the transfer is to be paid to the grantor out of 
 the net profits made; it reserves to him no control over the patents or their 
 use or disposal, or any power to interfere with the management of the busi- 
 ness growing out of their ownership. The clause appointing the assignees 
 attorneys of the grantor, with authority to use his name whenever they 
 deem proper in such management, does not restrict in any way the power 
 of the assignee after the transfer of the property. — Rude v. Westcott, 
 130 U. S. 152; 32 L. Ed. 888; 9 S. Ct. 463. 
 
 Tilghman v. Proctor, 125 U. S. 136. 
 
 An adequate assignment is not defeated by a subsequent conditional 
 agreement, conditioning the assignment with specified requirements, where 
 such conditions have been fulfilled. — Boesch v. Graff, 133 U. S. 697; 33 
 L.Ed. 787; lOS. Ct. 378. 
 
 An assignment of the entire patent, or of an undivided part thereof, 
 or of the exclusive right under the patent for a limited territory may be 
 either absolute or by way of mortgage and Uable to be defeated by non 
 performance of a condition subsequent, as clearly appears in the provision 
 of the Statute, that " an assignment grant or conveyance shall be void 
 as against any subsequent purchaser or mortgagee for a valuable considera- 
 tion without notice, unless it is recorded in the Patent Office within three 
 months from the date thereof." R. S. sec. 4898. — Waterman v. Mackenzie, 
 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 The title was conveyed to complainant subject only to certain conditions, 
 and the assignor had no more right to it than a stranger so long as the con- 
 ditions should remain unbroken. If the complainant should fail to keep his 
 covenants, then the conditions would be broken, and the property would 
 revert. Until this event happens the complainant has the right to protect
 
 162 THE FIXED LAW OF PATENTS § 154 
 
 his interests by suing infringers of the patent. — Piatt v. Fire Extinguisher, 59 
 Fed. 897; 8 C. C. A. 357. 
 
 Littlefield v. Perry, 21 Wall. 205. 
 
 § 154. Construction. 
 
 When there is doubt as to the proper construction of an instrument, 
 the intention of the parties is entitled to great consideration. But when its 
 meaning is clear in the eye of the law, the error of the parties cannot control 
 its effect. — Railroad v. Trimble, 77 U. S. 367; 19 L. Ed. 949. 
 
 The assignment transferred the patent together with alterations, improve- 
 ments for the terms for which patents had theretofore been or might there- 
 after be granted. Held: to mean precisely what it said. — Railroad v. 
 Trimble, 77 U. S. 367; 19 L. Ed. 949. 
 
 Gayler v. Wilder, 10 How. 477; distinguishing Wilson v. Rousseau, 4 How. 682. 
 
 An assignment of an interest in an invention secured by letters patent, is 
 a contract, and, like all other contracts, is to be construed so as to carry out 
 the intention of the parties to it. — Nicholson v. Jenkins, 81 U. S. 452; 20 
 
 L. Ed. 777. 
 
 Two contracts were made at the same time. The one, on its face assigning 
 the patent but referring to the other agreement as part of the same contract, 
 was recorded. The other was not. Held: for the purpose of ascertaining 
 the intention of the parties in making their contract, the two instruments, 
 executed as they were at the same time, and each referring to the other are 
 to be construed together. — Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 The suggestion that " the test " of whether title passed by the assignment 
 in question is " whether such paper could be recorded " under sec. 4898 
 has been attentively considered, but cannot be accej^ted. That section 
 provides that " every patent * * * shall be assignable in law by an 
 instrument in writing," and makes an assignment void for omission to 
 record only " as against any subsequent purchaser or mortgagee," etc. 
 In this instance we have a writing which, as was said by the learned judge 
 below, is an assignment, in terms, " of all the property of the company 
 executing it, * * * specifically including also ' the good will, patents, 
 trademarks ' " etc. Of course, the word " patents " included every patent 
 which was assignable by the assignor (Herring-Hall-Marvin v. Hall, 208 
 U. S. 554); and with respect to the parties to this cause, it is immaterial 
 whether the instrument was or was not ehgible for record. — Delaware v. 
 Shelby, 160 Fed. 928; 88 C. C. A. 110. 
 
 To preserve their joint property and prevent its practical destruction 
 by co-owners, it is imperative that all should be permitted to simply vest 
 the legal title in one without imposing any active duties on such holding 
 trustee, and this shows that, while there are no express duties for the trustee 
 to perform, it by no means follows the trust is a dry or inactive one. As 
 holder of the legal title he can bring suit, enjoin infringers from destroying 
 the patent, and the mere holding of the legal title in trust per se preserves 
 the patent for the common good and prevents its destruction by each co- 
 owner. Wo are of opinion that these views have actuated patent practi- 
 tioners in thus vesting the legal titles to patents in trustees, and that a 
 holding that such an instrument, contrary to its plain intent, executed it- 
 self and left the equitable owners as free to use and license as before would 
 be most unfortunate in its unsettling effects. The intent and effect of this 
 instrument we therefore hold was to vest and retain the legal title to this
 
 §§ 155-157 ASSIGNMENT 163 
 
 patent in McDuffee, as trustee; but the equitable ownership thereof re- 
 mained in his cestuis que trustent, and without their consent he could not 
 convey such legal title, or any part thereof. — McDuffee v. Hestonville, 162 
 Fed. 36; 89 C. C. A. 76. 
 
 Duncan v. Jandow, 82 U. S. 165; Flitcraft v. Com. Title, 211 Pa. 119. 
 
 § 155. Copartnership. 
 
 An assignment of a patent by one of two copartners to the other, for the 
 use of the copartnership terminates with the copartnership. — Denning v. 
 Bray, 61 Fed. 651 ; 10 C. C. A. 6. 
 
 We think the effect of the assignment was to transfer a one-half interest 
 to the other partner, nothing appearing to show that the partners stood upon 
 unequal terms. — Canada v. Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 § 156. Corporation. 
 
 Assignments of patents made by corporations need not be under seal. — 
 Gottfried v. Miller, 104 U. S. 521 ; 26 L. Ed. 851. 
 
 Bank v. Patterson, 7 Cranch, 299; Fleckner v. Bank, 8 Wheat. 338; Turnpike 
 V. Hay, 7 Mass. 102; Dunn v. Rector, 14 Johns, 118; Kennedy v. Ins. Co. 3 Har. 
 & J. 367; Stanley v. Hotel, 13 Me. 51; Fanning v. Gregorie, 16 How. 524; Mott 
 V. Hicks, 1 Cow. 513; Bowen v. Morris, 2 Taunt. 374; Shelton v. Darling, 2 Conn. 
 435; Brockway v. Allen, 17 Wend. 40. 
 
 The attachment of the stock of a stockholder in a corporation does not 
 in any way prevent such corporation from executing an assignment of a 
 patent. — Gottfried v. Miller, 104 U. S. 521 ; 26 L. Ed. 851. 
 
 It is alleged that the conveyance from the Firm Company to Firm was 
 void by reason of the N. Y. statute which so declares to be certain transfers 
 to its officers for the payment of any debts. We have been cited to no 
 decision of the courts of that state holding that when the transfer has been 
 made, and is unchallenged by the corporation, its receiver, its judgment 
 creditors, or any stockholder, the transfer shall, at the instance of a stran- 
 ger in interest and title, and against an innocent purchaser from the cor- 
 poration's grantee, be adjudged absolutely void. In the absence of such 
 construction, we are of the opinion that the title acquired by the complain- 
 ant was, if, indeed, questionable, not void, but voidable, and, in the absence 
 of any step to avoid it, must, for the purpose of this case, be deemed to vest 
 the legal title to the patent in question in the complainant. — Goss v. Scott, 
 108 Fed. 253; 47 C. C. A. 302. 
 
 § 157. Debtor and Creditor. 
 
 Under the copyright law, the sale on execution of a copper plate does not 
 entitle the purchaser to produce and sell the copyrighted matter. But the 
 copyright may be reached by a creditor's bill. — Stephens v. Cady, 14 How. 
 528; 14 L. Ed. 528. 
 
 See Stevens v. Gladding, 58 U. S. 447, to same effect. 
 
 It is within the general jurisdiction of a court of chancery to assist a judg- 
 ment creditor to reach and apply to the payment of his debt any property 
 of the judgment debtor, which by reason of its nature only, and not by 
 reason of any positive rule exempting it from liability from debt, cannot 
 be taken on execution at law; as in the case of trust property in which the 
 judgment debtor has the entire beneficial interest, of shares of a corporar. 
 tion, or of choses in action. — Ager v. Murray, 105 U. S. 126; 26 L. Ed. 942.
 
 154 THE FIXED LAW OF PATENTS § 158 
 
 McDermutt v. Strong, 4 Johns. Ch. 687; Spader v. Davis, 5 Johns. Ch. 280; 
 Hadden v. Spader, 20 Johns. Ch. 554; Edmeston v. Lyde, 1 Paige, 037; Wiggin 
 V He\nvood, 118 Mass. 514; Sparhawk v. Cloon, 125 Mass. 263; Daniels v. El- 
 dredge, 125 Mass. 356; Dake v. Rice, 130 Mass. 410; Stephens v. Cady, 14 How. 
 528; Stevens v. Gladding, 17 How. 447. 
 
 A patent or copyright which vests the sole and exclusive right of making, 
 using and vending the invention or of publishing and selling the book, in 
 the person to whom it has been granted by the government, as against all 
 persons not deriving title through him, is property, capable of being assigned 
 by him at his pleasure, although his assignment, unless recorded in the 
 proper office, is void against subsecjucnt purchasers or mortgagees for a valu- 
 able consideration without notice. R. S. 4884, 4898, 4952, 4955. And the 
 provisions of the patent and copyright Acts, securing a sole and exclusive 
 right to the patentee, do not exonerate the right and property thereby 
 acquired by him, of which he receives the profits, and has the absolute title 
 and power of disposal, from liability to be subjected by suitable judicial 
 proceedings to the payment of his debts. — Ager v. Murray, 105 U. S. 12G; 
 26 L. Ed. 942. 
 
 There are decisions in the circuit courts that an assignee in insolvency, 
 or a receiver, of all the property of a debtor, appointed under the laws of 
 the state, does not, by virtue of the general assignment or apportionment 
 merely, without any conveyance made by the debtor or specifically ordered 
 by the court ac(iuire a title in patent rights. But in Ashcroft v. Walworth, 
 1 Holmes, 152, Judge Shepley clearly intimated that the courts of the state 
 might have compelled the debtor to execute such a conveyance. And the 
 highest courts of New York and California have affirmed the power, upon a 
 creditor's bill, to order the assignment and sale of a patent right for the 
 payment of the patentee's judgment debts. — Ager v. Murray, 105 U. S. 126 : 
 26 L. Ed. 942. 
 
 Gordon v. Anthony, 16 Blatclif. 234; Gillett v. Bate, 86 N. Y. 87; Bank v. 
 Robinson, 57 Cal. 520. 
 
 The present license contained no words which show that it was intended 
 to be assigned, and was purely a personal license. Consequently the receiver 
 could not acquire it. — Waterman v. Shipman, 55 Fed. 982; 5 C. C. A. 371. 
 
 § 158. Evidence. 
 
 The appellee produced a license in its possession, absolute on its face 
 and without any limitation or condition. The burden of proof is upon 
 the appellants to show that it was delivered as an escrow. — Mellon v. 
 D. L. & W., 154 U. S. 673; 26 L. Ed. 929; 14 S. Ct. 1194. 
 
 Certified copies of patent office records of instruments filed for record 
 are not prima facie proof of either the execution or the genuineness of the 
 original. The assignment of a patent is not a public document, but is merely 
 a private writing. There is no statutory provision requiring it to be recorded 
 in the patent office. Section 4898 R. S. permits this to be done for the pro- 
 tection of the assignee against a subsequent bona fide purchaser or mort- 
 gagee. The section does not make the recorded instrument evidence, does 
 not require the assignment to be executed in the presence of any public 
 officer, or to be acknowledged or authenticated in any way before recording, 
 and does not provide or contemplate that it shall remain subsequently in 
 the custody of the office. It devolves upon the patent office merely the 
 clerical duty of recording any instrument which purports to be the assign- 
 ment of a patent. We are aware of no principle which gives to such a record
 
 g J38 ASSIGNMENT 165 
 
 1016; 9 C. C. A. 336. 
 
 Disapproving and reviewing in substance jjaworth, 4 McLean, 370; Lee v. 
 
 can?55 Fed. 488; Approving Paine v. Trask, 56 Fed. 233. 
 
 QoPtinn 4Sq8 does not require that any instrument in the chain of title 
 . rintent shall be recorded, but all such assignments may be recorded 
 to a patent ^ e^^^^l sigAificance and intent - of this section is that 
 The sense -the essentmisigm ^^^^^ i..^ ^^ ^ny person in- 
 
 the record or o^^^^^^l^^.^jy °' ^ Je that an original assignment was made 
 terested the prima ^^^^^^'^J^^^'^that such instrument was subscribed as 
 in terms as sho^n. ^ ^ ^^^^J^^^^hl't t^^^^ thereto is the genuine sig- 
 
 shown, that It was ^^l^^fff,"^' r^\'"h assignor had an assignable interest 
 nature of thejissignor and that suc^ assignor n ^J ,,^, in the 
 
 according to the pm-por^^o^^^^^^^^ paJent office," wifhin the literal 
 
 Cs oft 892 But, in the tbs'ence of tWt section, and on the genera 
 
 mmmmmm 
 
 o Acknowledgment or proof of execufon '^p^^qXli^J „\ reaso^g u^^^^ 
 
 no authority to record a spurious instrument. A sP"™f,.^^f '»S"™ V^e 
 Sordei in th^^ patent office would not be in law a «-;'' "' if^t^^^'^.ifilte 
 
 record of an .-^'i''^f"'']CoS^l\T£n^me U matters not that the 
 by the commissioner that the original is 8«""'"»- ,,.,..,„ „^„„ of th s 
 
 commissioner may act on the mere assumption t^f^^^"^ Purged by 
 kind is presented '»' «<-"d >s genuine. He is a puMu: oftcer ^ g^^^^y 
 
 £tttu?i:>:i"r/n;:rfVb^^^^^^^ 
 
 ^?irlrifar-^f^"^ra,^^^^^^^ 
 
 'K-n:t^ern;st^,^a. X' ruTfs fSt^td acted u^^^^^^^^^^^^ 
 
 to that decision, is considered by «"^,,^«";;\'° ¥ '^"-fevaif d" As po nted 
 
 :uJl^t«eT.^o^^i;l^SS^ 
 
 office record of an assignment shall have no force as prima, i^
 
 166 THE FIXED LAW OF PATENTS §§ 15^160 
 
 the original writing would often entail great and useless expense, if not an 
 entire defeat of the rights of the complainant in a patent Case. A spurious 
 or counterfeit assignment put on record in the patent office would be easily 
 and certainly detected by any person interested in the inquiry, especially 
 in the case of any patent of real value. The possible gain from such a ras- 
 cality would not be worth the risk. The complainant in a patent suit is 
 ordinarily making actual use of the patent. What may be called his pos- 
 session of the patent property is usually open and notorious. It is no hard- 
 ship upon an infringer who, claiming no right in himself, proposes to dispute 
 the showing of the patent office on the matter of title, to require from him 
 such proof as may at least raise a fair presumption that the original of some 
 assignment shown of record in the chain of title is spurious. — Standard v. 
 Crane, 76 Fed. 767 ; 22 C. C. A. 549. 
 Woods dissenting. 
 
 § 159. Execution. 
 
 Need not be under seal. — Gottfried v. Miller, 104 U. S. 521 ; 26 L. Ed. 
 851. 
 
 It is always open to show that an instrument produced in evidence, whether 
 in an action at law or a suit in equity in support of a claim or defense, was 
 never executed by the person whose signature it bears. — Marsh v. Nichols, 
 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168. 
 
 Section 5 of the act of Mar. 3, 1897 is a statute which was intended to 
 declare the evidential effect to be given to acknowledgments before a notary, 
 after a given date, without special reference, however, to the time when 
 the acknowledgment was taken; and in the absence of any specific pro- 
 vision that it should apply only to acknowledgments taken subsequently 
 to Jan. 1, 1898, we perceive no sufficient reason why it should be limited 
 in its operation to acknowledgments so taken. — Lanyon v. Brown, 115 
 Fed. 150; 53 C. C. A. 354. 
 
 DeLaval v. Vermont, 109 Fed. 813. 
 
 Section 4898 of the Revised Statutes, as amended by Act March 3, 1897, 
 simply provides a new method of proof. The evident intent of the act 
 was to substitute proof of execution by acknowledgment, instead of by 
 the production of the subscribing witness, if there were one, or proof of the 
 handwriting of the assignor, if there were no subscribing witness. In De- 
 Laval V. Vermont, 109 Fed. 813 it was held that assignments which were 
 acknowledged before the passage of that act were admissible in evidence 
 thereunder, and that the act referred " to the time," to use the language 
 of the court, " when the acknowledgment is produced in evidence, rather 
 than to the time when it was taken." The rule thus laid down was approved 
 by the Circuit Court of Appeals for the Eighth Circuit in Lanyon v. Brown, 
 115 Fed. 150. — Murray v. Continental, 149 Fed. 989; 79 C. C. A. 499. 
 
 § 160. Future Inventions — Legality. 
 
 An assignment including " with all the improvement which he hath 
 made or shall make in the same " is a covenant which bound the inventor 
 to convey his improvement. Though the assignment was not made until 
 several years after it was patented the assignees were equitably entitled to 
 it before. — Troy v. Corning, 14 How. 193; 14 L. Ed. 383. 
 
 An assignment of an unperfected invention, with all improvements upon 
 it the inventor may make, is equivalent in equitv to an assignment of the 
 perfected results. — Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577.
 
 § 161 ASSIGNMENT 167 
 
 An assignment of an invention and of future improvements to be made 
 passes title to the improvements. — Regan v. Pacific, 49 Fed. 68; 1 C. C. A. 
 169. 
 
 Littlefield v. Perry, 21 Wall. 226. 
 
 An agreement to assign future inventions is valid. — Regan v. Pacific, 
 49 Fed. 68; 1 C. C. A. 169. 
 
 Curtis Sec. 160; Robinson Sec. 771. 
 
 The defense is set up that such contracts for an indefinite period, covering 
 inventions to be afterwards made, are against public policy. On the other 
 hand, whether based on agreements for employment or other valuable con- 
 siderations, such contracts have been extensively made, and have never been 
 doubted until of late. They are essential to the business of the contracting 
 parties, and are not unjust. A person may purchase an invention, and pay 
 therefor a very large sum, and proceed to make use of it. The inventor, ac- 
 cording to a practice not uncommon, may subsequently overlap that inven- 
 tion by improvements which, though small, may be enough, in these days of 
 sharp competition, to build up a successful hostile business. — Reece v. Fen- 
 wick, 140 Fed. 287; 72 C. C. A. 39. 
 
 Thibodeau v. Hildreth, 124 Fed. 892. 
 
 Parties may lawfully assign inventions not yet patented, and even future 
 inventions, so far as such future in.ventions are tributary to the inventions 
 assigned. — American v. Pungs, 141 Fed. 923; 73 C. C. A. 157. 
 
 § i6i. Future Inventions — Recording. 
 
 An agreement to " license, grant and convey " future inventions is not 
 an assignment, is not recordable and gives the grantee only an equitable 
 right subject to defeat by an assignment to a bona fide purchaser for value. 
 — Regan v. Pacific, 49 Fed. 68; 1 C. C. A. 169. 
 
 That an assignment of a patent, together with any future improvements 
 thereon, is recordable and operative as notice to subsequent assignees of 
 patents for improvements, may be conceded. — National v. New Columbus, 
 129 Fed. 114; 63 C. C. A. 616. 
 
 Littlefield v. Perry, 21 WaU. 205; Aspinwall v. Gill, 3^ Fed. 697. 
 
 The patentee had previously assigned an interest in his patent, and the 
 patent had issued to him and his assignees. Subsequent to issue the patentee 
 executed an assignment of a part interest in all future inventions. Held: 
 Near having by his prior recorded assignments, which did not include im- 
 provements, conveyed to Reynolds the one undivided third in all existing 
 patents, and there being no apphcation pending for any patent, there vv'as 
 nothing upon which this document could operate which entitled it to regis- 
 tration as an assignment, grant or conveyance under sec. 4898 R. S. What 
 we decide is that an instrument which was not intended to convey any present 
 interest in any existing patent is not an " assignment, grant, or convey- 
 ance," within the meaning of the statute, and that its registration did not 
 operate as constructive notice to the complainant. — National v. New 
 Columbus, 129 Fed. 114; 63 C. C. A. 616. 
 
 Rob. Pat. sees. 411, 769, 785; Wright v. Randel, 8 Fed. 591; Carpenter v. 
 Dexter, 8 Wall. 513; Lynch v. Murphy, 161 U. S. 247. 
 
 In actual fact, an assignment, had been spread upon the registry of the 
 Patent Office, by which he had assigned to Reynolds a one-third interest
 
 ^ 
 
 168 THE FIXED LAW OF PATENTS §§ 162-163 
 
 in all of his improvements and inventions in cash registers which he had 
 been working on, and for which he contemplated filing applications. (There 
 was no pending application at the time it was filed.) This assignment did 
 not operate as a constructive notice, because it was not such a grant or 
 conveyance as was entitled to registration. Neither did it request the 
 commissioner to issue any particular patent to an assignee, and the com- 
 missioner therefore properly ignored it when he came to issue the patent, 
 — National v. New Columbus, 129 Fed. 114; 63 C. C. A. 616. 
 
 Lynch v. Murphy, 161 U. S. 247; Carpenter v. Dexter, 8 Wall. 513; Prentice 
 V. Duluth, 58 Fed. 437; Rob. Pat. sec. 785; Wright v. Randel, 8 Fed. 591; R. S. 
 sec. 4895; Rob. Pat. sees. 411, 769, 785. 
 
 § 162. Future Inventions — What are Not. 
 
 Complainant agreed to supply defendant with certain tackle blocks, 
 and to assign patents for improvements, defendant agreeing to pay all 
 expenses of patenting, dies, patterns, etc., and to pay complainant for all 
 articles as ordered. Defendant lived up to the contract for a time and com- 
 plainant assigned the patent upon the invention made during that period. 
 Subsequently, when complainant had made further improvements and 
 expended some S8000 on dies and machinery, defendants refused to take 
 the articles made. Later, defendants infringed the subsequent patented 
 improvements of complainant and attempted to justify under implied li- 
 cense, growing out of said contract. Held: That the agreement was such 
 as stated in the plea is highly improbable and the agreement made by the 
 evidence still more so. The company was not bound to continue their 
 agreement for a day, nor obliged to reimburse Hartz for cost of experiments 
 or of plant essential in making his new devices. Such a contract is incon- 
 ceivable and unconscionable. Even if clearly proven, it is not such a con- 
 tract as a court of equity should specifically enforce. — Hartz v. Cleveland, 
 95 Fed. 681 ; 37 C. C. A. 227. 
 
 Dalzell V. Mfg. Co. 149 U. S. 315. 
 
 That when an employee agreed to assign inventions made while in the 
 employ of defendant and to assign any future improvements on specific 
 inventions already patented and assigned, such agreement covers improve- 
 ment on said patents made after employment ceased, but not other im- 
 provements relating to defendant's business, see Frick v. Geiser, 100 Fed, 
 94; 40C. C, A. 291. 
 
 ^^ 
 
 That an assignment including along with pending applications, " inven- 
 tions of like nature or similar thereto which I have already completed or 
 which may hereafter be completed by me," cannot be construed to include 
 inventions conceived after the assignment, see Davis v. Taghabue, 159 Fed. 
 712; 86C, C. A. 466. 
 
 X^ § 163. Future Inventions — Miscellaneous Rules. 
 
 "^ The assignee of an agreement to assign future inventions takes it subject 
 
 to all defenses against his assignor. — Regan v. Pacific, 49 Fed, 68 ; 1 
 C. C. A, 169. 
 
 An agreement existed by which the joint inventors agreed and did " bind 
 themselves that in case they shall by invention or purchase become the 
 owners of any invention or improvement upon carving machines they will 
 transfer and assign a like exclusive right," Upon such title suit was brought. 
 Held: While the terms of this agreement in reference to subsequent " in- 
 vention in or improvement upon carving machines " are probably applicable
 
 § 164 ASSIGNMENT 169 
 
 « 
 
 to the de\'ice shown in patent No. 447,796 (one of the patents in suit), and 
 may be enforcible between the parties, as authorized in Littlefield v. Perry, 
 21 'Wall. 205, it is plain that such agreement is executory only, and not 
 an assignment, within the statute, so that no legal title is conferred. The 
 subject-matter was not then in being, was incapable of sale and delivery, 
 and, however binding the contract was upon the inventors to grant the 
 right or title in their subsequent invention, it is not a legal assignment, 
 and, at the utmost, confers upon the appellant a mere equity, with the legal 
 title in the patentees. Suit by an assignee for infringement is authorized 
 only when the assignment is complete within the statutory requirement. 
 — Milwaukee i'. Brunswick-Balke, 126 Fed. 171 ; 61 C. C. A. 175. 
 
 Rob. Pat. sec. 771; Curtis Pat. sees. 171-2; Regan v. Pacific, 49 Fed. 68; 
 Waterman v. Mackenzie, 138 U. S. 252; Pope v. Gormully, 144 U. S. 248. 
 
 A contract for the assignment of future inventions existed. The bill 
 asked for discovery of undisclosed inventions. The proofs gave no evidence 
 whether such existed or what they were. Held: We are not justified in 
 granting an order in the air for a discovery, involving parties in the hazards 
 of ascertaining whether their proceedings may be in contempt or not. — 
 Reece v. Fenwick, 140 Fed. 287; 72 C. C. A. 39. 
 
 Swift V. U. S. 196 U. S. 375. 
 
 Defendant having agreed to assign future inventions, was later discharged 
 by complainant from its employ. Defendant then invented certain im- 
 provements and consulted officers of complainant with reference to getting 
 them interested in complainant's proposed new business. Complainant's 
 officers simply turned their backs on defendant without making any claim 
 to the invention. Held: Inasmuch as defendant thereafterwards expended 
 his time, efforts and money on the faith of the mutual understanding thus 
 expressed by each party, equity cannot give the complainant relief with 
 regard to any inventions on which defendant had expended his time, efforts 
 and money with reference to developing and exploiting them, subsequently 
 to the conversation referred to. — Reece v. Fenwick, 140 Fed. 287 ; 72 C. C. A. 
 39. 
 
 § 164. Interests Assignable. 
 
 The monopoly granted to the patentee is for one entire thing; it is the 
 exclusive right of making, using and vending to others to be used the im- 
 provement he has invented, and for which the patent is granted. The 
 monopoly did not exist at common law, and the rights which may be exer- 
 cised under it cannot be regulated by the rules of the common law. It is 
 created by the act of Congress; and no rights can be acquired in it unless 
 authorized by statute, and in the manner the statute provides. — Gayler 
 V. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 Both assignees and grantees have an interest in the patent, but the terms 
 are not synonymous, as used in the patent law. — Moore v. Marsh, 74 U. S. 
 515; 19 L. Ed. 37. 
 
 Potter V. Holland, 4 Blatchf . 157. 
 
 This power of assignment has been so construed by the courts as to con- 
 fine it to the transfer of an entire patent, an undivided part thereof or the 
 entire interest of the patentee or undivided part thereof within and through- 
 out a certain specified portion of the United States. One holding such an 
 assignment is an assignee within the meaning of the statute and may prose- 
 cute in the circuit court any action which may be necessary for the pro-
 
 170 THE FIXED LAW OF PATENTS § 165 
 
 tection of his rights under the patent. — Littlefield v. Perry, 88 U. S. 205 ; 
 22 L. Ed. 577. 
 
 That husband and wife may deal as strangers, see Waterman v. Mackenzie, 
 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 By the law of the State of New York where all the instruments were made 
 and all the parties to them resided, husband and wife are authorized to 
 make conveyances and contracts of and concerning personal property to 
 and with each other in the same manner and to the same effect as if they 
 were strangers. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 
 11 S. Ct. 334. 
 
 Armitage v. Mace, 96 N. Y. 538; Adams v. Adams, 91 N. Y. 381. 
 
 This case really involves the question, which is one of considerable im- 
 portance, whether a patentee can split up his patent into as many diiferent 
 parts as there are claims, and vest the legal title to those claims in as many 
 different persons. This question has never before been squarely presented 
 to this court, but in view of our prior adjudications, it presents no great 
 difficulty. The leading case upon this subject is that of Gayler v. Wilder, 
 51 U. S. 477, and while that case involved a different question from the one 
 in this case, the trend of the entire opinion is to the effect that the monopoly 
 granted by law to the patentee is for one entire thing, and that in order 
 to enable the assignee to sue, the assignment must convey to him the entire 
 and unqualified monopoly which the patentee held, in the territory speci- 
 fied, and that any assignment short of that, is a mere license ; for it was ob- 
 viously not the intention of the legislature to permit several monopolies 
 to be made out of one and divided among different persons within the same 
 hmits. — Pope v. Gormully, 144 U. S. 248; 36 L. Ed. 420; 12 S. Ct. 63. 
 
 The assignment ran to " J. B. Bartholomew, et al." It not appearing 
 that any other interest had ever been asserted or claimed than that of 
 Bartholomew, it was held that for the purpose of asserting title for the 
 purpose of an infringement suit, the defendant having failed to show any 
 adverse interest, that the expression " et al " was mere surplusage. — Bliss 
 V. Reed, 106 Fed. 314; 45 C. C. A. 304. 
 
 It is urged that the use of the expression " may terminate this license " 
 qualifies the language of the grant, and converts it into a mere license. We 
 cannot concur in this view. It is a circumstance to be considered in the 
 construction of the instrument as a whole, and in ascertaining whether 
 there be provisions subsequent to the granting clause which are so repug- 
 nant to it that both cannot stand together. But the calling of an instru- 
 ment which conveys the whole title of the grantor a license cannot qualify 
 or limit the grant. — Sichler v. Deere, 113 Fed. 285; 51 C. C. A. 242. 
 
 Signal Co. v. Signal Co. 59 Fed. 20; Newton v. Buck, 72 Fed. 777. 
 
 § 165. License. 
 
 A mere license to a party without ha\'ing his assigns or equivalent words 
 to them, showing that it is meant to be assignable, is only the grant of a 
 personal power to the licensees, and is not transferrable to another. — 
 Troy V. Corning, 14 How. 193; 14 L. Ed. 383. 
 
 Curt. Pat. 198; 2 Story. 525, 554. 
 
 An assignment of a right to use, make and sell for a limited time in a 
 limited territory, in the absence of express words, is unassignable. — Oliver 
 V. Rumford, 109 U. S. 75; 27 L. Ed. 862; 3 S. Ct. 61. 
 
 Iron V. Corning, 14 How. 193; Gayler v. Wilder, 10 How. 477.
 
 § 166 ASSIGNMENT 1"^! 
 
 The grant of an exclusive right under the patent within a certain distrust 
 which does not include the right to make, and the ^f^^^ to use a d the nght 
 to sell is not a grant of a title in the whole patent right ^^ f^in the d st ic and 
 is therefore only a license. Such, for nistance, is a grant of the full and ex- 
 clusive right to^make and vend " within a certain district reserving by he 
 grantor the right to make within the district, to be sold outside of it. Gay er 
 f Wikler 51 U. S. 477. So is a grant of " the exclusive right to make and 
 use ''but not to sell, patented machines within a certain district. Mi cheU 
 rHaX S3 U. S. 544. So is an instrument granting " the sole right and 
 priv^Se^of manufacturing and selling " patented articles and not expressl^y 
 authoifzing their use, because, though this might carry by '^iphcation the 
 Sht to us^e the articles made under the patent by ^^e ^^censee it^ert^^^^^^^^^^ 
 wluld not authorize him to use such ^^^icles made by otos. Water 
 man v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 1 S'- Ct 3<34. 
 
 Hayward v. Andrews, 106 U. S. 672; Oliver v. Rumford, 109 U. S. 75. 
 
 In eauitv as at law, when the transfer amounts to a license only the title 
 remainTn the owner 'of the patent; and suit must be brought in his name, 
 and neve in the name of the licensee alone, unless that is necessary to pre- 
 vent an absolute failure of justice as when the patentee - ^e iMringer and 
 cannot sue himself. Any rights of licensee must be enforced through or in the 
 name of the owner of the patent, and perhaps if necessary *« Protect the 
 rights of all parties, joining the licensee with him as a plaintiff .- Water- 
 man V. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 R S sec 49-n- Littlefield t;. Perry, 88 U. S. 205; Paper Bag Cases 105 U.b. 
 76?'771; BirLli . Shaliol, 112 U. S. 485; Renard .. Levinstem, 2 Hem. & M. 
 628'. 
 
 An assignment or grant conveys (1) the whole patent, comprising the 
 
 exclusive nght to make, use and vend the invention throughout the United 
 
 States or {2) an undi^'ided part or share of that exclusive right , or (3 
 
 the exclusive right under the patent within and- throughout a specified part 
 
 of thrSdla es. " A transfer of either of these three kinds of interest 
 
 ?s an assiclnmenttp operly speaking, and vests in the assignee, a title in so 
 
 LchoUhe patent itielf,\vith a right to sue h.f ringers; in the second case 
 
 TohSy with ?he assignor; in the first and tl-^d cases m he neo^^^^^^^ 
 
 assignee alone. Any assignment or transfer short of one of these is a n eie 
 
 Hcenseyving the licensee no title in the patent, and no right to sue at law 
 
 n hfs'own name for infringement.'' Waterman .-. f.f enzie 13. U. S^ 
 
 252 • Gavler v. Wilder, 10 How. 477 ; Pope v. Gormully, 144 U. b. 248. in the 
 
 constmction of this instrument, seeking to ascertain the '"tention of the 
 
 part es to"' we must be governed by the familiar --- ^/.-^^rum n" 
 
 We must gather the intention from within the four corners of the nstiument, 
 
 dvirtl language employed its usual significance, and, if possible, reconcile 
 
 llepancieslnd avoid repugnancy, having ^^gf.d^-j^ot^jthe ancient 
 
 rule that general words in one clause may be ^^f^^^^ed ^y the particular 
 
 words in a subsequent clause. - Sichler v. Deere, 113 Fed. 285, 51 G. L. A. 
 
 242 
 
 Johnson V. Union, 59 Fed. 20; Newton v. Buck, 72 Fed. 777. 
 
 S 1 66. Notice — Bona Fide Purchaser. 
 
 An assignee of a patent takes it subject to the legal eonsequences of the 
 previous acts of the assignee. - McClurg v. Kingsland, 1 How. 202 , 11 L. Ed. 
 
 ^^The owner of an equitable interest in a patent cannot set up such title 
 a^a^nst^ bona fide purchaser of the legal title without notice o any prior 
 Sfndingequifabfe interest, and the title thus obtained is good as against
 
 172 THE FIXED LAW OF PATENTS § 167 
 
 such equity in the hands of a subsequent purchaser even if they had notice.— 
 Faulkner v. Empire, 67 Fed. 913 ; 15 C. C. A. 69. 
 
 A person taking title through an assignment indicating another interest 
 takes at his risk, and is bound to make every inquiry to avoid the charge 
 of notice. — Mills v. Whitehurst, 72 Fed. 496; 19 C. C. A. 130. 
 
 Chamberlain was Neer's attorney, and had charge of his application. He 
 was asked to find out whether Neer would sell, and at what price. He bought 
 the application from his client for himself, not disclosing to his client that he 
 vv^as buying for complainant, and then assigned the application to com- 
 plainant at more than double the price he had paid. In the whole transaction 
 he was acting in his own interest, and in such circumstances there is no pre- 
 sumption that he would disclose his information to his ostensible principal. — 
 National v. New Columbus, 129 Fed. 114; 63 C. C. A. 616. 
 
 Thomson-Houston v. Capitol, 56 Fed. 849; Pine v. Bailey, 94 Fed. 258. 
 
 We are unable to hold, as against the defendant Tagliabue, a purchaser for 
 value of the patents in question, that the verb " completed " should be given 
 any other than its ordinary meaning. Assuming Tagliabue's actual knowl- 
 edge of the assignment, he is not chargeable with notice that its language 
 should receive an extraordinary interpretation. (The attempted interpre- 
 tation being to make " completed or which may be hereafter completed by 
 me " cover inventions made after the assignment was made). — Davis v. 
 Taghabue, 159 Fed. 712; 86 C. C. A. 466. 
 
 § 167. Notice — Constructive. 
 
 Where the recorded agreement and assignment made reference to a second 
 and unrecorded agreement and reservations and conditions therein contained, 
 such record was sufficient to put bona fide purchasers on their inquiry as to 
 the contents of the unrecorded agreement. — Littlefield v. Perry, 88 U. S. 
 205; 22 L. Ed. 577. 
 
 It is well established that one who has reason to believe that another is 
 offering property for sale, which he holds either as trustee or agent for a 
 third person, cannot become a bona fide purchaser of the property for value 
 by reliance on the statements of the suspected trustee or agent, either as to 
 his authority, or as to his beneficial ownership of the thing sold. — Mills 
 V. Whitehurst, 72 Fed. 496; 19 C. C. A. 130. 
 
 Trust Co. V. Boynton, 71 Fed. 797. 
 
 He is a voluntary purchaser, and having notice of a fact which casts doubt 
 upon the validity of his title, the rights of innocent persons are not to be 
 prejudiced through his neghgence. — Mills v. Whitehurst, 72 Fed. 496; 19 
 C. C. A. 130. 
 
 Brush V. Ware, 15 Pet. 93, 112, 114; Oliver v. Piatt, 3 How. 333; Cordova v. 
 Hood, 17 Wall. 1. 
 
 The defendants Weaver and Emminger were purchasers of the interest of 
 Mrs. West for a valuable consideration after the alleged assignment to the 
 partnership, and the oral unrecorded grant to the firm was void as against 
 them and their licensee, the Buck Manufacturing Co., unless they had notice 
 of its existence before they purchased from Mrs. West. — Paulus v. Buck, 
 129 Fed. 594; 64 C. C. A. 162. 
 
 Gates V. Fraser, 153 U. S. 332.
 
 §§ 168-169 ASSIGNMENT 173 
 
 That where an assignee knew that other parties had been in some way 
 interested in the development of a prior invention with the inventor 
 and in the invention in question, or might have known such facts from the 
 Patent Office records, such assignee is put upon his guard, see National v. 
 New Columbus, 129 Fed. 114; 63 C. C. A. 616. 
 
 Cordova v. Hood, 17 Wall. 8; Jonathan v. Whitehurst, 72 Fed. 496. 
 
 § 1 68. Parol. 
 
 An oral agreement for the sale and assignment of the right to obtain a 
 patent for an invention is not within the statute of frauds, nor within section 
 4898 R. S. requiring assignments of patents to be in writing; and may be 
 specifically enforced in equity upon sufficient proof thereof. — Dalzell v 
 Dueber, 149 U. S. 315; 37 L. Ed. 749; 13 S. Ct. 886. 
 
 Somerby v. Buntin, 118 Mass. 279; Gould v. Banks, 8 Wend. 562; Burr v 
 De La Vergne, 102 N. Y. 415; Blakeney v. Goode, 30 Ohio St. 350. 
 
 Complainant who had a series of patents and inventions, assigned to 
 defendant those appertaining to his established business. The invention of 
 the patent in suit was at that time unpatented but was in esse. Complainant 
 claims that he reserved this invention (apparently mentally). Held: It 
 would be difficult to conceive that intelligent men would omit from the cal- 
 culation an element so essential to the success of the enterprise. To hold 
 otherwise would be to credit the cunning of appellant a success, and to the 
 committee that dealt with him a stupidity, that the care shown in all the other 
 branches of the negotiation clearly discredit. — Cook v. Sterling, 150 Fed. 
 766; 80C. C. A. 502. 
 
 An arrangement entered into, in contemplation of incorporation, and fol- 
 lowed by incorporation, is binding upon the parties, when all the terms of 
 the contract except the one in dispute have been fully and in good faith 
 executed, and the disputed term fails of execution through the fraud, mis- 
 take, or inadvertence of the parties. To hold, in this respect, as we are asked 
 to hold, would be to make all agreements preliminary to incorporation of no 
 avail, notwithstanding the completion of the transaction by incorporation — 
 a doctrine that in the present development of the law has no standing what- 
 ever. — Cook V. Sterling, 150 Fed. 766 ; 80 C. C. A. 502. 
 
 As a general rule, a parol contract reduced to writing, is to be held as 
 fully expressed in the writing. But this does not exclude a court of equity 
 from the inquiry whether, by fraud, mistake, or inadvertence, the writing 
 fails to express the agreement; or (such fraud, mistake, or inadvertence 
 appearing) from giving force to the oral agreement. — Cook v. Sterling. 150 
 Fed. 766; 80 C. C. A. 502. 
 
 § 169. Part Interest. 
 
 If the owner assigns a part of his invention it must be an undivided por- 
 tion of his entire interest under the patent, placing the assignee upon an 
 equal footing with himself for the part assigned. Upon such an assignment, 
 the patentee and his assignees become joint owners of the whole interest 
 secured by the patent, according to the respective proportions which the 
 assignment creates. — Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 The assignment of a part interest of a patent pending suit does not defeat 
 the action. — Moore v. Marsh, 74 U. S. 515; 19 L. Ed. 37. 
 
 Kilborn v. Rewes, 8 Gray, 415; Eades v. Harris, 1 Younge & C. 230.
 
 174 THE FIXED LAW OF PATENTS §§ 170-171 
 
 How a patent monopoly may not be divided. — Pope v. Gormully, 144 
 U. S. 238; 36 L. Ed. 420; 12 S. Ct. 637. 
 
 § 170. Pendente Lite. 
 
 The fact of the assignment of the Hofman patent pendente Hte, and of 
 all rights thereunder to any claims for, profits or damages, was not known 
 to the circuit court. The defendant definitely learned of this assignment 
 on Nov. 28, 1894, and thereafter, and before the argument upon the appeal, 
 moved this court to remand the case to the circuit court with directions 
 to dismiss the bill, but without prejudice to the rights of the assignee to 
 apply for leave to file an original bill in the nature of a supplemental bill. 
 This motion was properly denied. A peremptory dismissal of the bill, as 
 will be seen hereafter, was not permissible ; and furthermore, while Appleton 
 and others were complainants, Ecaubert was seeking affirmative relief against 
 them by his cross bill, and his right to relief, if any he had, could not be 
 injuriously affected by the complainant's assignment. If the court should 
 decree adversely to the validity of the Hofman patent, its assignees would 
 be bound by the decree, because, irrespective of the question whether they 
 had become the actual parties, they, being assignees were charged with 
 notice of the suit, and bound by its results. Thus, where a plaintiff — who 
 as owner of a patent, had brought suit for infringement and had assigned 
 his interest in the patent pendente lite — asked the court to dismiss his bill, 
 after an answer praying for affirmative relief, it was held that a possible 
 right in the defendant to have a decree in his favor could not be defeated 
 by such an assignment and by permission to dismiss the bill. — Ecaubert v. 
 Appleton, 67 Fed. 917; 15 C. C. A. 73. 
 
 Electrical v. Brush, 44 Fed. 602. 
 
 If a sole plaintiff, suing in his own right, assigns the whole interest to 
 another, he is no longer able to prosecute the suit because he is without 
 interest in the litigation. 
 
 Nor would the fact that the assignment included collateral considera- 
 tions, such as increase of consideration to be paid in the event of success of 
 the litigation, or agreement to prosecute the action by the assignor, alter 
 the condition of title. — Automatic v. Cutler-Hammer, 147 Fed. 250; 77 
 C. C. A. 176. 
 
 Ecaubert v. Appleton, 67 Fed. 917. 
 
 § 171. Power of Attorney. 
 
 He undertook to give them an exclusive license, embracing the entire 
 territory covered by the patent, and running for the full period of its life. 
 We agree with the circuit court that this was a virtual, if not actual sale, 
 and was therefore in excess of his authority (of working and developing the 
 business of the said patent). What constitutes a sale of a patent, as an 
 abstract question need not be discussed. It is sufficiently considered in 
 Nellis V. Mfg. Co., 13 Fed. 451 ; Pickhardt v. Packard, 22 Fed. 532; Water- 
 man V. MacKenzie, 138 U. S. 252; 2 Rob. Pat. Sec. 763; Curt. Pat. pp. 241- 
 243. — Union v. Johnson, 61 Fed. 940; 10 C. C. A. 176. 
 
 There can be no question that, under the power of attorney, the agent 
 had full authority to assign the patent. But it is equally clear that his 
 authority could be exercised only upon terms that should be first communi- 
 cated to and accepted by his principal. The purported assignment, there- 
 fore, was clearly insufficient to transfer a title to the patent, not only be- 
 cause it was the act and deed of the agent, and not of the principal (Ma- 
 chesney v. Brown, 29 Fed. 145, and cases there cited) but for the further
 
 |§ 172-175 ASSIGNMENT 175 
 
 reason that the agent exercised a power not conferred upon him, in that 
 he made a transfer of the patent without communicating the terms of the 
 sale to his principal, or obtaining his approval thereof. — Chauche v. Pare 
 75 Fed. 283; 21 C. C. A. 329. 
 Johnson v. Union, 59 Fed. 20; Union v. Johnson, 61 Fed. 940. 
 
 § 172. Recording. 
 
 The record is intended for the benefit of the pubhc. Bona fide purchasers 
 look to it for their protection. The record of the grant alone, therefore, 
 furnishes the strongest evidence of the intention of the parties. — Little- 
 field V. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 An agreement to " license, grant and convey " future inventions, is not 
 an assignment of a patent, and is not recordable. — Regan v. Pacific 49 
 Fed. 68; 1 C. C. A. 169. 
 
 § 173. Reissue. 
 
 The words " to the full end of the term for which the said letters patent 
 are or may be granted " embraced in an assignment carries both reissues 
 and extensions of the patent. — Nicholson v. Jenkins, 81 U. S. 452; 20 
 L. Ed. 777. 
 
 R. R. V. Trimble, 10 Wall. 367. 
 
 Reissues are not patents for new inventions, but amendments of old 
 patents. If a reissue is obtained with the consent of an assignee, it inures 
 at once to his benefit; if without he has his election to accept or reject 
 it. — Littlefield v. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 § 174. Specific Performance. 
 
 A court of equity will not enforce an assignment from employee to em- 
 ployer upon a proved oral agreement which is unconscionable. — Dalzell v 
 Dueber, 149 U. S. 315 ; 37 L. Ed. 749 ; 13 S. Ct. 886. 
 
 Cathcart v. Robinson, .30 U. S. 264; Mississippi v. Cromwell. 91 U S 643- 
 Pope V. GormuUy, 144 U. S. 224. , ■ ■ o, 
 
 A court of chancery will not decree specific performance, unless the agree- 
 ment is " certain, fair, and just in all its parts." — Dalzell v. Dueber 149 
 U. S. 315; 37 L. Ed. 749; 13 S. Ct. 886. 
 
 Buxton V. Lister, 3 Atk. 383; Underwood v. Hitchcox, 1 Ves. sec. 279- Franks 
 V. Martin, 1 Eden, 309. 
 
 Uncertainty as to the meaning of a contract is fatal to a claim for its 
 specific performance. — Davis v. Tagliabue, 159 Fed. 712; 86 C. C. A. 466. 
 
 § 175. Territorial. 
 
 The holder of a territorial right, if exclusive although limited as to number 
 of machines, holds such an interest as will enable him to sue for infringement 
 in his own territory. — Wilson v. Ronsseau, 4 How. 646; 11 L. Ed. 1141. 
 
 The assignment of an exclusive right to make and use, and to vend to 
 others machines within a given territory only, authorizes the assignee to 
 vend elsewhere out of the said territory, the product of said machines 
 Simpson v. Wilson, 4 How. 709; 11 L. Ed. 1169. 
 
 The patentee may assign his exclusive right within and throughout a 
 specified part of the United States, and upon such an assignment, the
 
 176 THE FIXED LAW OF PATENTS § 176 
 
 assignee may sue in his own name for an infringement of his rights. But in 
 order to enable him to sue, the assignment must undoubtedly convey to 
 him the entire and unquahfied monopoly which the patentee held in the 
 territory specified — excluding the patentee himself as well as others. And 
 any assignment short of this is a mere hcense. — Gayler v. Wilder, 10 How. 
 477; 13 L. Ed. 504. 
 
 § 176. Miscellaneous Rulings. 
 
 An assignment made and recorded, based upon a definite consideration 
 never paid, and which is treated as a nullity by the parties, is void. — Rail- 
 road V. Trimble, 77 U. S. 367 ; 19 L. Ed. 949. 
 
 See Emerson v. Slater, 22 How. 41. 
 
 An assignment made subsequent to a mortgage assignment duly recorded 
 within the three months is subject to the mortgage, though not in terms 
 so expressed. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 
 S. Ct. 334. 
 
 When a patentee contracts for the use or sale of the patented article upon 
 the payment of certain royalties, he cannot, as against such licensee, main- 
 tain a suit for infringement simply upon the ground that the licensee has 
 failed to pay the agreed sum. — Atkins v. Parke, 61 Fed. 593; 10 C. C. A. 
 189. 
 
 Kartell v. Tilghman, 99 U. S. 547. 
 
 That where the evidence shows that the inventor agreed to assign his 
 invention, and afterward refused so to do, he cannot recover for infringe- 
 ment, see Schmitt v. Nelson, 125 Fed. 754; 60 C. C. A. 522. 
 
 Acheson, J. dissenting (and I think most properly). 
 
 The assignment by the patentee who resided in England was made for 
 the express purpose of enabling the assignee-trustee and his associates to 
 exploit the invention, the assignee-trustee and his associates to license the 
 use of the device, but not to sell or assign any part of the patent, and to 
 pay the assignor one-third of all license fees. The successor of the assignee- 
 trustee subsequently manufactured and sold the devices and did not account 
 for all of the same, but did account in part, and the assignee accepted pay- 
 ments thereunder. Held: 
 
 We incline to agree with the court below that the correspondence between 
 complainant and the patents company shows a sufficient acquiescence 
 on the part of the complainant, in this mode of conducting business under 
 the agreement, to estop him from now objecting thereto. 
 
 Sufficient evidence has been adduced, as to suppression of facts in regard 
 to the amount of license fees collected and not accounted for, and under- 
 charges in license fees due for devices made by defendants, accompanied by a 
 refusal to make full disclosure of the books and accounts of said company, 
 to clothe the complainant with a right to pursue defendants for redress in 
 some form of action. 
 
 Equity and good conscience clearly require that these defendants, as 
 trustees of these license fees, should be charged with the highest rate ever 
 collected from outsiders for similar articles. — Duff v. Gilliland, 139 Fed. 16; 
 71 C. C. A. 428. 
 
 We are of the opinion that the short description in the title head is re- 
 quired for the purposes of Patent Office classification, that a conveyance 
 by reference to the title head alone would be uncertain because applicable 
 to any of the class, and that the name of the patentee and the serial number
 
 §§ 177-179 ATTORNEYS 177 
 
 afford a clear and definite description There can be but oneMaginn patent 
 numbered 415,212. - Maginn v. Standard 1/0 Fed 139 80 C. C^^^^^^^^^^ 
 Note- This is good law very poorly stated. The title head uicmaes 
 name nuniber and short title. " Short title " is what the court meant. 
 ThTuse o" the word " serial " is error; that word apphes to the number 
 of the application. What was meant was the patent number. 
 
 The assignment of the patent carried no such ^^^^t. (The right to u^e 
 the inventor's name and a certain mark m connection with it.) ihe name 
 was not an essential part of the trademark, and, if the conveyance gave 
 r; Sght to use the Lme, it was only in connection with the particukr 
 representation of a shoe upon a cushion. - Reed v. Frew, 162 Fed. 887, 
 
 89 C. C. A. 577. 
 
 ATTORNEYS ^t . tt • 
 
 Statutory Provision § 177 §'"'^^^8^ "^^ " 
 
 § I4y) 
 
 s 177. Statutory Provision. . .v, t, . ^ 
 
 Ihe only statuto.yprovi«^^ 
 
 Statute IS sec. 487, w'''*S'™A„T, the powers given the Commissioner 
 nition for gross misconduct ""fj^^'^^Kt qualifications for practice 
 l^toTentUrllrbeS^prSerbulls egewhere noted, these pro- 
 visions are wholly inadequate. 
 
 S 178. Acts Binding. 
 
 bound by the acts of his counsel. — Dobson v. Lees, id / u . o. 
 652; llS.Ct.71. 
 
 Fed. 831; 57 C. C. A. 313. 
 
 ca?oTe>»e;^-rrS^-^^^^ 
 844; 69C. C. A. 628. 
 
 S 170. Assignment by — Notice. 
 
 iamberlain was Neer's attorney -jndh^^^^^^^^ 
 was asked to find whether Neerwoud sell, ^n^ f ^^^f P,^ his client that 
 the apphcation from ^^^ V- ' VldThen aSgned the apphcation to com- 
 he was buying fo^.^^^^^P^^^^V^.^Vetrie^^ In the whole trans- 
 
 plainant at more than double the price he naa i ^^^^^^^^^^3 there is 
 
 action he was acting in his own intere^^^^ ^^ ^^ ^^^.^jble 
 
 no P-umption tha he -uW ^^c^^^^^^ Fed. 114; 63 C. C. A. 616. 
 ThTlnTnoront Ca^'pitol. 56 Fed. 849; Pine .. Bailey, 94 Fed. 258.
 
 178 
 
 THE FIXED LAW OF PATENTS 
 
 §§ 180-183 
 
 § i8o. Statements on Argument — Not Evidence. 
 
 That the mere argument of a soHcitor found in the file-wrapper, in the 
 absence of any amendment to conform thereto, cannot be held to limit or 
 extend the claim, see Boyer v. Keller, 127 Fed. 130; 62 C. C. A. 244. 
 
 Acme V. Carey, 96 Fed. 344; Society v. Rehfuss, 75 Fed. 657; Daylight v. 
 Marcus, 110 Fed. 980. 
 
 § i8i. Miscellaneous. 
 
 The commissioner of patents has no right to make the former misconduct 
 of an attorney or solicitor a ground for refusing him his rights upon proper 
 demand. He cannot enforce an apology by withholding rights. Ill manners 
 or bad manners do not work a forfeiture of men's civil rights. — Boy den v. 
 Burke, 14 How. 575; 14 L. Ed. 548. 
 
 Right to amend. — Eagleton v. West, 111 U. S. 490; 28 L. Ed. 493; 4 
 S. Ct. 593. 
 Distinguished, De La Vergne v. Featherstone, 147 U. S. 209. 
 
 BANKRUPTCY. " 
 
 Statutory Provision § 182 
 
 Title to Patent § 183 
 
 § 182. Statutory Provision. 
 
 Sec. 5046, R. S. provided for the vesting of the title to letters patent in 
 the assignee in bankruptcy under the old act. The Act of July 1, 1898 (30 
 Stat. 565) in sec. 70, provides for the vesting of the title in the trustee of 
 the bankrupt under the present act. It will be noted that the following 
 rules were made with reference to conditions arising under the old act. 
 
 § 183. Title to Patent. 
 
 If the existence of a patent had been concealed by the bankrupt, or the 
 assignee had discovered it subsequently — after his discharge — and de- 
 sired to take possession of it for the benefit of the estate, it is possible the 
 bankruptcy court might reopen the case and vacate the discharge for that 
 purpose. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 799. 
 
 Clark V. Clark, 58 U. S. 315. 
 
 While, under the provisions of the bankrupt law, the title to this patent 
 passed undoubtedly to the assignee in bankruptcy, it passed subject to an 
 election on his part not to accept it, if, in his opinion, it was worthless, or 
 would have proved to be burdensome and unprofitable. And he was en- 
 titled to a reasonable time to elect whether he would accept it or not. — 
 Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 799. 
 
 American v. Garrett, 110 U. S. 288; Sparhawk v. Yerkes, 142 U. S. 1; Amory 
 V. Lawrence, 3 Cliff. 523. 
 
 CLAIMS (see § 249) 
 
 Statutory Provision § 184 
 
 Purpose of the Claim § 185 
 
 Ambiguity § 186 
 
 Combination § 187 
 
 Construction 
 
 Beneficial Use § 188 
 Broad and Narrow § 189 
 
 Comparison § 190 
 Dissecting § 191 
 Drawings § 192 (see § 362) 
 Duplication § 193 
 Equivalents § 194 {see § 373) 
 Expanding § 195 
 Functional § 196 (see § 426)
 
 §§ 184-185 
 
 CLAIMS 
 
 179 
 
 Generic § 197 
 
 Improvement § 198 (see § 430) 
 
 Limitation 
 
 Broadening by Amendment 
 
 § 199 (see § 52) 
 
 Disclaimer § 200 (see § 339) 
 
 By Applicant § 201 
 
 Elements of Claim § 202 
 
 Failure to Claim § 203 (see § 1) 
 
 General Rules § 204 
 
 Improvement § 205 (see § 430) 
 
 Narrow Improvement § 206 
 
 Patent Office Action Limiting 
 
 §207 
 
 Patent Office Action Not Limit- 
 ing § 208 
 
 Patent Office Action — Protest 
 
 §209 
 
 Patent Office Action — Rule 
 
 §210 
 
 Specific Claims § 211 
 
 Specification and Drawings 
 
 § 212 (see § 900) 
 
 State of Art § 213 
 
 Words of Limitation § 214 (see 
 
 § 936) 
 
 Miscellaneous Rules § 215 
 Limitation to Avoid Anticipation 
 §216 
 
 Narrow § 217 
 
 Omitting Element § 218 
 
 Plain Intent and Meaning § 219 
 
 Reading in Elements § 220 
 
 Reference Characters § 221 
 
 Rules — General § 222 
 
 Specification § 223 (see § 900) 
 
 State of Art § 224 
 
 Unclaimed Elements § 225 
 
 Undue Limitation by Patentee 
 
 §226 
 
 Unduly Broad § 227 
 
 Valeat quam Pereat Rule § 228 
 
 AVords and Phrases § 229 (see 
 
 §936) 
 
 Miscellaneous Rulings § 230 
 Designs § 231 (see § 328) 
 Elements (see § 249) 
 
 Essential § 232 
 
 Redundant § 233 
 
 Reference Characters § 234 
 
 Terminology § 235 
 Excessive 
 
 Duplication § 236 
 
 Effect of § 237 
 
 Foreclosing Improvement § 238 
 Expansion § 239 
 Failure to Claim § 240- 
 Generic § 241 
 Novelty § 242 
 Process § 243 (see § 813) 
 Purpose of § 244 
 Scope § 245 
 Specific § 246 
 Sufficiency § 247 
 Void § 248 
 
 See — Divisional Patenting § 348; 
 Double Patenting § 356; Equivalents 
 § 373; I mprovement § 432; Invention 
 §§ 603-12; Process §§ 814, 820; 
 Wards and Phrases § 936 
 
 § 184. Statutory Provisions. 
 
 Before any inventor or discoverer shall receive a patent for his invention 
 or discovery, he shall make application therefor, in writing, to the Commis- 
 sioner of Patents, and shall file in the Patent Office a written description of 
 the same, and of the manner and process of making, constructing, compound- 
 ing and using it, in such full, clear, concise, and exact terms as to enable any 
 person skilled in the art or science to w'hich 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 contemplated applying that principle, so as to dis- 
 tinguish 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. The specification and claim shall be signed by 
 the inventor and attested by two witnesses. R. S. 4888. 
 
 § 185. Purpose of the Claim. 
 
 Probably, no better definition of the object and purpose of the claim is 
 to be found than that given almost at the inception of patent decisions, in 
 Evans v. Eaton, 7 Wheat. 356. 
 
 The specification has two objects: one is to make known the manner of 
 construction so as to enable the artisans to make and use it, and thus to give 
 the public the full benefit of the discovery after the expiration of the patent. 
 The other is to put the public in possession of what the party claims as his 
 invention, so as to ascertain if he claim anything that is in common use, or
 
 180 THE FIXED LAW OF PATENTS §§ 186-188 
 
 is already known, and to guard against prejudice or injury from the use of 
 an invention, which the party may otherwise innocently suppose not to be 
 patented. It is therefore, for the purpose of warning an innocent purchaser, 
 or other persons using a machine, of his infringement of the patent; and at 
 the same time taking from the inventor the means for practicing upon the 
 credulity, or the fears of other persons by pretending that his invention is for 
 more than what it really is, or different from its ostensible objects. 
 
 § i86. Ambiguity. 
 
 Without deciding that a repetition of substantially the same claim in 
 different words will vitiate a patent, we hold that where a specification by 
 ambiguity and needless multiplication of nebulous claims is calculated to 
 deceive and mislead the public the patent is void. — Carlton v. Bokee, 84 
 U. S. 463; 21 L. Ed. 517. 
 
 There is here no sufficient foundation upon which to rest a claim which, if 
 construed as broadly as the complainant insists it should be, practically 
 makes all pay tribute who stir the mixture in question by machinery and by 
 hand also, provided substantially the same movement can be produced. — 
 Marchand v. Emken, 132 U. S. 195; 33 L, Ed. 332; 10 S. Ct. 65. 
 
 § 187. Combination. 
 
 In case of a claim for a combination, where all the elements of the invention 
 are old, and where the invention consists merely in the new combination of 
 old elements or devices whereby a new and useful result is attained, such 
 combination is sufficiently described if the elements or devices of which it is 
 composed are all named and their mode of operation given, and the new and 
 useful result to be accomplished pointed out, so that those skilled in the art 
 and the public may know the extent and nature of the claims, and what the' 
 parts are which cooperate to produce the described new and useful result. — 
 Bates V. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Curt. Pat. sec. 489; Seymour v. Osborne, 11 Wall. 542. 
 
 The claims of the patents sued on in this case are claims for combinations. 
 In such claims, if the patentee specifies any element as entering into the com- 
 bination either directly by the language of the claim or by such a reference 
 to the descriptive part of the specification as carries such element into the 
 claim, he makes such element material to the combination and the court 
 cannot declare it to be immaterial. It is his province to make his own claim 
 and his privilege to restrict it. If it be a claim to a combination, and be 
 restricted to specified elements, all must be regarded as material, leaving open 
 only the question, whether an omitted part is supplied by an equivalent device 
 or instrumentality. — Fay v. Cordesman, 109 U. S. 408; 27 L. Ed. 979; 
 3 S. Ct. 236. 
 
 Water v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640. 
 
 An attempt to incorporate into a claim for a combination a feature which 
 had not been claimed in connection with the combination before, and thereby 
 make a new combination will not be heard. — Albany v. Worthington, 79 
 Fed. 966; 25 C. C. A. 258. 
 
 § 188. Construction — Beneficial Uses. 
 
 A patentee who is first to make an invention is entitled to his claim for 
 all the uses and advantages which belong to it. — Stow v. Chicago, 104 U. S. 
 547; 26 L. Ed. 816.
 
 §§ 189-190 CLAIMS 181 
 
 Woodman v. Stimpson, 3 Fish. P. C. 98; Tucker v. Spalding, 80 U. S. 453; 
 Graham v. Mason, 5 Fish. P. C. 1. 
 
 An inventor is entitled to a beneficial function of his invention, whether he 
 knew all its beneficial uses or not. — Goshen v. Bissell, 72 Fed. 67; 19 C. 
 C. A. 13. ^ 
 
 McCormick v. Aultman, 69 Fed. 371; Roberts v. Ryer, 91 U. S. 150; Brown 
 V. D. C. 130 U. S. 87-103; Fames v. Andrews, 122 U. S. 40; Miller v. Mfg. Co. 
 151 U. S. 201; Stow v. Chicago, 104 U. S. 550; Tucker v. Spalding, 13 Wall. 453; 
 Appleton V. Star, 60 Fed. 411; Western v. Sperry, 58 Fed. 186; Gait v. Parlin, 
 60 Fed. 422; DLxon v. Pfeifer, 55 Fed. 390; Thompson v. National, 65 Fed. 427. 
 
 § 189. Construction — Broad and Narrow. 
 
 It is possible, and perhaps probable, that the second claim might be con- 
 strued as covering not only non-conducting material placed between the 
 spiral layers, but such other means as might occur to the skilled mechanic 
 as useful for that purpose, but it does not, it seems to us, necessarily follow 
 that the inventor is bound to rely upon such scope as would probably result 
 from construction. He may, for the purpose of describing the extent of his 
 claims, not only state the general principles and reciuisite features of the in- 
 vention in one claim, but the general princiioles and requisite features in 
 another claim, supplementing this with a more particular description of 
 the details involved in the contemplated structure. We do not consider 
 the claims identical, and therefore, one or the other superfluous, but view 
 the first claim as broader than the second in the respect which we have stated 
 and not inconsistent therewith. — ConsoUdated v. West End, 85 Fed. 622; 
 29 C. C. A. 386. 
 
 Where there are several claims, if some of the claims are limited to details, 
 those which remain are prima facie not to be fettered by insisting that they 
 contain as necessary elements, the particulars which are siDecifically covered 
 elsewhere. — Bresnahau v. Tripp, 102 Fed. 899; 43 C. C. A. 48. 
 
 § 190. Construction — Comparison. 
 
 In our opinion, the special office of the second and third claims was to 
 secure combinations containing the pivoted pitman and the pitman 
 rod described in the specification and omitted from the first claim, and the 
 fact these claims were added is a very persuasive argument that the addi- 
 tional elements they protect were not secured by the first claim. Any con- 
 struction which would read into the first claim these additional elements, 
 renders it useless and unmeaning, because it gives it the same effect as the 
 claims which follow it, and in this way shows that neither the patentee nor the 
 patent office contemplated such an interpretation. — Mast v. Dempster, 82 
 Fed. 327; 27 C. C. A. 191. But see 177 U. S. 485. 
 
 It is necessary where the complainant limited its suit, to one claim out of 
 the many in the patent, to make sure that the claim in issue does not receive 
 improper color or breadth from those not in issue. — Eppler v. Campbell, 
 86 Fed. 141; 29C. C. A.616. 
 
 The very fact that the other elements mentioned in the specification, while 
 expressly embraced in the other claims, were not mentioned in the sixth 
 claim, demonstrates an intention to cover by that claim any and all forms of 
 disintegrators in the construction of which that cylinder should be used. — 
 Anderson v. Potts, 108 Fed. 379; 47 C. C. A. 409.
 
 182 THE FIXED LAW OF PATENTS §§ 191-194 
 
 Separate claims are not to be construed as identical unless fairly unavoid- 
 able. — Lamson v. Hillman, 123 Fed. 416; 59 C. C. A. 510. 
 
 United v. California, 25 Fed. 475; Cohansey v. Wharton, 28 Fed. 189; Ton- 
 deur V. Stewart, 28 Fed. 561; Smead v. Union, 44 Fed. 614; National v. American, 
 53 Fed. 367; Felix v. Ledos, 54 Fed. 163. 
 
 That a construction which would render two claims substantially identical 
 should be avoided where possible, see O'Rourke v. McMuUen, 160 Fed. 933. 
 
 Bresnahan v. Tripp, 102 Fed. 899; Thomson-Houston v. Nassau, 110 Fed. 
 647. 
 
 §191. Construction — Dissecting. 
 
 It is manifestly just to a patient and meritorious inventor that the court 
 should be careful not to regard with too much importance the mere mechani- 
 cal resemblance in the parts of the combination, or the combination as a 
 whole, to the neglect of the result, and the success and efficiency with which 
 the object aimed at is accomplished. — Kalamazoo v. Duff, 113 Fed. 264; 
 51 C. C. A. 221. 
 
 / 
 
 / 
 
 § 192. Construction — Drawings. 
 
 When a drawing merely shows one special construction not pointed out 
 and defined as to its value, and the device is broadly claimed, the drawing 
 alone will not serve to limit the claim so as to save it from being void for 
 broadness. — Consolidated v. Metropolitan, 60 Fed. 93; 8 C. C. A. 485. 
 DeLamater v. Heath, 58 Fed. 414. 
 
 We know of no principle of patent construction which, in such a case (the 
 improvement being novel) would require the court to read into the claim the 
 particular concrete form of improvement shown in the drawangs and in the 
 descriptions of such drawings. — Consolidated v. Littaner, 84 Fed. 164; 
 28 C. C. A. 133. 
 
 § 193. Construction — Duplication. 
 
 While, according to strict rules of law, two distinct claims for the same 
 substantial matter, differing only in nonessentials, cannot both be sustained, 
 yet out of regard to the frailty of human methods of expression, and the 
 variety of views among different legal judicial tribunals as to the construc- 
 tion of instruments of the character of letters patent, and conceding also, 
 the difficulty of always correctly defining what one's invention really is, the 
 practice has become settled to allow the same substantial invention to be 
 stated in different ways, very much as the same cause of action, or the same 
 offense intended to be covered by indictment, are permitted to be propounded 
 in different counts, with a general verdict on all of them. — Dececo v. Gil- 
 christ, 125 Fed. 293; 60 C. C. A. 207. 
 
 § 194. Construction — Equivalents. 
 
 Though a claim is not entitled to the broad construction it would appear 
 to imply, it still may be held to be infringed by a construction which comes 
 within a limited construction of such claim. — Lawther v. Hamilton, 124 
 U. S. 1; 31 L. Ed. 325; 8 S. Ct. 342. 
 
 Among cases which run to the other extreme, where the range of equiva- 
 lents is held to be verv narrow are Hasten v. Hunt, 51 Fed. 216; 55 Fed. 78; 
 Ball V. Ball, 58 Fed. 818; Ball v. Edgarton, 96 Fed. 489; Millard v. Chase, 
 108 Fed. 399. In some of this class the nature of the invention prohibited 
 anything except the narrowest range of equivalents, it being a practical rule
 
 § 195 CLAIMS 
 
 183 
 
 that the range is proportionate to the extent of the invention; but some are 
 within the expressions of Reece v. Globe, 61 Fed. 958, to the effect that words 
 and phrases which might have been omitted may be so introduced as to leave 
 the courts no option except to regard them as limitations. — U. S. Peg- 
 Wood V. Sturtevant, 125 Fed. 382; 60 C. C. A. 248. 
 
 Where two patents like those in question relate to improved mechanical 
 arrangement, and where the structural and mechanical adaptations are so 
 entirely different, and the modes of operation so entirely unlike, the situation 
 does not admit of the doctrine of equivalents as a foundation for finding and 
 holding infringement. Each should stand upon its merits, unaided by a, 
 liberal rule of judicial construction extending the claims beyond the mechani- 
 cal arrangement described. — Yawman v. Library, 147 Fed. 246; 77 C. C. 
 A. 388. 
 
 § 195. Construction — Expanding. 
 
 It is well known that the terms of the claim in letters 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. — 
 Burns v. Meyer, 100 U. S. 671 ; 25 L.Ed. 738. 
 
 Court will not import elements that would operate to so enlarge its scope 
 as to cover an invention not indicated upon its face. — Wollensak v. 
 Sargent, 151 U. S. 221; 38 L. Ed. 137; 14 S. Ct. 291. 
 
 Day V. Fairhaven, 132 U. S. 98. 
 
 While this may be done (reading an old element into a claim) with a view 
 of showing the connection in which a device is used, and proving that it 
 is an operative device, we know of no principle of law which would authorize 
 us to read into a claim an element which is not present, for the purpose of 
 making out a case of novelty or infringement. The difficulty is that, if we once 
 begin to include elements not mentioned in the claim, in order to limit such 
 claim and avoid a defense of anticipation, we should never know when to stop. 
 — McCarty v. Lehigh, 160 U. S. 110; 40 L. Ed. 358; 16 S. Ct. 240. 
 
 The patent was for an improvement in burglar-proof safes. There was no 
 claim made upon the lock, but any suitable locking device was specified. 
 Defendant applied the lock shown in the patent in suit to a jail cage. Held: 
 In this case there was no claim for a lock or locking device, but for an im- 
 provement in safes; and it would unquestionably be extending the terms 
 of the patent to afford protection against infringement in the use of a lock 
 omitting the principal element mentioned in the specifications and claim. — 
 Gerard v. Diebold, 54 Fed. 889; 4 C. C. A. 644. 
 
 Keystone v. Phoenix, 95 U. S. 274; McClain v. Ortmayer, 141 U. S. 419. 
 
 The enlargement of a claim to cover infringement beyond the scope of the 
 application would render the patent void. — Erie v. American, 70 Fed. 58 ; 
 16 C. C. A. 632. 
 
 De La Vergne v. Valentine, 66 Fed. 771. 
 
 We do not entertain any doubt that there must be incorporated into these 
 claims, by implication, means for maintaining the contact device and the 
 conductor in their normal working relations. — Thomson - Houston v. 
 Union, 86 Fed. 636; 30 C. C. A. 313.
 
 184 THE FIXED LAW OF PATENTS § 195 
 
 The statute provides for a correction of defective patents by means of 
 reissue, and we are of the opinion that a court of equity has no power, in a 
 suit for infringement, to give existence on the theory of correcting a mistake, 
 to a patent never issued in the mode provided by law, and adjudge damages 
 for its infringement. — Chuse v. Ide, 89 Fed. 491 ; 32 C. C. A, 260. 
 
 That elements not clearly indicated as part of a combination cannot be 
 read into the claims, see Wilson v. McCormick, 92 Fed. 167; 34 C. C. A. 280. 
 
 While the patent is notice of the claims which it contains and allows, it 
 constitutes an estoppel of the patentee from claiming under that or any sub- 
 sequent patent any combination or improvement there shown which he has 
 not clearly pointed out and distinctly claimed as his discovery or invention 
 when he received his patent. It is a complete and a legal notice to every 
 one — notice on which every one has a right to rely — that he may freely 
 use such improvements and combinations without claim or molestation from 
 the patentee. It would constitute rank injustice to permit an inventor, 
 after a combination or device that he did not distinctly claim in his patent 
 had gone into general use, and years after his patent had been granted, to 
 read that combination or device into one of the claims of his patent, and to 
 recover for its infringement of every one who had used it upon the faith of 
 his solemn declaration that he did not claim it. This would be the effect of a 
 reversal of the decree below.— M'Bride v. Kingman, 97 Fed. 217; 38 C. C. 
 A. 123. 
 
 BuUdiug V. Eustis, 65 Fed. 804; Stirrat v. Mfg. Co. 61 Fed. 980; Adams v. 
 LindeU, 77 Fed. 432. 
 
 It is not within the rightful power of the courts to enlarge or restrict 
 the scope of patents which by mistake, were issued in terms too narrow or 
 too broad to cover the invention, however manifest the fact and extent of 
 the mistake may have shown to have been. — United States Repair v. 
 Assyrian, 100 Fed. 965; 41 C. C. A. 123. 
 
 The object of the claim in a patent is to publish to the world the precise 
 nature of the invention which the patentee seeks to protect. He cannot 
 demand that there shall be imported into it an element which is not there 
 distinctly stated or necessarily implied. — Santa Clara v. Prescott, 102 Fed. 
 501 ; 42 C. C. A. 477. 
 
 In view of the fact that the invention was the hanging of the motor below 
 the car, one end being centered upon the axle, and the other end being 
 flexibly attached by springs to the truck frame, it cannot be subdivided, 
 and claim four must be construed to include the flexible support of the off 
 end of the motor from an independent structure which is the truck frame, or 
 from the independently mounted body of the vehicle. — Sprague v. Nassau, 
 102 Fed. 761; 42 C. C. A. 612. 
 
 That reference to a subsequent patent to the same inventor may not be 
 made for the purpose of expanding the claims of the patent in suit, see 
 Union v. Battle Creek, 104 Fed. 337; 43 C. C. A. 560. 
 
 The courts will not, in the absence of an inclusive claim, go into the history 
 of the art, to ascertain what was really discovered, and what might have 
 been patented, had the patentee chosen. The patentee will be taken at his 
 word, and protected only according to the terms in which he has himself 
 demanded protection. — Consolidated v. Seybold, 105 Fed. 978; 45 C. C. A. 
 152.
 
 I: 195 CLAIMS 185 
 
 The court is not at liberty by construction to expand a claim beyond the 
 fair meaning of its terms. This claim is for a combination. Its terms are 
 explicit and clear. It needs no interpretation. It speaks for itself. The court 
 must take the claim as it finds it. — Pittsburg v. Pittsburg, 109 Fed. 644; 
 48 C. C. A. 580. 
 
 The claim does not contain any apt language which would suggest to a 
 casual reader that the patentee intended to incorporate as one of the ele- 
 ments thereof the invention consisting of the supplemental chamber and a 
 slotted partition wall, which are covered completely by the first claim ; and 
 in the absence of words which do clearly indicate such a purpose, we are not 
 disposed to import into a claim a feature of construction already protected 
 by another claim, merely for the purpose of sustaining the claim, and sub- 
 jecting another to the charge of infringement. — Metalhc v. Brown, 110 Fed. 
 665; 49C. C. A. 147. 
 
 McCarty v. Railroad, 160 U. S. 110; Steams v. Russell, 85 Fed. 218; Wilson 
 V. Macliine Co. 92 Fed. 167. 
 
 The most liberal rule of construction known to the patent law will not 
 sanction such an interpretation of the specification and claims of a patent, 
 or such an expansion of the invention (viz., disregarding the specific feature 
 repeatedly mentioned as the essence of the invention). Such a construction 
 and enlargement of the claim are manifestly a contradiction of its specific 
 terms, and an attempt to read into the patent a structure never contemplated 
 by the patentee, and entirely outside of his invention. — General v. Webster, 
 113 Fed. 756; 51 C. C. A. 446. 
 
 If this tipping capacity had been pointed out, and even this indefinite 
 direction given by the patentee as to the mode of securing the operation, the 
 patent might possibly be saved. But neither the advantage of such a func- 
 tion, nor any hint that it is in any wise dependent upon the normal tension 
 of the retaining wires, is to be found in the patent. How, then, is it possible 
 for the public to obtain a knowledge of this new function? — Goodyear v. 
 Rubber, 116 Fed. 363; 53 C. C. A. 583. 
 
 If, when thus examined, the specification answers the calls of the claim, 
 there is no difficulty. But one may not read into a claim an element not 
 contained in it when its meaning is once settled by construction. — Cauda 
 V. Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 StillweU-Bierce v. Eufaula, 117 Fed. 410; Deering v. Winona, 155 U. S. 286; 
 Goshen v. Bissell, 72 Fed. 67; Roberts v. Nail, 53 Fed. 920; Campbell v. Duplex, 
 86 Fed. .315. 
 
 Neither can a feature of construction or an element covered by one claim 
 be read into another in which it is not mentioned. — Penfield v. Potts, 126 
 Fed. 475; 61 CCA. 371. 
 
 Wilson V. McCormick, 92 Fed. 167; Canda v. Michigan, 124 Fed. 486. 
 
 We know of no authority for reading into a claim features which have been 
 omitted, although shown in the specifications, and none which would justify 
 us in suffering such enlargement of this claim for the purpose of increasing 
 the damages justly recoverable for the infringement of the patented portions 
 of the infringing machine. We may, beyond doubt, look to the specifications 
 and drawings for the purpose of understanding the claims, or that we may 
 see that the device is useful or operative, and sometimes for the purpose of 
 limiting a claim to the particular device described, but we may not enlarge
 
 186 THE FIXED LAW OF PATENTS §§ 196-197 
 
 a claim by including therein elements which are not claimed as such. — Pen- 
 field V. Potts, 126 Fed. 475; 61 C. C. A. 371. 
 
 McCarty v. Lehigh, 160 U. S. 110; Stearns v. Russell, 85 Fed. 218. 
 
 This is not a question of the construction of a patent or of the application 
 of the doctrine of equivalents. It is a question whether the court will recon- 
 struct the Whitley patent in order to cover a device in which the essence of 
 the invention covered by the patent has been eliminated. — Whitley v. 
 Winsor, 127 Fed. 338; 62 C. C. A. 220. 
 
 Under a well-settled rule, mere utility cannot serve to enlarge the scope 
 of an invention which is limited to the structure disclosed in the patent — 
 Wilson V. Calculagraph, 144 Fed. 91 ; 75 C. C. A. 249. 
 
 The rule is fundamental, in the construction of patents, that the claim 
 in the patent is the measure of the invention. The specification may be 
 referred to to explain any ambiguity in the claim, but it cannot be referred to 
 for the purpose of expanding or changing the claim. — National v. New 
 England, 151 Fed. 19; 80 C. C. A. 485. 
 
 Keystone v. Phoenix, 95 U. S. 274; McClain v. Ortmayer, 141 U. S. 419. 
 
 If we import the specifications into the claims it would seem that this 
 characteristic of the vapor holder should go with it, as showing what vapor 
 holder the patentee means by his claim. — American v. Cleveland, 158 Fed. 
 978; 86 C. C. A. 182. 
 
 § 196. Construction — Functional. 
 
 We think it must be conceded that the movement of a machine irrespective 
 of the mechanism which causes it cannot be patented. The claim must be 
 restricted to the mechanism which causes the movement, subject, of course, 
 to the rule of equivalents, which operates liberally in favor of the grantee 
 where the patent is primary in nature, making a distinct advance in the 
 progress of the art; and this patent, in our opinion, is of that character. 
 When we examine the mechanism we find in the appellant's machine described 
 in the patent a rocking or tilting device, and in the appellee's a lifting and 
 dropping device. The appliances are essentially different. They do different 
 things in distinct ways.' The one rocks or tilts the mold plates, the other 
 alternately lifts and drops them. Are we justified in holding that these two 
 essentially distinct devices are equivalents, simply because the ultimate 
 result is the same? We think not, for that would be construing the claim so 
 as to cover the movement alone and not the mechanism producing it. It 
 would be virtually giving a patent for the result, regardless of how reached. — 
 American v. Sexton, 139 Fed. 564; 71 C. C. A. 548. 
 
 Burr V. Duryea, 1 Wall. 320; Merrill v. Yeomans, 94 U. S. 568; Wessell v. 
 United, 139 Fed. 11. 
 
 § 197. Construction — Generic. 
 
 If the patent be for a whole machine the party can maintain a title to it 
 only by establishing that it is substantially new in its structure and mode 
 of operation. — Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 472. 
 
 See s. c. 3 Wheat. 454. 
 
 Being satisfied that he was, in fact, the inventor of the general process 
 described and bodied forth in the specification, how can we, by any fair rule 
 of construction, circumscribe this claim in such a manner as that it shall only 
 cover the process applied in the precise degree and the precise means or
 
 § 197 CLAIMS 187 
 
 machinery pointed out? Had the process been known and used before and 
 not been Tilghman's invention, he could not then have claimed anything 
 more than the particular apparatus described in his patent; but being the 
 inventor of the process, as we are satisfied was the fact, he was entitled to 
 claim it as he did. — Tilghman v. Proctor, 102 U. S. 707; 26 L. Ed. 279. 
 
 A patentee who is the first to make an invention is entitled to his claim 
 for all the uses and advantages which belong to it. — Stow v. Chicago, 104 
 U. S. 547; 26 L. Ed. 816. 
 
 Woodman v. Stimson, 3 Fish. P. C. 98; Tucker v. Spalding, 80 U. S. 453; 
 Graham v. Mason, 5 Fish. P. C. 1. 
 
 Unless the description is sufficiently clear and full to enable one skilled 
 in the art to use the invention, the invention, though it be a pioneer cannot 
 have a broad construction applied to its claims. — Bene v. Jeantet, 129 U. S. 
 683; 32 L. Ed. 803; 9 S. Ct. 428. 
 
 In view of the fact that the inventor was a pioneer in his art, and invented 
 a principle which had gone into almost universal use in this country, we think 
 he is entitled to a liberal construction of his claim, and that the infringing 
 device, containing as it does all the elements of his combination should be 
 held as an infringement, though there are superficial dissimilarities in their 
 construction. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 
 799. 
 
 The Circuit Court of Appeals concurred with the Circuit Court that unless 
 the patents sued on embodied a pioneer invention, the defendant's machine 
 was so differentiated from either of the others that the charge of infringement 
 could not be maintained. The Circuit Court held all complainant's patents 
 to be only improvements on the prior art. The Circuit Court of Appeals 
 held that the patent was entitled to be treated as embodying primary in- 
 vention. We think that none of complainant's patents embodied primary 
 invention, and we concur with both the courts below that, this being so, 
 there was no infringement. — Kokomo v. Kitselman, 189 U. S. 8; 47 L. 
 Ed. 689; 23 S. Ct. 521. 
 
 The patentee was a pioneer, in that he designed a new way to accomplish 
 a desired result, but upon the same general idea which he had unsuccessfully 
 tried to work out in his earlier patent. His later patent was the bridge and 
 not a mere step, which carried from failure to success. It is not important 
 now to determine the grade of its pioneership, and whether it may be classed 
 in the list of those inventions which are of the highest rank; but it was an 
 invention created to achieve great necessities and overcome great hindrances, 
 and was one of wide breadth. A court would not be justified in adopting 
 " a narrow or astute construction," which should minimize the character of 
 the invention, leave its real scope open to trespassers and thus " be fatal to 
 the grant." The claims of the patent do not contract the grant to narrower 
 limits than those, which the invention as made by the patentee, literally 
 covered; and the claims, therefore, are not limited to the precise mechanical 
 means described in the specification. The rule which permits, and indeed 
 compels, courts to give a wide range to the equivalents which a broad or 
 pioneer patent can include, is thus expressed in Miller v. Mfg. Co. 151 U. S. 
 186. " If the invention is broad or primary in its character, the range of 
 equivalents will be correspondingly broad, under the liberal construction 
 which the courts give to such inventions." — Westinghouse v. New York, 
 63 Fed. 962; 11 C. C. A. 528.
 
 188 THE FIXED LAW OF PATENTS § 198 
 
 On the whole case, we are satisfied that the Gorham binder was a primary 
 or pioneer patent of the highest merit, that it attained a result wholly new 
 in a new way, and that in the consideration of alleged infringements of it, 
 the patentee is entitled to all the liberality of treatment accorded to that 
 comparatively rare class of patents. — McCormick v. Aultman, 69 Fed. 371; 
 16 C. C. A. 259. 
 
 It is conspicuously one of those pioneer inventions which entitle the pro- 
 prietor to a liberal protection from the courts in construing the claim. But 
 there is a limit to the judicial liability in this direction. If an inventor is 
 ambiguous or obscure, or halt or limp in his language of description, the courts 
 will help him out, and so construe the claim as to give distinct identity to his 
 device. If there be a doubt in the mind of the court or the jury on the issue 
 of mechanical equivalency, the court will give and instruct the jury to give, 
 the benefit of the doubt to the pioneer inventor. But where the inventor 
 falls so far short in his description as to claim only the result which his machine 
 accomplishes, and omits an explicit definition of the means by which he does 
 it, as in the case at bar, the courts have another duty to perform, one which 
 they owe to the public and to the worthy fraternity of inventors, and must 
 decline to give him general rights where he is entitled only to special rights. 
 — Boyden v. Westinghouse, 70 Fed. 816; 17 C. C. A. 430. 
 
 Limitations upon the claims by which the defendant seeks to avoid in- 
 fringement proceed upon the initial fallacy, that in a generic process patent 
 every phenomenon observed during operation and every minute detail 
 described must be read into the claims and that the least departure from the 
 claims as so construed avoids infringement. The position is not tenable. In 
 a patent like Bradley's the claims should be as broad as the invention and, 
 even if unnecessary and unreasonable limitations are incorporated in the 
 claims, the court should interpret them liberally and not permit a defendant 
 to escape who reaches the same result by analogous means, although he may 
 employ additional elements and improve mechanical appliances. — Electric 
 V. Pittsburg, 125 Fed. 926; 60 C. C. A. 636. 
 
 Ventilating Co. v. Fuller, 57 Fed. 626; Tilghman v. Proctor, 102 U. S. 707. 
 
 To use the language of counsel, the court ought " to refer back to the 
 specifications, and read into the claims those elements which are therein 
 specified as being the means by which such functions are performed." The 
 claims of a patent should be construed, where they reasonably may be, to 
 cover the entire invention of the patentee; and where a patent contains 
 several claims, some of which are limited to details, the others are, prima 
 facie, not to be restricted by insisting that they contain, as necessary ele- 
 ments, the particulars which are specifically covered elsewhere. — Los 
 Angeles v. JEolian, 143 Fed. 880; 75 C. C. A. 88. 
 
 Risdon v. Trent, 92 Fed. 375; Mast v. Dempster, 82 Fed. 327; Bresnahan v. 
 Tripp, 102 Fed. 899. 
 
 § 198. Construction — Improvement. 
 
 Some inventions embrace only a part of a machine, and in such case the 
 part or parts claimed must be specified and pointed out so that constructors, 
 other inventors and the public may know how to make the invention, and 
 what is withdrawn from general use. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 Bailey was not the first to conceive the idea of the device in suit. The 
 same thing had been done by other means. The claim must be confined to
 
 I 199 CLAIMS 189 
 
 the specific device described and claimed. — Blake v. San Francisco, 113 U. S. 
 679; 28 L. Ed. 1070; 5 S. Ct. 692. 
 
 Prouty V. Ruggles, 16 Pet. 336; Rowell v. Lindsay, 113 U. S. 97. 
 
 If his device contains a patentable invention, it is but one in a series of 
 improvements all having the same general object and purpose; and that in 
 construing the claims of his patent, they must be restricted to the precise form 
 and arrangement of parts described in his specification, and to the purpose 
 indicated therein. — Bragg v. Fitch, 121 U. S. 478; 30 L. Ed. 1008; 7 S. Ct. 
 978. 
 
 If the complainant's device constituted a patentable invention, it is 
 clearly " one in a series of improvements, all having the same general object 
 and purpose; and that, in construing the claims of his patent, they must be 
 restricted to the precise form and arrangement of parts described in his 
 specifications, and to the purpose indicated therein." — Fox v. Perkins, 
 52 Fed. 205; 3 C. C. A. 32. 
 
 Bragg V. Fitch, 121 U. S. 483; Caster v. Speigel, 133 U. S. 360. 
 
 That an element in a prior patent to the same inventor cannot be imported 
 into a claim of a later patent to make that claim cover a desired combina- 
 tion, see Boston v. Woodward, 82 Fed. 97; 27 C. C. A. 69. 
 
 If the patent alleged to be infringed had been of a primary character, 
 or one embodying a distinct and substantial advance in the art to which 
 it relates, we should probably be able to find the equivalents of the elements. 
 — Smith V. Ridgley, 103 Fed. 875; 43 C. C. A. 365. 
 
 McCormick v. Aultman, 69 Fed. 371; Bundy v. Detroit, 94 Fed. 524. 
 
 The invention claimed being only for improvements in well-known proc- 
 esses, and in no sense one of a pioneer character, the patentee must be held 
 to a strict construction of his claims. — De Lamar v. De Lamar, 117 Fed. 240; 
 54 C. C. A. 272. 
 
 Wright V. Yuengling, 155 U. S. 47; Westinghouse v. Power-Brake, 170 U. S. 
 562. 
 
 Limited to specific combination — see Bibb v. Bowers, 142 Fed. 137; 73 
 C. C. A. 355. 
 
 Singer v. Cramer, 192 U. S. 265. 
 
 It must be remembered that the patent sued on is in no sense a pioneer one, 
 but a mere improvement. In such cases the patentee is limited to the precise 
 devices and combinations shown and claimed in his patent. — Gumming v. 
 Baker, 144 Fed. 395; 75 C. C. A. 373. 
 
 Boyd V. Janesville, 158 U. S. 260; Brown v. Huntington, 134 Fed. 735; Rich 
 V. Baldwin. 133 Fed. 920; King v. Bilhofer, 127 Fed. 127; Tabor v. Photo- 
 graph, 87 Fed. 871; Ransome v. Hyatt, 69 Fed. 148; Ney v. Ney, 69 Fed. 405; 
 Overweight v. Improved, 94 Fed. 155. 
 
 § 1 99- Construction — Limitation — Broadening by Amendment. 
 
 Courts should regard with jealousy and disfavor any attempts to enlarge 
 the scope of an application once filed, or of a patent once granted, the eff'ect 
 of which would be to enable the patentee to appropriate other inventions 
 made prior to such alteration, or to appropriate that which has, in the mean- 
 time, gone into public use. — Chicago v. Sayles, 97 U. S. 554; 24 L. Ed. 1053.
 
 190 THE FIXED LAW OF PATENTS §§ 200-201 
 
 § 200. Construction — Limitation — Disclaimer. 
 
 We are aware of no principle which will permit a patent to be defeated for 
 want of novelty in respect to the subject-matter which has been eliminated 
 from it by disclaimer. It is also urged that the effect of the disclaimer was 
 to limit the method of the patent to the exact elements mentioned. If these 
 elements only, instead of elements such as these named, had been mentioned, 
 there would be much force in the argument. — Schwarzwalder v. N. Y. 66 
 Fed. 152; 13 C. C. A. 380. 
 
 It is material to observe that the invention claimed is the combination of 
 certain described elements. This amounts to a disclaimer of anything new 
 in the elements themselves. — Wells v. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Corn Planter Pat. 23 Wall. 181; Miller v. Brass Co. 104 U. S. 350; Rowell v. 
 Linsay, 113 U. S. 97. 
 
 If one particular branch of the art of working in Avood — cabinet making, 
 for example — had never used circular saws, because they were supposed to 
 be impracticable or useless or not economical, although such saws were used 
 in other branches of the art, it might be invention to introduce them in cabi- 
 net making; and the individual who showed that they were useful, prac- 
 ticable, and economical in that branch of the art might be entitled to a patent 
 for a circular saw in combination with the other parts of an old machine. 
 But his specification and claim would be expected to indicate just what it 
 was he had invented and what he claimed. An individual who had invented 
 some specific improvement in circular saws generally — something novel 
 and useful and applicable to-those tools in every branch of the wood-working 
 art — might also obtain a patent, with a claim covering all circular saws, 
 which would be good to restrain infringement of his particular improvement. 
 But it would be a startling proposition that he could, 13 years afterwards, 
 file a disclaimer of any combination containing circular saws so used (with 
 his improvement or without) on the theory that no one had used them in that 
 branch of the art before. We do not understand that the statutory pro- 
 visions allowing a disclaimer to be filed can be thus availed of to change the 
 invention claimed in a patent, and we are referred to no authorities which 
 sustain complainant's contention. The object of a disclaimer is well ex- 
 pressed in Chem. Wks. v. Lauer, Fed. Cas. 12,135: 
 
 " It is designed to allow a patentee to recover on one claim of his patent, 
 notwithstanding other claims in it are void for want of novelty. But it 
 requires that the parts claimed without right, and the parts rightfully 
 claimed, shall be definitely distinguishable, as a matter of fact, on the face 
 of the claims; that is, to be definitely distinguished from each other in the 
 claims." — Albany v. Worthington, 79 Fed. 966; 25 C. C. A. 258. 
 
 Whatever may have been the transactions between the applicant and the 
 patent office, and whatever light may be thrown upon obscurities in the 
 patent by the wrapper and contents, it is the patent as issued by which the 
 patentee's right to a monopoly must be tested. When it expressly declares 
 that there is some other process to which it does not apply, and in plain and 
 unambiguous language gives the earmarks by which that other process is to 
 be distinguished from the process of the patent, the public has the right to 
 insist that the patentee shall abide by the disclaimer he has made and pro- 
 claimed. — Jackson v. Birmingham, 79 Fed. 801 ; 25 C. C. A. 196. 
 
 § 201. Construction — Limitation — By Applicant. 
 
 Cases arise not unfrequently, where the actual invention described in the 
 specification is larger than the claims of the patent; and in such cases it is 
 undoubtedly true that the patentees in a suit for infringement must be
 
 § 201 r CLAIMS 191 
 
 limited to what is specified in the claims annexed to the specification, but it 
 is equally true that the claims of the patent, like other provisions in wntmg, 
 must be reasonably construed, and in case of doubt or ambiguity it is proper 
 in all cases to refer back to the descriptive portions of the specification to 
 aid in solving the doubt or in ascertaining the true intent and meaning of 
 the language employed in the claims; nor is it incorrect to say that due 
 reference may be had to the specification, drawings and claims of a patent, 
 in order to ascertain its true legal construction. In construing patents it is 
 the province of the court to determine what the subject-matter is upon the 
 whole face of the specification and the accompanying drawings. — Bates 
 V. Coe, 9S U. S. 31 ; 25 L. Ed. 68. 
 
 Brooks V. Fiak, 15 How. 215; Curt. Pat. 4th Ed. sec. 222. 
 
 It is possible that the inventor was entitled to a broader claim than that to 
 which he limited himself; but if he described and claimed only a part of his 
 mvention, he is presumed to have abandoned the residue to the public. — 
 Deeriiig v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 McClain v. Ortmayer, 141 U. S. 419. 
 
 The patentee having described in his specification and declared to be an 
 essential part of his invention an element thereof and having made it a sub- 
 ject of his claims, is not now at liberty to say it is immaterial, or that a device 
 which dispenses with it is an infringement, though it accomplish the same 
 purpose in, perhaps, an equally effective manner. — Wright v. Yuengling, 
 155 U. S. 47; 39 L. Ed. 64; 15 S. Ct. 1. 
 
 Vance v. Campbell, 66 U. S. 427; Union v. Desper, 101 U. S. 332; Gage v Her- 
 ring, 107 U. S. 640; Rees v. Gould, 82 U. S. 187; Brown v. Davis, 116 U. b. 237. 
 
 It is insisted that the claims of the patent should have a liberal construc- 
 tion, and that the special devices described in the specification " are not 
 necessary constituents of the claims." Machine Co. v. Lancaster, 129 U. S. 
 263. This just principle is one that is well recognized, but another principle 
 is, at the present stage of the patent law, of equal force, which is that the 
 construction of patents must be in conformity with the self-imposed limita- 
 tions which are contained in the claims. — Groth v. International, 61 Fed. 
 284; 9 C. C. A. 507. 
 
 Following 
 
 McClain v. Ortmayer, 141 U. S. 419. 
 
 When a patentee has practically disclaimed other devices by stating in his 
 specifications that they existed before his own was contrived, such other 
 devices may fairlv be considered to be part of the prior art, when he bi'ings 
 suit upon the patent issued to him upon the representation made in such 
 specifications. — Lyons v. Drucker, 106 Fed. 416; 45 C C. A, 368. 
 
 Where the patentee specifies a particular form as a means by which the 
 effect of the invention is produced, or otherwise confines himself to a par- 
 ticular form of what he describes, he is limited thereby in his claim for 
 infringement. — Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70. 
 
 Walker on Pat. sec. 363. 
 
 The patentee, having originally covered his real invention by the last 
 of the original 10 claims, and having unwarrantably attempted by said other 
 claims to cover a broader invention, secured a patent for certain other claims, 
 limited to the definite construction shown and described in his application. 
 In so doing he has committed himself to a definite interpretation and limita- 
 tion of his claims. — Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70.
 
 192 THE FIXED LAW OF PATENTS § 202 
 
 Since the patentee has dehberately chosen to make this parallehsm a 
 feature of these two claims, it is not for the court to strilce it out. — Whitte- 
 more v. Reinhardt, 159 Fed. 707; 86C. C. A. 461. 
 
 Where one claim of a patent specifically names two elements, and another 
 claim specifically names these two elements and in addition thereto a third 
 element, it must be presumed that the patentee intended to limit the claims to 
 the elements enumerated. — Marshall v. Pettingell- Andrews, 164 Fed. 862; 
 C. C. A. 
 
 § 202. Construction — Limitation — Elements of Claim. 
 
 A claim must be limited to the elements claimed, or their equivalents. — 
 Gage V. Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. 
 
 Meter v. Dcsper, 101 U. S. 332; Fames v. Godfrey, 1 Wall. 78; Murray v. 
 Clayton, L. R. 10 Ch. G75 note; Clark v. Adie, L. R. 10 Ch. 667. 
 
 Where the claims covered specifically cylinders with chambers or depres- 
 sions, thev cannot be construed to cover plain cylinders. — Hendy v. Golden, 
 127 U. S."370; 32 L. Ed. 207; 8 S. Ct. 1275. 
 
 Fay V Cordesman, 109 U. S. 408; Sargent v. Hall, 114 U. S. 63; Shepard v. 
 Carrigan, 116 U. S. 593; White v. Dunbar, 119 U. S. 47; Crawford v. Heysmger, 
 
 123 U. S. 589. 
 
 Must be restricted and confined to the specific combination described and 
 each element pointed out as an essential part thereof. — Knapp v. Morss, 
 150 U. S. 221 ; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Duff V. Sterlhig, 107 U. S. 639; Newton v. Furst, 119 IT. S. 373; Bra«g i'. 
 Fitch, 121 V. S. 478; Crawford v. Heysincier, 123 U. S. 589; Dreyfus v. Wiese, 
 
 124 U S 32; also Sargent v. Hall, 114 U. S. 63; Eddy v. Denis, 95 U. S. 560; 
 McCormick v. Talcott, 61 U. S. 402. 
 
 / The patentee having described in his specification and declared to be an 
 / essential part of his invention an element thereof and having made it a subject 
 ( of his claims, is not now at liberty to say it is immaterial, or that a device 
 I which dispenses with it is an infringement, though it accomplish the same 
 1 purnose in, perhaps, an equallv effective manner. — Wright v. Yuengling, 
 \ 155'U. S. 47; 39 L. Ed. 64; 1.5 S. Ct. 1. 
 
 "^^ Vance v. Campbell, 66 U. S. 427; T^uion v. Desper, 101 U. S. 332; Gage v. Her- 
 ring, 107 U. S. 640; Rees v. Gould, 82 U. S. 187; Brown v. Davis, 116 U. S. 237. 
 
 In insisting now that the defendant has incorporated this vital feature 
 in its safety-valve, the complainant seems to place itself precisely within the 
 animadversion of the Supreme Court in the case of Western v. Ansonia, 
 114 U. S. 447, where it says, " It has been held by this court that the scope 
 of letters patent should be limited to the invention covered by the claim; 
 and, though the claim may be illustrated, it cannot be enlarged by the 
 language of other parts of the specification." — Ashton v. Coale, 52 Fed. 
 314;3C. C. A. 98. 
 
 The patentee has disclosed only one particular construction operating in a 
 defined way, and this construction he has claimed. It is idle to speculate 
 whether or not he might have made a broader claim. The court is powerless 
 to relieve him from the consequences of self-imposed limitations. — Lewis 
 V. Pa. 59 Fed. 129; 8 C C. A. 41. 
 
 Keystone v Phoenix, 95 U. S. 274; Fay v. Cordesman, 109 U. S. 408; Rowell 
 V. Lindsay, 113 U. S. 97; McCIain v. Ortmayer, 141 U. S. 419. 
 
 A patent grants no exclusive right except to what is distinctly covered by 
 the claims. — Thomasson v. Bumpass, 78 Fed. 491 ; 24 C. C. A. 180.
 
 §§ 203-204 CLAIMS 193 
 
 Grant v. Walter, 148 U. S. 547; Western v. Ansonia, 114 U. S. 447; Ashton 
 V. Coale, 52 Fed. 318; McClain v. Ortmayer, 141 U. S. 419. 
 
 The patent was for a narrow improvement. Held: He must be held to the 
 combination which is described and claimed so explicitly. — Hardison v. 
 Brinkman, 156 Fed. 962; 87 C. C. A. 8. 
 
 Keystone v. Phoenix, 95 U. S. 274. 
 
 When a claim is explicit, the courts cannot alter or enlarge it. — Dey v. 
 Syracuse, 161 Fed. 111. 
 
 Keystone v. Phcenix, 95 U. S. 274. 
 
 A patent for described means or mechanism to accomplish a desired end 
 must be limited to the particular means described in the specification or their 
 clear mechanical equivalents, and does not embrace or cover any other 
 mechanical structure which is substantially different in its construction or 
 operation. — Union v. Diamond, 162 Fed. 148; 89 C. C. A. 172. 
 
 Eames v. Godfrey, 1 Wall. 78; Boyd v. Janesville, 158 U. S. 260; Westing- 
 house V. Boyden, 170 U. S. 537; Bryce v. National, 116 Fed. 186; Jewell v. 
 Jackson, 140 Fed. 340. 
 
 § 203. Construction — Limitation — Failure to Claim. 
 
 What is described in the specification of a patent and not claimed is pre- 
 sumed to have been old. — Electric v. Boston, 139 U. S. 481; 35 L. Ed. 250; 
 11 S. Ct. 586. 
 
 It is a settled principle of law, enacted by statute and announced by the 
 courts that a patentee and his assignees have no right to the exclusive use of 
 anything patented which the inventor has not distinctly claimed in his appli- 
 cation for the patent. — Ashton v. Coale, 52 Fed. 314; 3 C. C. A. 98. 
 
 A description in a specification of details which the claim does not make 
 elements of the combination, and which are not essential to it, simply points 
 out one method of using it, and does not restrict the claim to these details. — 
 Brammer v. Schroeder, 106 Fed. 918; 46 C. C. A. 41. 
 
 It may be that Farwell's invention would have entitled him to make a 
 broader claim, but his patent makes no such broad claim. It is in this respect 
 like the patent under consideration in Keystone v. Phoenix, 95 U. S. 274. — 
 Schreiber v. Adams, 117 Fed. 830; 54 C. C. A. 128. 
 
 McClain v. Ortmayer, 141 U. S. 419; Seabury v. Johnson, 76 Fed. 456. 
 
 If in truth Harder understood the now stated objections, and was the 
 first to conceive and embody a way of overcoming them, he carefully re- 
 frained from saying so. Now a patent is to be sustained not for what an 
 inventor may have done in fact, but only for what he " particularly points 
 out and distinctly claims " in his open letter. — Harder v. United States, 
 160 Fed. 463; 87 C. C. A. 447. 
 
 Fastener v. Kraetzer, 150 U. S. 116; Indiana v. Crocker, 103 Fed. 496; Avery 
 V. Case, 148 Fed. 214. 
 
 § 204. Construction — Limitation — General Rules. 
 
 It is clear that a party cannot entitle himself to a patent for more than 
 his own invention ; and if his patent includes things before known, or before
 
 194 THE FIXED LAW OF PATENTS § 204 
 
 in use, as his invention, he is not entitled to recover, for his patent is broader 
 than his invention. — Evans v. Eaton, 7 Wheat. 356 ; 5 L. Ed. 472. 
 See s. c. 3 Wheat. 454. 
 
 It is obvious that the inventor claims as his improvement, not the whole 
 of the engine, nor the whole of the wheel, but both merely in the superior 
 form which he particularly sets out. He therefore does not claim too much, 
 which might be bad. — Hogg v. Emerson, 6 How. 437; 12 L. Ed. 505. 
 
 HiU V. Thompson, 2 March. 435; 4 Wash. C. C. 68; Godson on Pat. 189; Kay 
 V. Marshall, 1 Mylne, 373; 1 Story R. 273; 2 Mas. 112; 4 B. & A. 541; Boville 
 V. Moon, 2 March. 211. 
 
 It is true that the patent cannot be extended beyond the claim. That 
 bounds the patentee's right. — American v. Fiber Co. 90 U. S. 566; 23 L. 
 Ed. 31. 
 
 In making his claim the inventor is at liberty to choose his own form of 
 expression, and while the courts may construe the same, in view of the 
 specifications and the state of the art, they may not add to or detract from 
 the claim. And it is equally true that, as the inventor is required to enumer- 
 ate the elements of his claim, no one is an infringer of a combination claim 
 unless he uses all the elements therein. — Cimiotti v. American, 198 U. S. 
 399; 49 L. Ed. 1100; 25 S. Ct. 697. 
 
 Shepard v. Carrigan, 116 U. S. 593; Sutter v. Robinson, 119 U. S. 530; McClain 
 V. Ortmayer, 141 U. S. 419; Wright v. Yuengling, 155 U. S. 47; Black Diamond 
 V. Excelsior, 156 U. S. 611; Walk. Fat. sec. 349. 
 
 It is the chief office of a claim to particularize and limit the monopoly 
 of use which is secured to the inventor by the letters patent. Within the 
 limits which are by the claim marked out and definitely established as the 
 scope of the invention, no one can venture to intrude without becoming a 
 trespasser upon the exclusive rights secured to the inventor. The very 
 purpose of a claim is to establish the line of demarcation between a permissive 
 and lawful use and the forbidden and unlawful use. In its scope, its operative 
 power, its comprehensive effect, the public have no less interest than the 
 inventor. In drafting a claim, the applicant for the grant of a monopoly 
 is directly dealing with the rights of the public, and, in such cases, strictness 
 rather than elasticity of construction must obtain. The language by which 
 the comprehensive boundaries of a claim are to be made distinctive and clear 
 lies wholly within the selection of the inventor. He alone may choose the 
 words to describe and particularize his invention. When chosen and used, 
 such words must be held to be binding upon him. — Duff v. Forgie, 59 Fed. 
 772; 8 C. C. A. 261. 
 
 The statute requires the inventor to particularly point out, and distinctly 
 claim, the improvement or combination which he claims as his discovery. 
 Rev. St. sec. 4888. The purpose of a claim in a patent is to notify the public 
 of the extent of the monopoly secured to the inventor, and, while it is notice 
 of his exclusive privileges, it is no less a notice, and a legal notice, upon 
 which everyone has a right to rely, that he disclaims, and dedicates to the 
 public, any combination or improvement, apparent on the face of his specifi- 
 cation, not a mere evasion of his own, which he has not there pointed out 
 and distinctly claimed as his discovery or invention. Every one has the right 
 to use every machine, combination, device and improvement not claimed by 
 the patentee, without molestation from him. It would work great injustice 
 to permit a patentee, after a combination or device which he did not claim 
 has gone into general use, and years after his patent was granted, to read
 
 § § 205-207 CLAIMS 195 
 
 that combination or device into one of the claims of his patent, and to recover 
 for its infringement of everyone who has used it on the faith of his solemn 
 declaration that he did not claim it. — Adams v. Lindell, 77 Fed. 432; 23 
 C. C. A. 223. 
 
 Keystone v. Phoenix, 95 U. S. 274; Miller v. Brass Co. 104 U. S. 350; Uahnv. 
 Harwood, 112 U. S. 354; Wollensak v. Reiher, 115 U. S. 96; Parker v. Yale, 
 123 U. S. 87; Stirrat v. Mfg. Co. 61 Fed. 980; Building Co. v. Eustis, 65 Fed. 
 804. 
 
 § 205. Construction — Limitation — Improvement. 
 
 The invention being, then, in no sense a pioneer in the art, no unexpressed 
 meaning can be read with the claim, and the patent must be limited to the 
 specific device described therein. — Evans v. Rood, 99 Fed. 990; 40 C. C. 
 A. 209. 
 
 § 206. Construction — Limitation — Narrow Improvement. 
 
 In a narrow claim elements cannot be held essential as infringing which 
 could not be claimed. — Watson v. Cincinnati, 132 U. S. 161; 33 L. Ed. 295; 
 10 S. Ct. 45. 
 
 Gage V. Herring, 107 U. S. 640; Fay v. Cordesman, 109 U. S. 408. 
 
 If there were any thing more in this than mechanical skill or the aggrega- 
 tion of familiar devices, each operating in the old way to produce an aggre- 
 gated result, it was invention of such a limited character as to require a 
 narrow construction. — McCarty v. Lehigh, 160 U. S. 110; 40 L. Ed. 358; 
 16 S. Ct. 240. 
 
 Penna. v. Locomotive, 110 U. S. 490. 
 
 That a claim covering such an improvement (minor) is not entitled to 
 a broad construction is too obvious to require the citation of authorities. — 
 Dey V. Syracuse, 161 Fed. Ill; 88 C. C. A. 275. 
 
 Cimiotti v. Fur, 198 U. S. 399; Kokomo v. Kitselman, 189 U. S. 8. 
 
 § 207. Construction — Limitation — Patent Office Action Limit- 
 ing. 
 
 As patents are procured ex parte, the public is not bound by them, but the 
 patentees are. If the office refuses to allow him all he asks, he has an appeal. 
 But the courts have no right to enlarge a patent beyond the scope of its 
 claim as allowed by the Patent Office, or the appellate tribunal to which con- 
 tested applications are referred. When the terms of a claim in a patent are 
 clear and distinct, as they always should be, in a suit brought upon the patent, 
 the patentee is bound by it. — Keystone v. Phcenix, 95 U. S. 274; 24 L. Ed. 
 344. 
 
 Merrill v. Yeomans, 94 U. S. 568. 
 
 In this case the description of appellee's invention is much broader than his 
 claim. It seems quite clear, from the present form of appellee's specifica- 
 tions, and from the fact that his application for a patent was twice rejected, 
 that he was compelled by the Patent Office to narrow his claim to its present 
 limits before the commissioner would grant him a patent. In doing this he 
 neglected to amend the descriptive part of his specifications. He cannot go 
 beyond what he has claimed and insist that his patent covers something not 
 claimed, merely because it is to be found in the descriptive part of the specifi- 
 cations. — Lehigh V. Mellon, 104 U. S. 112; 26 L. Ed. 639. 
 
 Burns v. Meyer, 100 U. S. 671; Keystone v. PhoenLx, 95 U. S. 278.
 
 IQQ THE FIXED LAW OF PATENTS § 207 
 
 In patents for combination of mechanism, limitations and provisos, 
 imposed bv the inventor, especially such as were introduced into an applica- 
 tion after it had been persistentlv rejected, must be strictly construed agamst 
 thp inventor and in favor of the public, and looked upon as ni the nature of 
 disclaimers. - Sargent v. Hall, 114 U. S. 63; 29 L. Ed. 67; 5 S. Ct. 1021. 
 
 Fay V Cordesman, 109 U. S. 408; Water Meter v. Desper, 101 U. S. 332; Gage 
 V. Herring, 107 U. S. 640. 
 
 If an applicant, in order to get his patent, accepts one with a narrower claim 
 than that contained in his original application, he is bound by it. — Shepard 
 V. Carrigan, 116 U. S. 593; 29 L. Ed. 723; 6 S. Ct. 493. 
 
 Where an applicant for a patent to cover a new combination is compelled 
 by the rejection of his appUcation by the Patent Office to narrow his claim by 
 the introduction of a new element, he cannot after the issue of the patent 
 broaden his claim bv dropping the element which he was compelled to include 
 in order to secure his patent. — Shepard v. Carrigan, 116 U. S. 593; 29 L. 
 Ed. 723;6S. Ct. 493. 
 
 Leggett V Avery, 101 U. S. 256; Goodyear v. Davis, 102 U. S. 222; Fay v. 
 Cordesman, 109 US. 408; Mahn v. Har^'ood, 112 U. S. 354; Cartridge v. Cart- 
 ridge, 112 U. S. 624; Sargent v. Hall, 114 U. S. 63. 
 
 Complainant is not at liberty now to insist upon a construction of his 
 patent which will include what he was expressly required to abandon and 
 disavow as a condition of the grant. — Sutter v. Robinson, 119 U. S. 530; 30 
 L. Ed. 492 ; 7 S. Ct. 376. 
 
 SheDard v. Carrigan, 116 U. S. 593, and cases there cited. 
 
 This court has often held that when a patentee, on the rejection of his 
 apphcation, inserts in his specification, in consequence, limitations andrestnc- 
 tions for the purpose of obtaining his patent, he cannot, after he has obtained 
 it claim that it shall be construed as it would have been construed if such 
 limitations were not contained in it. — Roemer v. Peddie, 132 U. b. 313; 
 33 L. Ed. 382; 10 S. Ct. 98. 
 
 Le-gett V. Avery, 101 U. S. 256; Goodyear v. Davis, 102 U S. 222; Fay v. 
 Cordesman, 109 uf S. 408; Mahn v. Harwood, 112 U. S^ 354; Union v U S. 112 
 U S 6'M- Sargent v. Hall, 114 U. S. 63; Shepard v. Carrigan, 116 U. S. 593, 
 White V Dunbar, 119 U. S. 47; Sutter v. Robinson, 119 U. S. 530; Bragg v. 
 Fitch, 121 U. S. 478; Snow v. Lake Shore, 121 U. S. 617; Crawford v. Heysinger, 
 123 U. S. 589. 
 
 As the claim must be held to define what the Patent Office had determined 
 to be the patentee's invention, it ought not to be enlarged beyond the pnor 
 interpretation of its terms. — Day v. Fair Haven, 132 U. S. 98; 33 L. Ed. 
 265; lOS. Ct. U. 
 
 When applicant has Umited his claim by including specific elements in his 
 combination under rejection by the Patent Office he is limited thereby to his 
 specific elements. — Phoenix v. Spiegel, 133 U. S. 360; 33 L. Ed. 663; 10 
 S. Ct. 409. 
 
 Roemer v. Peddie, 132 U. S. 313 and cases there cited. 
 
 A claim admitted by the Patent Office and acquiesced in by the patentee 
 should not be enlarged by construction bevond the fair interpretation of its 
 terms. — Haines v. McLaughhn, 135 U. S. 584; 22 L. Ed. 241 : 10 S. Ct. 876. 
 
 Where applicant has put in a claim in the Patent Office to coyer more 
 broadly his process, and afterwards struck it out on rejection, it is well
 
 § 207 CLAIMS 197 
 
 settled, by numerous cases in this court, tiiat under such circumstances a 
 patentee cannot successfully contend that his patent shall be construed as if 
 it still contained the claims which were so rejected and withdrawn. — Royer 
 V. Coupe, 146 U. S. 524; 36 L. Ed. 1073; 13 S, Ct. 166. 
 
 Roemer v. Peddle, 132 U. S. 313; Phoenix v. Spiegel, 133 U. S. 360; Yale v. 
 Berkshire, 135 U. S. 342; Dobson v. Lees, 137 U. S. 258. 
 
 Must be read and interpreted with reference to the rejected claims and to 
 the prior state of the art, and cannot be construed to cover either. — Knapp 
 V. Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Shepard v. Carrigan, 116 U. S. 593; Sutter v. Robinson, 119 U. S. 530. 
 
 Apphcant having withdrawn rejected claims and substituted narrower 
 claims cannot insist on construction of a reissue claim to cover original claim. 
 — Corbin v. Eagle, 150 U. S. 38; 37 L. Ed. 989; 14 S. Ct. 28. 
 
 Shepard v. Carrigan. 116 U. S. 593; Roemer v. Peddie, 132 U. S. 313; Rover 
 V. Coupe, 146 U. S. 524. 
 
 Where applicant has amended on rejection by patent office he is estopped 
 to claim the scope of original claim. — Morgan v. Albany, 152 U. S. 425 • 
 38 L. Ed. 500; 14 S. Ct. 627. 
 
 Acquiescence in the rejection of a claim and restriction by amendment 
 hmits the construction of the claim to the device shown. — Lehigh v. Kear- 
 ney, 158 U. S. 461 ; 39 L. Ed. 1055; 15 S. Ct. 871. 
 
 Knapp V. Morss, 150 U. S. 221. 
 
 His acquiescence in the rulings of the patent office indicates very clearly 
 that he should be limited to the combination claimed, and that the case is 
 not one calling fqr a hberal construction. — McCarty v. Lehigh, 160 U. S. 110- 
 40 L. Ed. 358; 16 S. Ct. 240. 
 
 The patentee had acquiesced in the rejection of his claim and could not 
 claim the benefit thereof, or of an equivalent construction of the claims 
 allowed. — American v. Pennock, 164 U. S. 26; 41 L. Ed. 337; 17 S. Ct. 1. 
 
 The record shows correspondence between solicitor and examiner, in which 
 the solicitor admitted and amended the specification to state that certain 
 functions in question were old, but not admitting their force in application 
 to the case in question. 
 
 Held: We agree with the defendant that this correspondence and the speci- 
 fication as so amended should be construed as reading the auxiliary valve 
 into the claim, and repelling the idea that this claim should be construed 
 as one for a method or process. — Westinghouse v. Boyden, 170 U. S. 537; 
 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 Note: This case decided 5 to 4. See dissenting opinion of Shiras : "The 
 courts should be slow to permit this construction of a patent, actually 
 granted and delivered, to be affected or controlled by alleged interlocutions 
 between the officers in the Patent Office and the claimant. When we consider 
 that often the emplovees in the Patent Office are inexperienced persons, and 
 the mass of business is so vast, it can be readily seen how dangerous it would 
 be to modify or invalidate a patent, clear and definite in its terms, resorting 
 to such uncertain sources of information." 
 
 Whether the examiners were right or ■^\Tong in so holding (narrowly limit- 
 ing the claim) we are not to inquire, as the claimant did not appeal, but 
 amended his claim and accepted a grant thereof, thereby putting himself
 
 198 THE FIXED LAW OF PATENTS § 207 
 
 within the range of the authorities which hold that if the claim to a combina- 
 tion be restricted to specified elements, all must be regarded as material, 
 and the limitations imposed by the inventor, especially such as were intro- 
 duced into an application after it had been j^ersistently rejected, must be 
 strictly construed against the inventor and in favor of the public, and looked 
 upon as in the nature of disclaimers. — Hubbell v. U. S. 179 U. S. 77; 43 
 L. Ed. 95; 21 S. Ct. 24. 
 
 Union v. Desper, 101 U. S. 332; Morgan v. Albany, 152 U. S. 425. 
 
 In order to get his patent, he was compelled to accept one with a narrower 
 claim than that contained in his original application; and it is well settled 
 that the claim as allowed must be read and interpreted with reference to the 
 rejected claim and the prior state of the art, and cannot be so construed as to 
 cover either what was rejected by the Patent Office or disclosed by prior 
 devices. — Hubbell v. U. S. 179 U. S. 77; 45 L. Ed. 95; 21 S. Ct. 24. 
 
 Leggett V. Avery, 101 U. S. 256; Shepard v. Carrigan, 116 U. S. 593; Knapp 
 V. Morss, 150 U. S. 227. 
 
 In view of what passed in the Patent Office, and the state of the art, we 
 cannot regard the Kitselman patent as a pioneer patent, but think its claims 
 must be limited in their scope to the actual combination of essential parts 
 as shown and cannot be construed to cover other combinations of elements 
 of different construction and arrangement. — Kokomo v. Kitselman, 189 
 U. S. 8; 47 L. Ed. 689; 23 S. Ct. 521. 
 
 We are of opinion that the Patent Office, after twice refusing to allow the 
 patent because of prior patents referred to, was led to take favorable action 
 owing to the peculiar form of the described bearing, and that it was the 
 purpose to limit the patent to the peculiar device. And this view is sup- 
 ported by the claim in question. It contains words of limitation. It is 
 recited therein that the combination is to be " substantially as specified," 
 that is, as described in the specifications and shown in the drawings. — 
 Singer v. Cramer, 192 U. S. 265; 48 L. Ed. 437; 24 S. Ct. 291. ' 
 
 Westinghouse v. Boyden, 170 U. S. 537. 
 
 Where an inventor seeking a broad claim, which is rejected, in which 
 rejection he acquiesces, substitutes therefor, a narrower claim, he cannot be 
 heard to insist that the construction of the claim allowed shall cover that 
 which has been previously rejected. — Computing v. Automatic, 204 U. S. 
 609; 51 L. Ed. 645; 27 S. Ct. 307. 
 
 Corbin v. Eagle, 150 U. S. 38; Hubbell v. U. S. 179 U. S. 77; Leggett v. Avery, 
 101 U. S. 256; Shepard v. Carrigan 116 U. S. 593; Knapp i;. Morss, 150 U. S. 221. 
 
 Thereupon Carr amended and limited his claims by withdrawing those first 
 filed, and substituting the first claim that is now found in his patent; and, 
 having adopted this course, the claim in dispute must receive a strict and 
 narrow construction. — Mott v. Standard, 53 Fed. 819; 4 C. C. A. 28. 
 
 Roemer v. Peddie, 132 U. S. 313; Sargent v. Safe & Lock Co. 114 U. S. 63. 
 
 The history of his second application shows that he presented and aban- 
 doned claims so worded as to have the same meaning which it has been 
 sought to put by construction upon the claims finally presented and allowed. 
 It is insisted that the claim granted is broader than those rejected, and 
 therefore, cannot be limited by them ; but that is a begging of the question. 
 It can be made broader only by construction, and the effect of the decisions 
 on the subject, as we understand them, is that a claim cannot by construction
 
 § 207 CLAIMS A^^ 
 
 be enlarged to include the matter of claims in the rejection of which the 
 patentee has acquiesced. - Temple v. Goss, 58 Fed. 196, 7 C. t. A. i/4. 
 
 A claim is limited by an amendment ^^^de and acquiesced in on applica- 
 tion — B & S. Fastener v. B. G. Fastener, 58 Fed. 818, 7 L. ^- A- ^Z^- 
 
 Union ..U. S. 112 U. S. 624; Crawford .. Heysinger, 123 U. S. 589; Watson 
 V. Railway, 132 U. S. 161. 
 
 After withdrawing a specific claim for an element, in favor of a contestant, 
 thfnaten ee camiot set that element up. His patent, if valid is for the com- 
 bt.XTnSiS that element, a device whose no^. ty co - t^^ 
 with that element. - Shoemaker v. Merrow, 61 Fed. 945, 10 C. C. A. i»i. 
 
 Within these hues with which the patentee has himself circumscribed 
 his Datent hftheVocess of application for the same it must be construed 
 and^as ?L constmed there is no infringeme.^t in a compound employing 
 tSat which he specifically excluded. - Dougherty .. Doyle, 63 Fed. 475, 
 11 C. C. A. 298. 
 
 Althniiffh the patentee might have made the language of his claim more 
 br^d he'VLuSby t^^^ t'erms of hmitation which he adopted. - Smith 
 V. Macbeth, 67 Fed. 137; 14 C. C. A. 241. 
 
 The rule is well settled that the patentee cannot, after the issuance of his 
 
 !ia^S"f02 U I. "22? Mfhn ^'Srwoocl. 112'U. S. 354; Howe v. National, 134 
 U. S. 394; White v. Dunbar, 119 U. S. 47. 
 
 The claim of the patent must be restricted within the limitations imposed 
 by the iXt office and^accepted by the applicant. - Erie .. American, .0 
 
 %' i^+'^T, „ ATfcr" Co 111 U S. 490; Machine v. Featherstone, 147 US. 209; 
 Snowt Slil^^'fy 121 U. S. 617; Crawford .. Heysinger, 123 U. S. 589; Consoli- 
 dated V. McKeesport, 40 Fed. 21. 
 
 In view of the hmitations placed upon the claims by the patent office and 
 acQuiescrd in, and in view if the specific language, we are of opinion the 
 cSm cannot be construed to cover an element of a different character. - 
 Troy V. Adams, 73 Fed. 301 ; 19 C. C. A. 505. 
 
 That claim however, was rejected, not because functional, but because it 
 
 i '' «Uncr?t'hTtoo broad, if not functional"; and the authorities are 
 
 ramiliafwlfcMorbid a co^^^^^^^ of claims allowed which will make them 
 
 equivalen^^^^^^^ claims rejected. - Brush v. Western, 76 Fed. .61; 
 
 22 C. C. A. 543. 
 
 The patentee having acquiesced in the rejection of the claim in its original 
 foim Cannot now insist that the present claim should be construed as it 
 St ha"e been construed if the original claim had not been rejected and 
 withdrawn. — Olmsted v. Andrews 77 Fed. 835; 23 C. C. A. 488. 
 
 Roemer .. Peddle, 132 U^ S 313; Caster . Spie^^^'.f \^,|- f £ Je^^^^ 
 Berkshire, 135 U. S. 379; Dobson v. Lees, 137 U. b. 268, Koyer v. i^oupe, ii^ 
 V. S. 524;' Corbin v. Eagle, 150 U. S. 38.
 
 200 THE FIXED LAW OF PATENTS § 207 
 
 It is well settled that where the patent office rejects a claim covering a 
 certain device on its merits, and such rejection is acquiesced in, and the patent 
 issues, the applicant cannot afterwards be allowed a construction of the claims 
 allowed wide enough to embrace the claim which was rejected. In Morgan 
 V. Albany, 152 U. S. 425, Mr. Justice Brown, speaking for the supreme court, 
 in considering the contention that a claim should have a certain construction, 
 said: 
 
 " But the patentee having once presented his claim in that form, and the 
 patent office having rejected it, and he having acquiesced in such rejection, 
 he is, under the repeated decisions of this court, now estopped to claim the 
 benefit of his rejected claim, or such a construction of his present claim as 
 would be equivalent thereto. Leggett v. Avery, 101 U. S. 256; Shepard v. 
 Carrigan, 116 U. S. 593; Crawford v. Heysinger, 123 U. S. 589; Union v. 
 U. S. 112 U. S.624. It is true there were cases where the original claim was 
 broader than the one allowed, but the principle is the same if the rejected 
 claim be narrower." — Thomas v. Rocker, 77 Fed. 420; 23 C. C. A. 211. 
 
 That limitations which an inventor places upon an invention in a proceed- 
 ing in the patent office, to gain his point and get his claim, must stand against 
 him, even if he won his claim by other means, see Craig v. Michigan, 81 Fed. 
 870; 26 C. C. A. 659. 
 
 Whatever the invention, and whatever the patentee ought to have been 
 allowed to incorporate into this claim it is clear that under the circumstances 
 of this case, the patentee bound himself and the court by the addition of these 
 amendatory words. — Eppler v. Campbell, 86 Fed. 141 ; 29 C. C. A. 616. 
 
 Reece v. Globe, 61 Fed. 958. 
 
 For a curious way of stating the familiar rule, see Truman v. Holmes, 87 
 Fed. 742; 31 C. C. A. 215. 
 Roemer v. Peddie, 132 U. S. 313; Morgan v. Albany, 152 U. S. 425. 
 
 He cannot claim such a construction of his patent as would include what 
 he was expressly required to abandon as a condition of the grant, even if it 
 takes away a material part of his real invention. — Kelly v. Clow, 89 Fed. 297 ; 
 32 C. C. A. 205. 
 
 Morgan v. Albany, 152 U. S. 425. 
 
 •An application for a patent which has been rejected, and which is subse- 
 quently amended to conform with the objections of the patent office, is strictly 
 construed. — Norton v. Jensen, 90 Fed. 415; 33 C. C. A. 141. 
 
 Sargent v. Lock, 114 U. S. 63; Meter Co. v. Desper, 101 U. S. 332; Gage v. 
 Herring, 107 U. S. 640; Fay v. Cordesman, 109 U. S. 408. 
 
 It is immaterial, we think, whether the patent office was right or wrong 
 in rejecting complainant's original claims on the ground that the invention 
 therein described was anticipated by the prior art. By amending his speci- 
 fication and claims the complainant admitted, in effect, that some limitations 
 were necessary; and it is now too late to assert that he was entitled to his 
 original claims, or that the claims as finally allowed are as broad as the 
 original claims. — Brill v. St. Louis, 90 Fed. 666 ; 33 C. C. A. 213. 
 
 Sutter V. Robinson, 119 U. S. 530; Shepard v. Carrigan, 116 U. S. 593; Erie 
 V. American, 70 Fed. 58. 
 
 The proceedings in the patent office, and the language of the specification 
 and claim, place certain Umitations upon the patent. The claim was rejected
 
 §207 CLAIMS 201 
 
 on references and finaUy submitted in the form in which it appears. — Lovell 
 V. Johnson, 91 Fed. 160; 33 C. C. A. 426. 
 
 In view of the prior state of the art and the proceedings had in the patent 
 office the claim of complainant's patent should be strictly construed agamst 
 him and be restricted to the particular device described. — Warren v. Casey, 
 93 Fed. 963; 36 C. C. A. 29. 
 
 Mahn v. Harwood, 112 U. S. 354; Sargent v. Lock, 114 U. S. 63. 
 
 On that subject it is to be observed that the doctrines of equitable 
 estoppel, or estoppel in pais, invoked in behalf of the appellee, are not 
 involved or applicable. The estoppel, which arises m such cases is of the 
 nature of estoppel by contract, and its scope in a particular case, like the 
 meaning of a contract, is a matter of the interpretation and construction of 
 the terms used according to their fair meaning. — Magic v. Economy, 97 
 Fed. 87; 38 C. C. A. 56. 
 
 Recce v. Globe, 61 Fed. 967. 
 
 As the appUcant thereupon submitted his amended claims without change 
 in the specifications, and accepted the patent upon the substituted claims, 
 his acquiescence in the ruling forecloses any claim of invention in the rejected 
 feature, through the well established doctrine of_ estoppel which then applies. 
 — Irwin V. Hasselman, 97 Fed. 964 ; 38 C. C. A. 587. 
 
 Morgan v. Albany, 152 U. S. 425; Richards v. Elevator, 159 U. S. 477. 
 
 Having voluntarily abandoned the claim for method limited to the use of 
 " a blast of heat " the patentee or his assignee may not insist that a broad 
 claim containing no suggestion of such invention, shall nevertheless be sub- 
 jected by construction to the same restriction. — Umted btates Repair v. 
 Assyrian, 100 Fed. 965; 41 C. C. A. 123. 
 
 Upon this and some further limitation, the patent was allowed The 
 patentee cannot now expand his claims to cover the ground he yielded in 
 order to obtain the patent. What he conceded was accepted as one of he 
 terms of the grant. — Campbell v. Duplex, 101 Fed. 282; 41 C. C. A. 351. 
 
 Roemer v. Peddie, 132 U. S. 313; Royer v. Coupe, 146 U. S. 524; Thomas v. 
 Rocker, 77 Fed. 420. 
 
 The grant of the patent having been thus procured, certainly the com- 
 plainant below was in no position to insist upon a construction of the allowed 
 claim which would make it practically the equivalent of the rejected claim. — 
 Reineke v. Dixon-Woods, 102 Fed. 349; 42 C. C. A. 388. 
 
 Morgan v. Albany, 152 U. S. 425. 
 
 In the proceedings on his original or forfeited application, he was required 
 by the patent office to acknowledge the state of the art. This disposes of 
 the contention that the device was a primary or pioneer invention. — ^V alker 
 V. Colhns, 102 Fed. 689; 42 C. C. A. 591. 
 
 The patentee himself acquiesced in a finding of the patent office that the 
 existing state of the art negatived the patentability of the device of the 
 patent in suit. The applicant struck out all of the before-quoted matter from 
 L original specifications, and by so doing must be taken ^^^ have acqu^scence 
 in the action of the patent office. - Newark v. Ryan, 102 Fed. 693, 42 C. 
 C. A. 594. 
 
 It is true that if a patentee acquiesces in the rejection of his claim on 
 references cited in the patent office, and accepts a patent on an amended
 
 202 THE FIXED LAW OF PATENTS § 207 
 
 claim, he is thereby estopped from maintaining that the amended claim covers 
 the combinations shown in the references, and from claiming that it has the 
 breadth of the claim that was rejected. — National v. Interchangeable, 10(5 
 Fed. 693; 45 C. C. A. 544. 
 
 Roemer v. Ped.lie, 132 U. S. 313; Morgan v. Albany, 152 U. S. 425; Brill v. 
 Car Co. 90 Fed. 666; Railroad Co. v. Kearney. 158 U. S. 461; Knapp v. Morss, 
 150 U. S. 221; Crawford v. Heysmger, 123 U. S. 589. 
 
 One who acquiesces in the rejection of his claim because it is said to be 
 anticipated by other patents or references is not thereby estopped from 
 claiming and securing by an amended claim every known and useful improve- 
 ment which he has invented that is not disclosed by those references. — • 
 National v. Interchangeable, 106 Fed. 693; 45 C. C. A. 644. 
 
 In this respect the case is altogether different from what it would have 
 been if the invention had been of a fundamental character, and the inventor 
 was sought to be deprived of substantial rights by reason of incidental action 
 on the part of the examiners. — Millard v. Chase, 108 Fed. 399; 47 C. C. 
 A. 429. 
 
 The patentee must be held to the results of the proceedings on his appli- 
 cation, and be restricted thereby. — Millard v. Chase, 108 P'ed. 399; 47 C. 
 C. A. 429. 
 
 That a claim must be construed as limited by amendment and acquiescence 
 in the Patent Office, see Peifer v. Brown, 112 Fed. 435; 50 C. C. A. 331. 
 
 Whatever doubt there might have been as to whether the claim was limited 
 to the construction of its language by the specification, it was removed by 
 the limitation which he put upon it by his explanation, the consequence of 
 which was the allowance of his patent; and the claim must be read as limited 
 in this respect in the same way as are the other claims. — Dowagiac v. 
 Superior, 115 Fed. 886; 53 C. C. A. 36. 
 
 The correspondence between the attorneys for the patentee and the ex- 
 aminer's office, resulted in limitations of the first claim, which we are justified 
 in calling enforced. The broader claims of the first application were aban- 
 doned, and the claims finally adopted cannot be construed as coextensive 
 therewith. — Carnegie v. Brishn, 124 Fed. 213; 59 C. C. A. 651. 
 
 If he was in good faith, he desired the Patent Office to understand that 
 his device was different from the reference. There is no doubt that the Patent 
 Office so understood his representations. Under these circumstances, 
 appellant will not be heard to assert that the Patent Office erred in rejecting 
 his broad claims, or that we should give the claims allowed the meaning of 
 those rejected. — Ajax v. Pettibone, 125 Fed. 748; 60 C. C. A. 516. 
 
 Roemer v. Peddie, 132 U. S. 313; PhoenLx v. Spiegel, 133 U. S. 360. 
 
 In the light of what occurred in the Patent Office with reference to this 
 patent, the inventor consented that his claim should have a literal, narrow 
 construction. — U. S. Peg-Wood v. Sturtevant, 125 Fed. 382; 60 C. C. A. 
 248. 
 
 That conceded limitation of claims in the Patent Office is subsequently 
 binding upon the patentee, see Morgan v. Pennsylvania, 126 Fed. 952; 62 
 C. C. A. 126.
 
 207 CLAIMS 
 
 203 
 
 The limitations thus imposed to secure the patent cannot now be disre- 
 garded. They constitute one of the terms of the grant. — Hale v. World, 
 127 Fed. 964; 62 C. C. A. 596. 
 
 CampbeU v. Duplex, 101 Fed. 282; Roemer v. Peddle, 132 U. S. 313; Royer 
 V. Coupe, 146 U. S. 524; Thorfias v. Rocker, 77 Fed. 420. 
 
 Where a patentee acquiesces in a rejection of claims, and amends the same 
 so as to be more specific, such claims must be read and interpreted with 
 reference to the rejected claims and to the prior state of the art, and cannot 
 be construed to cover either what was rejected by the Patent Office or dis- 
 closed by prior devices. — Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70. 
 
 Knapp V. Morss, 150 U. S. 221; Roemer v. Peddle, 132 U. S. 313; Phoenix v. 
 Spiegel 133 U. S. 360; Singer v. Cramer, 192 U. S. 265; Reece v. Globe, 61 Fed. 
 958; Wood v. Deering, 66 Fed. 547; Ball v. BaU, 58 Fed. 818. 
 
 It is quite unimportant that various claims in both applications were 
 rejected, and the rejection acquiesced in by applicant, so long as the office 
 finally granted the claim which is now in controversy. There is no question 
 here of the construction of the claim, and no attempt to broaden it or to 
 narrow it. — Kinnear v. Wilson, 142 Fed. 970; 74 C. C. A. 232. 
 
 iTis questionable whether the applicant, instead of cancelling, might not 
 have so amended the rejected claims as to differentiate them from the refer- 
 ences cited, and still protect some of the broader elements of his invention. 
 But however that may be, he acquiesced in the action of the Patent Office, 
 and elected to substitute the present narrow claims in suit, and is now es- 
 topped to so expand them as to embrace the rejected subject matter. — 
 Van Epps i;. United, 143 Fed. 869; 75 C. C. A. 77. 
 
 The applicant acquiesced in the rejection, and amended his claim by 
 adding the interlocking means. Thus it was conceded, and the complamant 
 is precluded from asserting the contrary, that, except for the interlocldng 
 means there was no novelty in the invention claimed. — Ironclad v. Dairy- 
 man's, 143 Fed. 512; 74 C. C. A. 372. 
 
 Examination discloses that he was compelled over and over again to amend 
 and narrow his claims in order to avoid the prior art. The waiver and dis- 
 claimers of the file-wrapper were acquiesced in by the patentee in order to 
 obtain his patent, and he is estopped from denying their force and effect. — 
 Williams v. Kemmerer, 145 U. S. 928; 76 C. C. A. 466. 
 
 Hubbell V. U. S. 179 U. S. 77; Shepard v. Carrigan, 116 U. S. 593. 
 
 That where a claim is allowed only after strict limitation, such limitation 
 cannot be disregarded in considering the question of infringement, see 
 United v. Greeimian, 146 Fed. 759; 77 C. C. A. 22. 
 
 That an applicant having added an element to his claim to make it allow- 
 able, as required by the Patent Office, and acquiescing in such limitation, 
 is strictlv limited to a construction containing such added element, see 
 Schweichler v. Levinson, 147 Fed. 704; 78 C. C. A. 92. 
 
 After repeated amendments of the claims, to meet objections for conflict 
 or want of invention, the claims in suit were allowed and the patent issued. 
 The limitations thus imposed leave httle, if any, scope for the claims beyond 
 the several means which are specifically shown. — Schock v. Olsen, 147 Fed. 
 229; 77 C. C. A. 371.
 
 204 THE FIXED LAW OF PATENTS § 208 
 
 The patentee repeatedly acquiesced in rejections of his application for a 
 broad claim, and substituted therefor narrower claims, one after the other, 
 upon each rejection, until his application was granted whereby water is 
 delivered under pressure forwardly and laterly nearly parallel to the surface 
 of the street. In such circumstances the owner of the patent will not be heard 
 to insist that the narrower claim allowed shall cover the broader rejected 
 claims. — St. Louis v. American, 156 Fed. 574; 84 C. C. A. 340. 
 
 Knapp V. Morss, 150 U. S. 221; Corbin v. Eagle, 150 U. S. 38; Hubbell v. 
 U. S. 179 U. S. 77; Computing v. Automatic, 204 U. S. 609; Greene v. Buckley, 
 135 Fed. 520. 
 
 In the case of a meritorious invention a reasonable liberality in applying 
 the doctrine of equivalents is not unusual, and patentees are not always held 
 closely to the precise form stated in the claim when the same functions are 
 found in a structure of a somewhat different form. But the history of this 
 patent during its passage through the patent office precludes any construc- 
 tion of the claim which will eliminate the qualifying words " spirally wound." 
 
 — National v. Roebhng's, 158 Fed. 99; 85 C. C. A. 567. 
 Victor V. American, 151 Fed. 601. 
 
 The applicant had a long struggle in securing his patent, and was con- 
 strained to trim away, modify, and otherwise define his specifications and 
 claims to meet the references made by the office, until they were brought 
 within very narrow limits before his patent would be allowed. He must be 
 deemed to have surrendered and disclaimed what he conceded, and to have 
 imposed such definitions upon the language of the patent as he attributed 
 to it in order to secure the grant. — American v. Cleveland, 158 P>d. 978 ; 
 86 C. C. A. 182. 
 
 Sargent v. Hall, 114 U. S. 63; Thomas v. Rocker, 77 Fed. 420; Dowagiac v. 
 Superior, 115 Fed. 886; Hale v. World, 127 Fed. 964; MuUer v. Lodge, 77 Fed. 
 621; Warren v. Casey, 93 Fed. 963; Streit v. Kaiper, 143 Fed. 981; New York 
 V. Ambler, 103 Fed. 316. 
 
 § 2o8. Construction — Limitation — Patent Office Action Not 
 Limiting. 
 
 We do not mean to be understood as asserting that any correspondence 
 between the applicant and the commissioner can be allowed to enlarge, 
 diminish or vary the language of a patent afterwards issued. Undoubtedly 
 a patent, like any other written instrument, is to be interpreted by its own 
 terms. But when a patent bears on its face a particular construction, inas- 
 much as the specification and claim are in the words of the patentee, it is 
 reasonable to hold that such a construction may be confirmed by what the 
 patentee said when he was making his application. The understanding of 
 a party to a contract has always been regarded as of some importance in its 
 interpretation. — Goodyear v. Da\'is, 102 U. S. 222; 26 L. Ed. 149. 
 
 It is quite true, where the differences between the claim made and as allowed 
 consist of mere changes of expression, ha\ang substantially the same meaning, 
 such changes, made to meet the xnews of the examiner, ought not to be per- 
 mitted to defeat a meritorious claimant. While not allowed to re\nve a 
 rejected claim by a broad construction of the claim allowed, yet the patentee 
 is entitled to a fair construction of the terms of his claim as actually granted. 
 
 — Hubbell V. U. S. 179 U. S. 77; 45 L. Ed. 95; 21 S. Ct. 24. 
 
 The applicant amended his claim to comply with a requirement to put it in 
 proper form. Such an amendment cannot be classed as a disclaimer. — 
 Hunt Bros. v. Cassidy, 53 Fed. 257; 3 C. C. A. 525.
 
 § 209 CLAIMS 205 
 
 It mav well be, in view of Rover v. Coupe, 146 U. S. 524; Knapp v. Morss, 
 150 U. S. 224; Corbin v. Eagle, 150 U. S. 40, and Morgan v. Albany, 152 U. S. 
 425, cited, that a patentee cannot be permitted to hold under his patent 
 anything that he has clearly renounced and excluded from liis inventions 
 during the prosecution of his application. But surely it has never been held 
 that mere changes in phraseology to suit the views of the examiner, and to 
 distinguish the claims made from those contained in prior applications, to 
 which reference has been made, can be held to defeat the patent, when 
 granted. What is forbidden is the attempt, after a patent has been procured 
 surrendering or disavowing substantial claims or devices, to recover such 
 renounced and abandoned claims by demanding a broad construction of 
 those allowed. - Hillborn v. Hale, 69 Fed. 958; 16 C. C. A. 569. 
 
 It is plain that, whatever were the views of the patent office, the matter 
 stricken out was mere surplusage, and its omission was of no effect. — Heap 
 V, Greene, 91 Fed. 792; 34 C. C. A. 86. 
 
 Winans v. Denmead, 15 How. 330; Reece v. Globe, 61 Fed. 958. 
 
 To be estopped by the action of the Patent Office, the patentee must be 
 shown to have surrendered something which he now claims in order to obtain 
 that which was aUowed. — Bundy v. Detroit, 94 Fed. 524; 36 C. C. A. 375. 
 
 The effect of Reece v. Globe, as shown at the foot of page 969 of 61 Fed. 
 and page 205 of 10 C. C. A., is to hold that such proceedings are of no effect 
 when no direct issue of novelty or invention was involved, or when the amend- 
 ments made by the applicant came in only incidentally, or in reference to an 
 incidental matter. The case at bar, however, is clearly not excluded by the 
 rule thus given. — Coburn v. Chandler, 97 Fed. 333; 38 C. C. A. 201. 
 
 So, the applicants never acquiesced in the examiner's action; the exam- 
 iner did not require the amendment as a condition precedent to the allowance 
 of claims narrower than originally made; and the appellate tribunal allowed 
 the claims after examining the device in the spirit that giveth life. — Regent 
 V. Penn. 121 Fed. 80; 57 C. C. A. 334. 
 
 That the subsequent allowance of a claim without the restriction imposed 
 may remove such restriction, see Kelley v. Diamond, 123 Fed. 882; 59 C. C. 
 A. 370. 
 
 That a claim formulated in the Patent Office for an interference will not 
 be construed as limiting the invention, see Reed v. Smith, 123 Fed. 878; 
 59 C. C. A. .366. 
 
 It is a corollary to the general rule, that if the applicant successfully defends 
 his position and secures the assent thereto of those in the office having charge 
 of the application, and the patent issues notwithstanding the objection which 
 had at one time been urged, the patent is not subject to diminution on that 
 account. — American v. Cleveland, 158 Fed. 978; 86 C. C. A. 182. 
 
 That the file-wrapper contents of an abandoned application by the same 
 person upon the same invention is not necessarily evidence of limitation of 
 claims, see Delaware v. Shelby, 160 Fed. 928; 88'C. C. A. 110. 
 
 That rejection prior to amendment by the Patent Office does not argue for 
 the iavalidity of a claim subsequently amended and allowed as amended, see 
 Dunn V. Standard, 163 Fed. 521 ; C. C. A. 
 
 § 209. Construction — Limitation — Patent Office Action — Protest. 
 
 We now come to the novel question presented in this case. It is argued, 
 and the circuit court held, that because the applicants after the rejection of
 
 206 THE FIXED LAW OF PATENTS §§ 210-211 
 
 the claims, and after inserting the required limitations in the specifications, 
 protested that the examiner was wrong in rejecting the claims, and advised 
 him that they proposed to insist on a construction of claims as amended to 
 cover the same ground as the rejected claims, the ruling of the patent office 
 is not to be given the same effect as it would otherwise have. It seems to 
 be contended that an applicant can qualify or minimize the effect of his 
 acquiescence in the rejection of a claim by stating to the patent office that it 
 is not an acquiescence, and that he expects to insist upon his right to cover the 
 same ground as the rejected claim covered, under other and amended claims. 
 We are clearly of opinion that he cannot thus destroy the effect of a patent 
 office ruhng. — Thomas v. Rocker, 77 Fed. 420; 23 C. C. A. 211. 
 
 §210. Construction — Limitation — Patent Office Action — 
 Rule. 
 
 In order that the proceedings in the Patent Office should positively 
 operate as a waiver or estoppel, they must relate to the pith and marrow of the 
 alleged improvement, and be understandinglv and deliberately assented to. — 
 U. S. Peg- Wood V. Sturtevant, 125 Fed. 382; 60 C. C. A. 248. 
 
 Magic V. Economy, 97 Fed. 87; Paxton v. Brinton, 107 Fed. 137. 
 
 §211. Construction — Limitation — Specific Claims. 
 
 When a device designed merely for the improvement of a well-advanced art 
 is desciibed as having particular features of construction which are adapted 
 to accomplish specific results or modes of operation, and the claim of the 
 patent is for that device, the features so described are covered by the claim, 
 and may not be rejected, or treated as of secondary importance, in order to 
 extend the patent over other forms or features not described. — Temple 
 V. Goss, 58 Fed. 196; 7 C. C. A. 174. 
 
 The claim of a specific combination or device in a patent is a renunciation 
 of every claim to any other combinations or devices, for performing the same 
 functions that are apparent from the face of the patent and are not colorable 
 evasions of the combination or device claimed. — Stirratt v. Excelsior, 61 
 Fed. 980; 10 C. C. A. 216. 
 
 A combination for a specific invention is limited to the precise elements. — 
 Muller V. Lodge, 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Water Meter v. Desper, 101 U. S. 332; Sargent v. Lock Co. 114 U. S. 63; Fay 
 V. Cordesman, 109 U. S. 408; Hendy v. Iron, 127 U. S. 371. 
 
 By force of the specification and drawings of the patent and the concluding 
 terms of each of the claims, of which infringement is alleged, the invention is 
 limited to certain peculiarities of construction and resulting functions de- 
 scribed. — Johnson v. Powers, 85 Fed. 863; 29 C. C. A. 459. 
 
 But if the invention of this patent could be classified as a primary one, 
 still the terms of claim 5 are so restricted that upon no sound principle of 
 construction could it be held to cover the devices used by the defendants. — 
 Stokes V. Heller, 101 Fed. 266; 41 C. C. A. 335. 
 
 Keystone v. Phoenix, 95 U. S. 274; Railroad v. Mellon, 104 U. S. 112; McClain 
 V. Ortmayer, 141 U. S. 419; Wright v. Yuengling, 155 U. S. 47; Lewis v. Steel 
 Co. 59 Fed. 129; Duff v. Pump Co. 107 U. S. 636; Bragg v. Fitch, 121 U. S. 478; 
 Knapp V. Morss, 150 U. S. 221. 
 
 Having thus described his conveyor in his claim, he puts it forward as 
 a constituent of his invention, and he could not now say that the kind of
 
 § 212 CLAIMS 207 
 
 frame he will employ is different. — Moore v. Eggers, 107 Fed. 491 ; 46 
 CCA. 425. 
 
 " Keystone" t^! Phoenix, 95 U. S. 274; Fay t;. Cordesman, 109 U. S. 408; Brown 
 V. Mfg. Co., 57 Fed. 731; Mfg. Co. v. Randal, 104 Fed. 355. 
 
 While the patent to Myers was issued more than a year in advance of the 
 patent in suit, the apphcation for it was filed 11 days after, so that they 
 were for a time co-pending in the Patent Office. No interference was declared. 
 That the existence of the Myers patent was recognized and its drawings 
 cited during the pendency of the application of the patent in suit is conceded. 
 The fact of the allowance, with the grant to Myers in view, and under the 
 circumstanees stated, is presumptive of an understanding that claim 1 was 
 Umited to the structure substantially as described — not in conflict with 
 Mvers' dpvice — and of purpose to confer monopoly within such scope. 
 The presumption thus arising would not overcome the grant for an invention 
 which was broadly specified and broad in fact. — Lowden v. Janesville, 148 
 Fed. 686; 78 C. C. A. 548. 
 
 § 212. Construction — Limitation — Specification and Drawings. 
 
 Claims must be limited to the means described in the specification.— 
 Hailes v. VanWormer, 87 U. S. 353; 22 L. Ed. 247. 
 
 The plain and explicit language of the specification requires a construction 
 of the claim which will enable the defendant to escape liability ihere is 
 nothing in the context to indicate that the patentee contemplated any alter- 
 native arrangement. - Snow V. Railway, 121 U. S. 61/; 30 L. Ed. 1004, 
 7 S. Ct. 1343. 
 
 The description does not necessarily limit the claims. — Continental v. 
 Eastern, 210 U. S. 405; 51 L. Ed. 922; 28 S. Ct. 748. 
 
 \ mere reference in a claim to a letter on the drawing does not of itself 
 limit the claim to the precise geometrical shape shown in the drawing, even 
 though the description of the drawing in the specification refers to the part 
 thus lettered by an adjective appropriate to the form shown in the drawing, 
 unless that particular form is pointed out in the specification, or was known 
 by the state of the art to be the particular improvement the inventor claimed. 
 — DeLamater v. Heath, 58 Fed. 414; 7 C. C A. 279. 
 
 Reed v. Chase. 25 Fed. 100. 
 
 As we have shown, the specification and drawings clearly contemplate the 
 use of a track consisting of two small wires placed side by side, and this 
 hmitation enters into the claims by necessary implication. — Lamson v. 
 Godehard, .59Fed. 776; 8C. C. A. 265. 
 
 Roller Mill v. Walker, 1-38 U. S 124; Caster Co. ^. Spiegel 133 U- 8^360; 
 Bragg V. Fitch. 121 U. S. 478; Keystone v. Phcenix, 9o U. b. 274, bnarp v. 
 Riessner, 119 U. S. 631. 
 
 The claim should be read and construed in the light of the df ^i-i^ion of 
 the invention and drawings attached, and of the state of the art to which the 
 invention belongs, not to enlarge the claim, but to ascertain its true meaning 
 and the actual invention asserted, and which the inventor desired to secure 
 by letters patent. — Card v. Colby, 64 Fed. 594; 12 C. C. A. 319. 
 
 It icould seem that the usual prehminary statement of the class and nature 
 of the improvement, in the absence of any declaration of broad invention.
 
 208 THE FIXED LAW OF PATENTS § 213 
 
 would be construed as limiting the claim within the class and to the means 
 specified. — Schuyler v. Electric, 66 Fed. 313; 13 C. C. A. 491. 
 
 Words and phrases which might have been omitted, on the presumption 
 that they relate to nonessentials, may be introduced in such direct and 
 positive manner as to leave the courts no option except to regard them as 
 effecting the objects and limitations of the instrument in question. — Long 
 V.Pope, 75 Fed. 835; 21 CCA. 533. 
 
 Reece v. Globe, 61 Fed. 958. 
 
 The scope of letters patent must always be limited to the invention predi- 
 cated in the claim, and this claim can never be enlarged by any language 
 employed in other parts of the specification. — Tiemann v. Kratz. 85 Fed 
 437; 29CC A. 257. 
 
 Railroad v. Mellon, 104 U. S. 112. 
 
 General language in a claim which points to an element or device which is 
 more fully described in the specification, is limited to such an element or 
 device as is there described. — Expanded v. Board, 111 Fed. 395- 49 C C 
 A. 406. 
 
 Smith V. Vulcanite, 93 U. S. 486; Adams v. Lindell, 77 Fed. 432; Mitchell v 
 Tilghman, 19 Wall. 287. 
 
 Note: The citations do not bear out so broad a statement. Unqualified, 
 the statement clearly is not the law. Such is the law with a narrow, specific 
 improvement ; but with a generic invention, it is not. 
 
 § 213. Construction — Limitation — State of Art. 
 
 Having reference to the state of the art at the date of the alleged invention 
 and the claims of the patent, the patentee must be limited to the combina- 
 tion shown. — WoUensak v. Reiher, 115 U. S. 87; 29 L. Ed. 355; 5 S. Ct. 
 1132. 
 
 It is undoubtedly true that if the prior state of the art exhibits the combina- 
 tion of all these essential elements, except the peculiarly constructed hinge 
 the patentees show, accomplishing substantially the same purpose which 
 their improved construction brings about, then the claims of this patent must 
 be restricted to the peculiar construction of the hinge. — Griswold v. Harker, 
 62 Fed. 389; 10 C C A. 435. 
 
 Stirratt v. Mfg. Co. 61 Fed. 980. 
 
 Manifestly neither of the patents is for a primary invention. In each 
 instance patentability may be conceded. Nevertheless, these inventions, 
 by reason of the state of the prior art, belong to that class in which the 
 patentee is to be restricted to the specific form of improvement shown and 
 described. — Ryan v. Runyon, 93 Fed. 970; 36 C C A. 36. 
 
 Railway v. Sayles, 97 U. S. 554; Duff v. Pump Co. 107 U. S. 636. 
 
 In view of the limitations imposed upon the claims by the prior state 
 of the art, they ought not to receive a construction which will enable them to 
 cover a combii>ation in which the several devices are not substantially those 
 described in the patent. It will not do to say that, because the patentee was 
 the first to introduce locking devices into a motor in which the regulator 
 and reverser were operated by different levers, he is entitled to a monopoly 
 of all locking devices in such a motor that will co-ordinate the movements 
 of the two levers so that neither will move except when the other is at a
 
 § 214 CLAIMS 209 
 
 predetermined position. Precisely that function had been previously per- 
 formed by the locking devices used to co-ordinate levers, and, if the patentee 
 had done no more than to introduce them into the levers of a motor, he 
 would merely have made a change of location. He is entitled to the merit 
 of being the first to conceive of the utility of interlocking the two levers of 
 a motor controller of the type in which separate levers are employed, but his 
 right to a patent must rest on the novelty of the means he has contrived to 
 carry his idea into practical appUcation, — Thomson-Houston v. Lorain, 
 107 Fed. 711; 46 C. C. A. 593. 
 Aron V. Raih-oad, 132 U. S. 84. 
 
 Where none of the prior inventors exhibits or suggests any co-operation of 
 the elements upon the principle adopted by the patent in suit, or upon any 
 principle adapted to serve the same purpose, the use of the old elements 
 may limit, but cannot defeat the patent. — Imperial v. Crown, 139 Fed. 
 312; 71 C. C. A. 442. 
 
 Note: Brawley, J., 4th Circ. writing the above. How such a prior device 
 or the use of old elements " may limit " the patent does not appear. So 
 much of this statement is distinctly untenable; for if it were the fact that 
 prior use of the elements of an invention without ever producing the result 
 attained by the patent could be postulated to limit the claim, such a thing as 
 a generic invention or a primary improvement would be impossible. 
 
 In our judgment the reason of the case leads to the conclusion that between 
 contracting parties, extraneous evidence is inadmissible if there is no ambi- 
 guity or uncertainty in the language of the description and claims, and that, 
 if there is uncertainty, outside evidence is admissible only to make clear what 
 the applicant meant to claim and the government to allow, and not for the 
 purpose of showing, even in the slightest degree, that the applicant had no 
 right to claim and that the government was improvident in allowing what 
 was in fact claimed and allowed. — Siemens-Halske v. Duncan, 142 Fed. 
 157; 73C. C. A. 375. 
 
 Trotman v. Wood, 16 C. B. (N. S.) 479; Clark v. Adie, L. R. 2 App. Cas. 423; 
 Chambers v. Chrichley, 33 Beavan, 374; Crossley v. Dixon, 10 H. of L. Cas. 293; 
 United States v. Harvey, 196 U. S. 310; Faulks v. Kamp, 3 Fed. 898; Consoli- 
 dated V. Guilder, 9 Fed. 155; Underwood v. Warren, 21 Fed. 573; Parker v 
 McKee, 24 Fed. 808; Pope v. Owsley, 27 Fed. 100; American v. Laraway, 28 Fed. 
 141; Adee i;. Thomas, 41 Fed. 342; Woodward v. Boston, 60 Fed. 283; Babcock 
 V. Clarkson, 63 Fed. 607; National v. Connecticut, 73 Fed. 491; Alvin v. Schar- 
 ling, 100 Fed. 87; Standard v. Leslie, 118 Fed. 557; Frank v. Barnard, 131 Fed. 
 269; contra Noonan v. Chester, 99 Fed. 90; Smith v. Ridgley, 103 Fed. 875. 
 
 § 214. Constniction — Limitation — Words of Limitation. 
 
 " Substantially as set forth " are words of limitation in a claim which 
 limit the combination to the elements described. — Pope v. GormuUv 
 144 U. S. 248; 36 L. Ed. 423; 12 S. Ct. 641. 
 
 To prevent a broadening of the scope of the invention beyond its fair 
 import m the light of the circumstances surrounding the issuance of the 
 patent, the words of limitation contained in the claim must be ^;iven due 
 effect, and, giving them such effect, the statement in the first claim of the 
 elements entermg into the combination must be construed to refer to ele- 
 ments m combination having substantially the form and constructed sub- 
 stantially as described in the specification and shown in the drawing — 
 Smger v. Cramer, 192 U. S. 265; 48 L. Ed. 437; 24 S Ct "^91
 
 210 THE FIXED LAW OF PATENTS § 215 
 
 The words " substantially as described " are words of limitation and restric- 
 tion in the claim of an improvement. — Fox v. Perkins, 52 Fed. 205 ; 3 C. 
 C. A. 32. 
 
 Shepard v. Carrigan, 116 U. S. 598. 
 
 In view of the state of the art, the claim cannot be broadly construed, and 
 it must "be held to be fully limited by the words " substantially as described." 
 — Reece v. Globe, 61 Fed. 958; 10 C. C. A. 194. 
 
 RaUway v. National, 110 U. S. 229. 
 
 If therefore, the words " substantially as described," be omitted from the 
 claim, and the preceding language be taken literally, nothing new would be 
 embraced and the claim would consequently be invaUd. — Campbell v. 
 Richardson, 76 Fed. 976; 22 C. C. A. 669. 
 
 The words " substantially as set forth," with which this claim concludes, 
 referred to the specification and make the description of the housings therein 
 contained an essential part of the claim. " General language in a claim which 
 points to an element or device more fully described in the specification, is 
 limited to such an element or device as is there described." — Brill v. St. 
 Louis, 90 Fed. 666; 33 C. C. A. 213. 
 
 Adams v. LindeU, 77 Fed. 432; Mitchell v. Tilghman, 19 WaU. 287; Stirrat 
 V. Mfg. Co. 61 Fed. 980. 
 
 The second claim is narrow and is limited to the corrugations " substan- 
 tually as set forth." The defendant's dies not having the same corrugations or 
 the corrugations located in the same situation on the dies, do not infringe this 
 claim. — Simonds v. Hathorn, 93 Fed. 958; 36 C. C. A. 24. 
 
 If the claim is to be read in connection with the specification, or any 
 significance is to be attached to the words " substantially as described," it 
 plainly must be limited to the coils of the patent. — Webster v. General, 
 115 Fed. 497; 53 C. C. A. 229. 
 
 Limited as above stated, appellant's structure does not infringe the 
 specific organization covered by the first claim of the patent in suit. The 
 words " substantially as set forth," with which the claim concludes, cannot 
 here be ignored. — Carnegie v. Brislin, 124 Fed. 213; 59 C C. A. 651. 
 
 He expressly declares that he does not intend to limit himself with regard 
 to the different parts of his invention — a reservation sufficient, as it would 
 seem to overcome the customary formula " substantially as described," at 
 the end of the claim. — Boyer v. Keller, 127 Fed. 130; 62 C. C. A. 244. 
 
 That where the improvement is narrow the words " substantially as set 
 forth " must be construed as words of Umitation, see Rose v. Dowden, 157 
 Fed. 681 ; 85 C. C. A. 449. 
 
 Erie v. American, 70 Fed. 58. 
 
 § 215. Construction — Limitation — Miscellaneous Rules. 
 
 Winans v. Denmead, 15 How. 330 construed with other cases and followed. 
 — Reece v. Globe, 61 Fed. 958; 10 C. C. A. 194. 
 
 Miller V. Mfg. Co. 151 U. S. 186; Mfg. Co. v. Adams, 151 U. S. 1.39; Snow v. 
 Railway, 121 U. S. 617; Sargent v. Lock Co. 114 U. S. 63; Water Meter v. Des- 
 per, 101 U. S. 332; Fay v. Cordesman, 109 U. S. 408; Com Planter Pat. 23 Wall. 
 181; Hoyt v. Home, 145 U. S. 302.
 
 §216 CLAIMS 211 
 
 Doubtless a patentee is entitled to every use to which his invention is 
 susceptible, whether such use be known or' unknown to him (Potts v. Craeger, 
 155 U. S. 597) and if the patent applying the means used in the former art 
 were in force it would doubtless be entitled to control the use of the device in 
 the later art. Under the doctrine which gives to the patentee all the uses to 
 which his invention is susceptible, whether known or unknown, it is difficult 
 to see why the public should not be entitled to all the uses to which the means 
 involved in devices covered by lapsed patents are susceptible, or why a 
 patentee who employs the old means with improvements adapting the use 
 to a new or analogous industry should not be limited to a monopoly of the 
 combination or improved machine. To say that one who discovers that old 
 means will do a new work without any change may thereby monopolize the old 
 means as applied to such new work, would be carrying the discovery doctrine 
 altogether too far. — Wright v. Clinton, 67 Fed. 790; 14 C. C. A. 646. 
 
 Brook V. Ashton, 27 Law. J. Q. B. 145; Potts v. Craeger, 155 U. S. 101; Penna. 
 V. Locomotive, 110 U. S. 490; Brown v. Piper, 91 U. S. 37; Roberts v. Ryer, 
 91 U. S. 150; Atlantic v. Brady, 107 U. S. 192; Tucker v. Spalding, 13 WaU. 
 453; Rob.Pat. 259 n. 1; Knapp v. Morss, 150 U. S. 221; Duff v. Pump, 107 U. S. 
 636; Newton v. Furst, 119 U. S. 373; Bragg v. Fitch, 121 U. S. 478; Dryfoos v. 
 Wiese, 124 U. S. 32. 
 
 Features described as preferable do not constitute a limitation of the claim . 
 When the inventor says, " I recommend the following method," he does not 
 thereby constitute such method a portion of his patent. His patent may be 
 infringed, although the party does not follow his recomrnendation, but 
 accomplishes the same end by another method. — Krajewski v. Pharr, 105 
 Fed. 514; 44 C. C. A. 572. 
 
 SewaU V. Jones, 91 U. S. 171. 
 
 In view of these circumstances (the narrowness of invention) and of the 
 fact that the apparatus of the patent in suit is of doubtful utility, and does not 
 appear ever to have been put upon the market, the claims can only be so 
 interpreted as to cover details of construction. — Huber v. Mott, 125 Fed. 
 944; 60C. C. A. 182. 
 
 § 2i6. Construction — Limitation to Avoid Anticipation. 
 
 We ought to give a favorable construction so as to sustain the patent if 
 it can be fairly done. — Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 The patent in suit, in order that it may be held valid, must be construed in 
 view of the disclaimer contained in that patent, and be limited to the par- 
 ticular devices shown in the specification. — Ashcroft v. Boston, 97 U. S. 189; 
 24 L. Ed. 982. 
 
 Where the complainant insists upon an extension of his claim he must sub- 
 mit also to the risk of anticipation. — Sutter v. Robinson, 119 U. S. 530; 30 
 L. Ed. 492; 7 S. Ct. 376. 
 
 A construction broad enough to cover infringement by equivalency may 
 defeat the claim, because broadening the construction broadens the danger 
 of anticipation. — Pope v. Gormully, 144 U. S. 238; 36 L. Ed. 420; 12 S. 
 Ct. 637. 
 
 If complainant's claim should receive such construction as would cover 
 defendant's machine, then it was clearly anticipated in the prior devices 
 already referred to; that if valid under a narrow and restricted construction, 
 which would limit the patent to the specific device described in the specifica-
 
 212 THE FIXED LAW OF PATENTS § 216 
 
 tion, then it is not infringed by defendants. — Fox v. Perkins, 52 Fed. 205: 
 3 C. C. A. 32. 
 
 If the claims of the patent in suit were so constructed as to charge the 
 defendant with infringement, the claims would be void for want of novelty; 
 if construed so as to avoid anticii^ation, defendant does not infringe. — Gates 
 V. Fraser, 55 Fed. 409; 5 C. C. A. 154. 
 
 To construe the claims of the patent so broadly as to cover appellant's 
 device would render them worthless. — Holman v. Jones, 61 Fed. 105; 9 
 C. C. A. 385. 
 
 There is nothing new in the elements described. The only novelty is in the 
 combination; and in this respect the device differs so little from others of 
 an earlier date shown by the art, and intended for the same use, that the 
 claims must b6 narrowly construed. We agree with the circuit court that the 
 proofs do not exhibit anything sufficient to repel the ordinary presumption 
 attending the grant of a patent. But this is only true, we think, when the 
 claims are thus narrowly construed. — Holman v. Jones, Gl Fed. 105; 9 
 C. C. A. 385. 
 
 The invention being specific and limited, if the claims warranted a con- 
 struction broad enough to cover the device of the appellee, we should have no 
 hesitation in holding it void for want of novelty. — Stirrat f. Excelsior, 
 61 Fed. 980; 10 C. C. A. 216. 
 
 Atlantic v. Brady, 107 U. S. 192; Vinton v. Hamilton, 104 U. S. 485; Slawson 
 V. Railroad, 107 U. S. 653; King v. Gallun. 109 U. S. 99; Double Pointed v 
 Two Rivers, 109 U. S. 117; Estev v. Burdett, 109 U. S. 633; Biissey v Mfg Co 
 110 U. S. 131; Phillips v. Detroit, 111 U. S. 604; Morris v. McMillin, 112 U S 
 244; Ilollister v. Mfg. Co. 113 U. S. 59; Ellbert v. Gaslight Co. 50 Fed. 205. 
 
 To imply as elements of a claim parts not named therein for the purpose of 
 limiting its scope, so that it may be accorded novelty, is contrary to a well-set- 
 tled rule of the patent law. — Stearns v. Russell, 85 Fed. 218; 29 C. C. A. 121. 
 
 McCarty?;. Railroad, 160 U. S. 110. 
 
 These changes are of so slight a character, and the improvement by the 
 new combination so debatable, that if any liberahty in construction, or in 
 the application of the doctrine of equivalents, be conceded for the purpose 
 of including other improvers, along the same lines within the scope of this 
 patent, it will have the necessary effect of rendering it void for anticipation. 
 " That which infringes it, if later, anticipates it if earlier." — St. Louis v. 
 National, 87 Fed. 885; 31 C. C. A. 265. 
 
 It is manifest that the inventions secured by the claims are of very narrow 
 character, and that they cannot receive the broad construction which their 
 language would authorize without affirming their invalidity for want of 
 patentable novelty. — Brill v. Pekham, 108 Fed. 267; 47 C. C. A. 315. 
 
 Courts are reluctant to decree patents invalid when a decree can be based 
 on infringement. — Wilcox v. Sherborne, 123 Fed. 875 ; 59 C. C. A. 363. 
 
 Note: This is lamentably true ; and is one main respect in which the courts 
 fail to do their duty by the public. If a patent is invalid and the court 
 has jurisdiction thereof, it is the plain duty of the court as a servant of the 
 Republic to destroy the illegal monopoly. 
 
 Even where a patent incidentallv makes express reference to features 
 other than the essential features, it has been held that the patent cannot be 
 supported by such features alone, if the inventor does not rely upon them in 
 describing the substance of his invention. Still less can a patent be supported
 
 § 217 CLAIMS 213 
 
 by features not referred to, claimed, or even suggested in the patent, and not 
 a function of thing patented except when used in a special combination not 
 claimed. — Greene v. United, 132 Fed. 973; 66 C. C. A. 43. 
 Waterman v. Lockwood, 125 Fed. 490. 
 
 §217. Construction — Narrow. 
 
 When the claim is confined to a particular article or fabric, it is tanta- 
 mount to a declaration that nothing else was claimed. — White v. Dunbar, 
 119 U. S. 47; 30 L. Ed. 303; 7 S. Ct. 72. 
 
 The plaintiff's patent must be limited to the mechanism described and 
 claimed by him, and cannot be extended so as to cover all mechanism for per- 
 forming the function attained, nor to the process of operation described in his 
 patent; and the defendant's mechanism, in each form of his machine cannot 
 be regarded as merely an equivalent for the plaintiff's mechanism. — Drvfoos 
 V. Wiese, 124 U. S. 32; 31 L. Ed. 362; 8 S. Ct. 354. 
 
 Yale V. Sargent, 117 U. S. 373. 
 
 Where, in a specific patent the claim is limited to the elements shown and 
 claimed, the omission of an element thereof avoids infringement. — Forn- 
 crook V. Root, 127 U. S. 176; 32 L. Ed. 97; 8 S. Ct. 1247. 
 
 Fay V. Cordesman, 109 U. S. 408; Yale v. Sargent, 117 U. S. 373; Dryfoos v. 
 Wiese, 124 U. S. 32. 
 
 Where the patent in suit is not a pioneer patent the claims must be strictly 
 construed. — Clark v. Willimantic, 140 U. S. 481 ; 35 L. Ed. 521 ; 11 S. Ct. 846. 
 
 Where it appears that the patent in suit is not a pioneer in the art, the 
 claims will be construed strictly and narrowlv to the device described. — 
 Gordon v. Warder, 150 U. S. 47; 37 L. Ed. 992; 14 S. Ct. 32. 
 
 It clearly appears that complainant was not a pioneer in this department of 
 machinery. Many inventors had preceded him and many patents had been 
 issued. We think the case is one where, in view of the state of the art the 
 patentee is entitled, at the most, onlv to the precise devices mentioned in the 
 claims. — Boyd v. Janesville, 158 U.' S. 260; 39 L. Ed. 973; 15 S. Ct. 837. 
 
 The claim of the patent, in view of the state of the art, covers a very 
 narrow invention, if construed to cover the device of defendant it is void for 
 w^ant of novelty. — Hammond v. Goodyear, 58 Fed. 411; 7 C. C. A. 276. 
 
 This patent is a subordinate one, and must receive a narrow construction. 
 It is not permissible to give to the terms of a patent of that class so wide a 
 sweep as to include the various devices which may actuate the mechanism, 
 and the range of its monopoly is a limited one. — Westinghouse v. N. Y., 
 63 Fed. 962; 11 C. C. A. 528. 
 
 A claim for only the arrangement and combination of parts must be limited 
 to a strict construction. — Roemer v. Peddie, 78 Fed.. 117; 24 C. C. A. 39. 
 
 We find the first claim of the patent is for a specific combination of elemen- 
 tary parts. Upon well settled principles, this claim must be construed strictly, 
 and the patentee held to the particular arrangement of parts described and 
 specified. — DeBeaumont v. Williames, 80 Fed. 995; 26 C. C. A. 298. 
 
 Duff V. Pump Co. 107 U. S. 636; Bragg v. Fitch. 121 U. S. 478; Snow v. Rail- 
 «ray, 121 U. S. 617; Wright v. Yuengling, loo U. S. 47.
 
 214 THE FIXED LAW OF PATENTS §J 218-219 
 
 The facts that the claim is a narrow one, and that, after notice from patent 
 office, Fay adhered to the special form of claim previously adopted; that the 
 tool had not become generally commercial; and that the patentee unreason- 
 ably rested upon his supposed rights, — taken together, present a situation 
 which forbids a liberal construction of the patentee's claims for the purpose 
 of sustaining the contention of infringement. — Starrett v. Stevens, 100 
 Fed. 93; 40 C. C. A. 289. 
 
 It is true that Hamilton was the first inventor of a time-printing machine 
 for directly measuring and recording intervals of time. It is also true that 
 for this reason his patent should be liberally construed. But, at the same 
 time, we know of no rule for construction which will permit the court to hold 
 a machine to be an infringement of that patent which does not contain the 
 original and vital elements of the invention, in a suit in which the claim of 
 the patent relied upon expressly makes these elements a part of the combina- 
 tion covered by the claim, — Wilson v. Calculagraph, 144 Fed. 91 ; 75 C. 
 C. A. 249. 
 
 § 2i8. Construction — Omitting Element. 
 
 A patentee cannot claim the benefit of an element of his invention thus 
 vaguely and indefinitely hinted at. It is clear that if the patentee intended 
 to include the cooling of the wax or paraffine before compressing it upon the 
 wire, he has failed to describe in his specification that clement of his invention 
 as required by the statute. Instead of describing the process he mentions a 
 quality of the product, and asks the court to infer the process from the 
 quality. Such a vague and inverted method of description is not a compli- 
 ance with the statute. That part of the alleged invention is not even referred 
 to in the most distant maimer in the claim. It has been held by this court 
 that, " the scope of letters patent should be limited to the invention covered 
 by the claim ; and, though the claim may be illustrated, it cannot be enlarged 
 by the language in other parts of the description." — Western v. Ansonia, 
 114 U. S. 447; 29 L. Ed. 210; 5 S. Ct. 447. 
 
 R. R. V. Mellon, 104 U. S. 112. 
 
 The claim could hardly be construed to permit the omission of any of the 
 described steps of the process, unless such omission had been recognized in 
 the specification. — U. S. Repair v. Standard, 95 Fed. 137; 37 C. C. A. 28. 
 
 § 219. Construction — Plain Intent and Meaning. 
 
 The courts of this country cannot alwa}^s indulge the same latitude which 
 is exercised by English judges in determining what parts of a machine are 
 or are not material. Our law requires the patentee to specify particularly 
 what he claims to be new, and if he claims a combination of certain elements 
 or parts, we cannot declare that any one of these elements is immaterial. 
 The patentee makes them all material by the restricted form of his claim. 
 We can only decide whether any part omitted by an alleged infringer is 
 supplied by some other device or instrumentality which is its equivalent. — 
 Union v. Desper, 101 U. S. .332; 25 L. Ed. 1024. 
 
 The meaning of letters patent, like other grants or written instruments, 
 must be ascertained by the language emploved, as applied to the subject 
 matter. — Krajewski v. Pharr, 105 Fed. 514;' 44 C. C. A. 572. 
 
 Robinson v. Sutter, 8 Fed. 828; Adams v. Iron Co. 26 Fed. 324; Sayre v. 
 Scott, 55 Fed. 971.
 
 § 219 CLAIMS 215 
 
 Some allowance may well be made for an ^^^^^'^^^ J^^'^'J^^^ ^\'^.' 
 member that in the recent case of Westmghouse v. Boyden, 10 U. b. 537 
 the Supreme Court itself required three hearings before it could determine 
 the meaning and scope of the patent claims, and the record m this case 
 sho^S that such learned experts L Gen. Spear and Mr. \Valker differ radicaUy 
 as to what the claims of the original patent cover. - Crown .. Aluminum, 
 108 Fed. 845; 48 C. C. A. 72. 
 
 Such a restriction was not required by the prior act, in order to save the 
 claim from being declared invalid, and, except for the purpose of saving a 
 
 'aim, iSTcope should not be restricted beyond the fmr and ordinary meaning 
 of the words. - Ryder v. Schhchter, 126 Fed 48/ , 61 C. C A. 469. 
 
 Winans v. Denmead, 56 U. S. 341; Consolidated v. Columbian, /9 Fed. 795, 
 Gaisman v. Gallert, 105 Fed. 955. 
 
 These claims (the specific claims) are concerned with the particular 
 structure desmbed by the drawings and the specification, and to confine the 
 fourth cTarmXch is drawn broadly, to such a structure, denies to the claim 
 anv effect whatever. This, we think, goes too far. It requires us to suppose 
 Sat the inveXr prepared a claim whose words do not mean what they say, 
 a^id should be so modified as to make them a mere repetition of other claims 
 ad that the Patent Office also knew that the words were to be read with 
 Umitatrons tlat are not stated, and nevertheless allowed the claim to stand. 
 - Ryder v. Schlichter, 126 Fed. 487; 61 C. C. A. 469. 
 
 The meaning of the claim is plain. It does not require, and therefore is not 
 open tr^nterpretation. It is so explicit that the courts cannot alter or 
 enlarge it.- Jones .. Davis, 138 Fed. 62; 70 C. C. A. oo8. 
 
 Keystone v. Phoenix, 95 U. S. 278. 
 
 The law requires the patentee to define in his claim precisely what his 
 invent on is This Crosby has done, and the court has no power to disregard 
 ErpTa'n terms of the claim and either change or enlarge it by -e^er^^- ^^ 
 the specification. -Cincinnati .. American, 143 Fed. 322, '^ ^ a A^o22 
 
 Merrill v. Yeomans, 94 U S. 568; Keys.^^^^- /h^^?^^'!^" Yenfield ^ Pottl 
 V. Dunbar, 119 U. S. 47; McCarty v. Lehigh, 160 L. S. 110, Penheld v. reus, 
 
 126 Fed. 475. 
 
 Rp this as it mav the Courts must take the claims of the patents as they 
 find them and Tre^not permitted to reconstruct. them by adding to or sub- 
 tract n^from their terminology. The Court is not concerned with the 
 mot el whTh induced the patent officials to require the patentee to accept 
 Te claim It is enough that it is in the patent and that it is couched in 
 lan^ag^so plaL and^nambiguous as to leave "« .™/;"? ^ ^^ ^,«"f Y^^ f ", 
 The Courts must deal with the claims not as they might^have been, but as 
 they are. — Ryan v. Metropolitan, 144 Fed. 697; /5 C. C. A. 513. 
 
 We must construe the patent in the light of what it says, not what it might 
 have sSd '4 must hold the patentee to what he has put on paper, not what 
 he mav have had in his mind. It is enough that the patentee did not so word 
 l^e^la^m and it is beyond the province of the court to rewrite it. - Umversal 
 V. Sonn, 154 Fed. 665; 83 C. C. A. 422. 
 
 Keystone v. Phoenix, 95 U. S. 274; National v. Williams, 44 Fed. 190. 
 
 The claims were limited by the word " detachable." Effort^ was made to 
 s^l^^tTli:Z^i^r.on shLld be disregarded. T^^^^^ so to 
 
 construe. - Brookfield v. Elmer, lo4 Fed. 197; 83 C. C. A. 180.
 
 216 THE FIXED LAW OF PATENTS §§220-221 
 
 § 220. Construction — Reading in Elements. 
 
 It is true the elements of a combination not mentioned in a claim may 
 sometimes be held included, in the light of other parts of the specification, 
 which may be applicable, but here the claim is so broad that we are not 
 justified in importing into it an element which would not operate to so 
 enlarge its scope as to cover an invention in no manner indicated upon its 
 face. — Day v. Fair Haven, 132 U. S. 98; 33 L. Ed. 265; 10 S. Ct. 11. 
 
 There is not an element in this combination which is not found in the wind- 
 mill of the appellee, and it cannot be permitted to read other elements into 
 this claim and then to defeat it, because it does not use the elements it 
 interpolates. — Mast v. Dempster, 82 Fed. 327; 27 C. C. A. 191. But see 
 177 U. S. 485. 
 
 Clearly it is not allowable, by the importation of elements to give identity 
 to claims which in terms are intelligibly different. — Anderson v. Potts, 108 
 Fed. 379; 47 C. C. A. 409. 
 
 McCarty v. Railroad, 160 U. S. 110. 
 
 The terms of the claim, read with the descriptive matter of the specifica- 
 tion, would seem to require such a construction, but, inasmuch as the patent 
 would be void for want of novelty if these constituents were omitted, this 
 construction is imperative. — Brickill v. Mayor. 112 Fed. 65; 50 C. C. A. 1. 
 
 § 221. Construction — Reference Characters. 
 
 Certainly neither of these cases establishes a hard and fast rule that where 
 a patentee claims the combination of certain elements shown in his patent, 
 describing them by reference letters shown in the drawingSj^ he thereby 
 deprives himself of the benefit of the liberal doctrine of equivalents appli- 
 cable to pioneer patents, if otherwise he is entitled to its application. (Re- 
 ferring to Weir v. Morden, 125 U. S. 106; Hendy v. Iron, 127 U. S. 375.) — 
 McCormick v. Aultman, 69 Fed. 371 ; 16 C. C. A. 259. 
 
 DeLamater v. Heath, 58 Fed. 414. 
 
 The use of letters in a claim to designate its elements does not prevent its 
 liberal construction. — Bonnette v. Koehler, 82 Fed. 428; 27 C. C. A. 200. 
 
 McCormick v. Aultman, 69 Fed. 371; Muller v. Tool Co. 77 Fed. 621; De- 
 Lamater V. Heath, 58 Fed. 414. 
 
 The use of letters in describing a patented device has been the subject of 
 consideration in a number of cases in the Supreme Court as well as in this 
 court. Sometimes the letters have been held to limit the inventor to the very 
 device thus designated ; in other cases the mere use of letters has not been held 
 to deprive the inventor of a liberal application of the doctrine of mechanical 
 equivalents. An analysis of the cases will show that the conclusion reached 
 depends upon the character of the improvement under consideration. If 
 the invention is of a pioneer character, highly meritorious in conception 
 and usefulness, the mere use of letters has been held not to limit the inventor 
 to the exact form, of device shown, but he is entitled to a broader conception 
 of his patent, in view of the advance which he has made in the art. How- 
 ever, if the field of invention is limited, and an improvement of a narrow 
 character has been made, just sufficient to cross the line which divides 
 mechanical improvement from patentable invention, the inventor will be 
 allowed the specific description shown and no more. In other words, he will 
 be held to have invented just what his claim shows to have been the specific 
 subject matter of his improvement. Without stopping to analyze the cases,
 
 5 222 CLAIMS 217 
 
 we think the following citations establish the rules just stated. — Ross- 
 Moyer v. Randall, 104 Fed. 355; 43 C. C. A. 578. 
 
 McCormick v. Aultman, 69 Fed. 371; Weir v. Morden, 125 U. S. 98; Hendy 
 V. Iron Works, 127 U. S. 370; MuUer v. Tool Co. 77 Fed. 621. 
 
 § 222. Construction — Rules — General. 
 
 A patent should be generally construed in a favorable and beneficial 
 sense for the best interests of the patentee. — Hogg v. Emerson, 6 How. 
 437; 12 L. Ed. 505. 
 
 Godson on Pat. 24; Kingsley & P. on Pat. 35; Grant v. Raymond, 6 Pet. 218; 
 Ames V. Howard, 1 Summ. 482; Weyeth v. Stone, 1 Story, 273, 287; Blanchard 
 V. Sprague, 2 Story, 1G4; King v. Wheeler, 2 Ban. & A. 345; Wilson v. Rousseau, 
 4 How. 708; RusseU v. Cowley, 1 Compt. M. & B. 864, 876. 
 
 The term rule of construction in respect to patents and specifications, 
 and the doings generally of inventors, is to apply to them plain and ordinary 
 principles. — Hogg v. Emerson, 6 How. 437; 12 L, Ed. 505. 
 
 The reasonable presumption is that having a just right to cover and 
 protect his whole invention, he intended to do so. — Winans v. Denmead, 
 15 How. 330; 14 L. Ed. 717. 
 
 Haworth v. Hardcastle, Web. P. C. 484. 
 
 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 interpolate anything which it does not contain. But liberality 
 rather than strictness, should prevail where the fate of the patent is involved, 
 and the question to be decided is whether the inventor shall hold or lose the 
 fruits of his genius and his labors. — Rubber Co. v. Goodyear, 76 U. S. 788 ; 
 19 L. Ed. 566. 
 
 Coming v. Burden, 15 How. 269; Battin v. Taggart, 17 How. 77. 
 
 It has always been held that a patent embraces nothing more than the 
 improvement described and claimed as new, and that anyone who afterwards 
 discovers a method of accomplishing the same object, substantially and 
 essentially differing from the one described, has a right to use it and to vend 
 it to others to be used. — Mitchell v. Tilghman, 86 U. S. 287 ; 22 L. Ed. 125. 
 
 O'Reilly v. Morse, 15 How. 119. 
 
 A literal construction is not to be adopted where it would be repugnant to 
 the manifest sense and reason of the instrument. — Brown v. Guild, 90 
 U. S. 181; 23 L. Ed. 161. 
 
 The claim is a statutory requirement, prescribed for the very purpose of 
 making the patentee define precisely what his invention is; and it is unjust 
 to the public, as well as an evasion of the law, to construe it in a manner 
 different from the plain import of its terms. — Howe v. National, 134 U. S. 
 388; 33 L. Ed. 963; 10 S. Ct. 570. 
 
 White V. Dunbar, 119 U. S. 47. 
 
 If letters patent were to be treated by the courts in the critical and hostile 
 spirit which a plea in abatement formerly encountered, the contention of the 
 defendant would have technical importance; but courts do not construe 
 letters patent for the purpose of their destruction. — Electric v. Brush, 52 
 Fed. 130; 2 C. C. A. 682.
 
 218 THE FIXED LAW OF PATENTS § 222 
 
 The construction to be given to his patent must correspond with the extent 
 of his invention. The actual invention, if in conformity with the language 
 of the claims, should control in the construction of patents. A strict con- 
 struction should not be resorted to if it becomes a limitation upon the actual 
 invention, unless such construction is required by the claim, it being under- 
 stood that the construction should not go beyond and enlarge the limitations 
 of the claim. — Smead v. Fuller, 57 Fed. 626; 6 C. C. A. 481. 
 
 Merrill v. Yeomans, 94 U. S. 568; Railroad v. Mellon, 104 U. S. 117; Railway 
 V. Sayles, 97 U. S. 554. 
 
 Unless a court is to recede from the rule of construction of claims which 
 the modern decisions of the Supreme Court have endeavored to impress upon 
 the patent law of this country, the claims are to be construed in accordance 
 with what must be regarded as their obvious meaning. — Groth v. Inter- 
 national, 61 Fed. 284; 9 C. C. A. 507. 
 
 The claim must be taken as defining precisely what the invention covered 
 by the patent is, and, hence, the true question is, not what the patentee 
 might have claimed, but what he has claimed. — Durand v. Schulze, 61 Fed. 
 819; IOC. C. A. 97. 
 
 Theoretically, an inventor, in taking out a patent under the statutes of 
 the United States, subtracts and adds nothing from or to his actual invention. 
 The proceedings recognize his incipient ownership, and theoretically they 
 constitute only a division of time, by which there is carved out of the entire 
 estate a holding for a period of years for the inventor, and the fee is left for 
 the public. Thus his patent is not at all akin to the King's grant, which must 
 be expressed " ex speciali gratia, certa scicntia, et mero motu regis," or be 
 interpreted against the subject who receives it. Except for the provisions 
 which, for public interests, require in a patent a description and claim, the 
 same unrestricted rules of the common law would protect an inventor's 
 statute right as are relied on to support a trademark or business good-will. 
 Nevertheless, v/ith reference to patents, the courts are necessarily subject to 
 the restraints arising from the incorporation into them of the description 
 and claim, which the statutes require. In interpreting these, however, the 
 rule must be accepted that it is to be presumed the inventor did not intend to 
 split up his invention. This is only an application of the ordinary rule of 
 interpretation that transactions are to be construed in the light of all the cir- 
 cumstances and of the apparent purposes of the parties to them. Specifica- 
 tions and claims have not yet fallen into such settled forms as to enable the 
 courts to construe them in any considerable part, with such certainty as they 
 construe many words and phrases in formal instruments at the common law ; 
 but, on the whole the entire subject-matter must be taken together for 
 effectuating the true purpose of the transaction, as contracts and wills, which 
 are so frequently drawn formally, are usually construed. The ordinary 
 rule that if by a Uteral construction an instrument would be rendered frivolous 
 and ineffectual, and its apparent object frustrated, a different exposition will 
 be applied if it can be supported by anything in it, requires that words which 
 relate to what may be held nonessentials, however much multiplied, shall 
 not be permitted unnecessarily to control the sense. For the most part such 
 words are merely illustrative, or are used through inadvertence. On the 
 other hand, it is true that words and phrases which might have been omitted 
 on the presumption that they relate to nonessentials, may be introduced in 
 such direct and positive manner as to leave the courts no option except to 
 regard them as affecting the objects and limitations of the instrument in 
 question. Especially may this be so when words which otherwise might be 
 regarded as unimportant, are introduced by way of amendment. This is a
 
 § 222 CLAIMS 219 
 
 common rule, which perhaps has been illustrated more frequently with 
 marine insurance policies than elsewhere. There is no doubt that if into an 
 instrument which has been prepared and submitted additional words are 
 subsequently introduced by mutual consent, greater effect may sometimes 
 be attributed to such words than otherwise would be given them; for they 
 then become the immediate language selected by the parties, and may be 
 assumed to have been especially within their intention. The leading rule 
 which we have given has been constantly restated by the text-writers and 
 the courts as having full application to patents. They make use of such 
 expressions as " ut res majis valeat quam pereat; " that " a patent should be 
 construed in a liberal spirit, sustaining the just claims of the inventor;" that 
 the titles by which patents are held " should not be overthrown upon doubts 
 or objections capable of reasonable and just solution in favor of their valid- 
 ity; " that " in construing a patent the court will remember that the specifi- 
 cation and claims are often unskillfuUy drawn; " and that " the claim shall 
 be construed, if possible, to sustain the patentee's right to all that he has 
 invented." It is true the general rules we have stated include the subor- 
 dinate principle, which applies everywhere, that they are not to be carried 
 " so far as to exclude what is in the patent, or to interpolate anything which 
 it does not contain." It is impossible, however, to carry this to the extent of 
 applying to patents as fully as it is applied to instruments in general, the 
 maxim, " Enumeratio unius exclusio alterius." With the aid of the doctrine 
 of equivalents, the courts are constantly engrafting on specifications and 
 claims what they do not contain in the same sense in which the letter of ordi- 
 nary instruments is required to contain matter on which the parties rely. 
 To extend, in disregard of this fact, the rule against interpolations to any 
 particular case, requires either that the patent relate to such mere matters 
 of form or detail that interpretation by exclusion becomes just and reason- 
 able, or that the specifications and claims be so phrased as in fact to contain 
 a clearly intended exclusion, or the equivalent thereof. — Reece v. Globe, 
 61 Fed. 958; IOC. C.A.I 94. 
 
 These claims do not in themselves refer to the previous description of the 
 parts of the machine mentioned in them, but they must be taken as in effect 
 referring to the whole of the instrument in which they belong. — Bundy 
 V. Columbian, 64 Fed. 851 ; 12 C. C. A. 442. 
 
 Westinghouse v. Air Brake Co. 2 Ban. & A. 55; Fed. Cas. 17,450; Bruce v. 
 Harder, 10 Fed. 750. 
 
 The statute requires the inventor to particularly point out and distinctly 
 claim the improvement or combination which he claims as his discovery. 
 R. S. sec. 4888. When, under this statute, the inventor has made his claim, 
 he has thereby disclaimed and dedicated to the public all other combina- 
 tions and improvements apparent from his specifications and claims that are 
 not mere evasions of the device, combinations or improvements he claims as 
 his own. The purpose of a claim in a patent is to notify the public of the 
 extent of the monopoly secured to the inventor, and, while it is notice of his 
 exclusive privileges, it is no less an estoppel of the patentee to claim under 
 that patent any combination or improvement he has not therein pointed out 
 and distinctly claimed as his discovery or invention. The presumption is, 
 and it is generally the fact, that any such unclaimed combination or improve- 
 ment was not the invention or discovery of the patentee; that it was old 
 and well-known; and that for that reason he did not intend to claim it. 
 But whether hr^ did intend to claim it or not is immaterial in an action for 
 the infringement of a patent, where no claim for mistake or inadvertence 
 in preparing the specifications or claims can be heard. The patent 
 itself is a solemn declaration of the inventor that every improvement,
 
 220 THE FIXED LAW OF PATENTS § 222 
 
 device and combination not claimed by him therein is not his inven- 
 tion or discovery, but is the property of the public. It is full and legal 
 notice to every one ; notice on which every one has the right to rely that he 
 may freely use such improvements and combinations without claim or 
 molestation from the patentee. The public generally does use them, and it 
 would be rank injustice to permit a patentee, after a combination or device 
 that he did not claim has gone into general use, and years after his patent 
 was granted, to read that combination or device into one of the claims of 
 his patent, and to recover for its infringement of every one who has used 
 it on the faith of his solemn declaration that he did not claim it. — Buffington's 
 V. Eustis, 05 Fed. 804; 13 C. C. A. 143. 
 
 Stirrat v. Mfg. Co. 61 Fed.- 980; Keystdne v. Phcenix, 95 U. S. 274; Miller v. 
 Brass Co 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; WoUensak v. Reiher, 
 115 U. S. 96; Parker v. Yale, 123 U. S. 87. 
 
 The invention secured by a patent is that which is secured to the patentee 
 by the claim. The claim is a statutory requirement prescribed for the pur- 
 pose of making a patentee define what his invention is so distinctly and 
 exactly as to appraise other inventors, and the public, what is withdrawn from 
 general use. The claim, however, is to be read in the light of the description 
 contained in the specification, and its literal terms may be enlarged or nar- 
 rowed accordinglv, but not to an extent inconsistent with the meaning. 
 Identity of language in the claims of two patents does not necessarily import 
 that the invention patented by each is identical, nor does a difference in 
 phraseology necessarily import that they are for different inventions. The 
 test of identity is whether both, when properly construed in the light of the 
 description define essentially the same thing. When the claims of both 
 cover and control essentially the same subject-matter, both are for the same 
 invention, and the later patent is void. — Thomson-Houston v. Elmira, 
 71 Fed. 396; 18 C. C. A. 145. 
 
 In the construction of a patent, it is not the personal intent or under- 
 standing of the patentee, but the actual facts regarding the invention, that 
 was material.,— Thomson-Houston v. Western, 72 Fed. 530; 19 C. C. A. 1. 
 
 It is the well known rule that patents, like other instruments, are to be 
 construed by what appears on their face " in the light of all the circum- 
 stances and the apparent purposes of the parties to them." — Long v. Pope, 
 75 Fed. 835; 21 C. C. A. 533. 
 
 Reece v. Globe, 61 Fed. 958; Wier v. Morden, 125 U. S. 98. 
 
 That the claim is a statutory requirement and must be strictly construed, 
 see Boynton v. Morris, 87 Fed. 225; 30 C. C. A. 617. 
 White V. Dunbar, 119 U. S. 47. 
 
 As the question of the construction of a patent concerns not only the 
 parties in this case, but also the public, so that, as is well settled, we have a 
 certain duty to take notice of matters bearing upon questions of the exist- 
 ence and extent of patentability, we would not be justified in ignoring what 
 our own records show us on this point. — Cushman v. Goddard, 95 Fed. 664; 
 37 C. C. A. 221. 
 
 Among the primary rules for the construction of a contract are these: 
 The court should put "itself in the place of the parties at the time it is made, 
 and should read its terms in the light of the facts and circum.stances which 
 then surrounded them. WTienthe intention of the parties is manifest, it should 
 control, regardless of inapt expressions and technical rules. In cases of
 
 222 CLAIMS 
 
 221 
 
 doubtful validity or of ambiguous terms, that construction should be adopted 
 which sustains and vitalizes the agreement, rather than that which destroys 
 or paralyzes it. Prior negotations are merged in the contract and, ^vhlle 
 they may be considered to interpret its purpose, they must not be permitted 
 to contradict or modify its express meaning. — National v. Interchangeable, 
 106 Fed. 693; 45 C. C. A. 544. 
 
 If the original conception for which his patents were granted was not his; 
 if the principle of the alleged invention, with all its undeveloped possi- 
 bilities, is found in previous patents or rested in public knowledge, and he has 
 done no more than extend the original thought by change only in form, pro- 
 portion and degree; if he has carried forward another's conception by a new 
 and more extended application of it; and if the essence of his patents is in 
 doing substantially the same thing in substantially the same way, only pro- 
 ^4ding such improvements and modifications as a mechanic conversant wi h 
 the art could effect by skill and ingenuity - it would follow that he would 
 be entitled only to patents upon his improvements, and would not be entitled 
 to shut out others from the enjoyment of those improvements which the same 
 or greater skill may have achieved. But if the entire scheme is radically dif- 
 ferent from the prior art, and if, in construction, operation, purpose and result, 
 the invention set forth in the prior patent is not responsive in terms or substance 
 to his construction, and the same or nonequivalent e ements are not used 
 in substantially the same way to produce the same result, and no mechanical 
 skill working upon the prior patent could ever produce the same result that 
 he accomplished, then it would follow that the inventive idea was different, 
 and anv modification or improvements worked out upon his idea must be 
 tributary to it. - Ideal v. Crown, 131 Fed. 244; 6o C. C. A. 436. 
 
 The rules for the construction of contracts apply with equal force to the 
 interpretation of patents. The great desideratum, here as there, is to ascer- 
 tain and give effect to the intention of the parties to the contract when they 
 made it. This intention must be ascertained from the entire agreement, 
 and not from isolated parts of it, because it was not expressed by a part, 
 but bv the whole of the contract. When the terms of a patent are plain 
 and the intention of the parties is manifest, the latter must prevail, and there 
 is no room for construction. When its expressions are ambiguous and the 
 validity of the patent or any claim in it is doubtful, that construction which 
 sustains and vitalizes the patent or claim, rather than that which paralyzes 
 or destroys them, must be preferred. — Jewell v. Jackson, 140 led. 340; 
 72 C. C. A. 304. 
 
 The question of the vahdity of the patent is to be determined by ascer- 
 taining what it describes and claims which had not been described in previous 
 patents, and construing the claim so far as its language will permit so as to 
 secure to the patentee that which was really new and patentable in view of 
 the prior art. — Ironclad v. Dairyman's, 143 Fed. 512; 74 C. C. A. 372. 
 
 The claim should be as broad as the invention. A safe and conservative 
 rule for the construction of such claims (primarj- improvements) is clearly 
 stated by Judge Shipman in Smead v. Fuller, 57 Fed. 626. — W agner v. 
 Wycoff, 151 Fed. .585; 81 C. C. A. 129. 
 
 Machine Co. v. Murphy. 97 U. S. 120; TUghman v. Proctor, 102 U. S. 707; 
 Eldred v. Kirkland, 130 Fed. 342; Reece v. Globe, 61 Fed. 959. 
 
 The court may resort to strict and, it may even be, to harsh construction 
 when the patentee has done nothing more than make a trivial improvement 
 upon a well-known structure which produces no new result; but it should be
 
 222 THE FIXED LAW OF PATENTS § 223 
 
 correspondingly liberal when convinced that the patentee's improvement is 
 so radical as to put the old methods out of action. The courts have fre- 
 quently held that one who takes an old machine and by a few, even incon- 
 sequential, changes compels it to perform a new function and do important 
 work which no one ever dreamed it capable of performing, is entitled to rank 
 as an inventor. — O'Rourke v. McMuUen, 160 Fed. 933 ; 88 C. C. A. 1 15, 
 
 Hobbs V. Beach, 180 U. S. 383; Magowan v. N. Y. 141 U. S. 332; Barbed Wire 
 Case, 143 U. S. 275; Potts ^. Creager, 155 U. S. 597; Loom Co. ?;. Higgins, 
 105 U. S. 580. 
 
 § 223. Construction — Specification. 
 
 The claim is not to be taken alone, but in connection with the specification 
 and drawings; the whole instrument is to be construed together. But we 
 are to look at the others only for the purpose of enabling us correctly to 
 interpret the claim, — Brooks v. Fisk, 15 How. 212; 14 L. Ed. 665. 
 
 The claim should be construed in connection with the specification. — 
 Turrill v. Railroad, 68 U. S. 491 ; 17 L. Ed. 668. 
 
 Such a reference is proper if it does not introduce confusion and uncer- 
 tainty, and is often necessary for restraining the too great generality, or 
 enlarging the literal narrowness of the claim. — Brown v. Guild, 90 U. S. 
 181; 23 L. Ed. 161. 
 
 The claim may be construed in connection with the specification, and if the 
 claim contains words referring back to the specification it cannot properly be 
 construed in any other way. — Fuller v. Yentzer, 94 U. S, 288; 24 L. Ed. 103. 
 
 Seymour v. Osborne, 11 Wall. 516. 
 
 The scope of letters patent must be limited to the invention covered by the 
 claim, and while the claim may be illustrated it can not be enlarged by 
 language used in other parts of the specification. — Yale v. Greenleaf, 117 
 U. S. 554; 29 L. Ed. 952; 6 S. Ct. 846. 
 
 Keystone v. PhoenLx, 95 U. S. 274; R. R. v. Mellon, 104 U. S. 112. 
 
 Some persons seem to suppose that a claim in a patent is like a nose of 
 wax which may be turned and twisted in any direction, by merely referring 
 to the specification so as to make it include something more than, or some- 
 thing different from, what its words express. The context may undoubtedly 
 be resorted to, and often is resorted to, for the purpose of better understanding 
 the meaning of the claim ; but not for the purpose of changing it and making 
 it different from what it is. The claim is a statutory requirement, prescribed 
 for the very purpose of making the patentee define precisely what his inven- 
 tion is; and it is unjust to the public as well as an evasion of the law, to con- 
 strue it in a manner different from the plain import of its terms. — White v. 
 Dunbar, 119 U. S. 47; 30 L. Ed. 303; 7 S. Ct. 72. 
 
 Keystone v. Phcenix, 95 U. S. 274; James v. Campbell, 104 U. S. 356. 
 
 The plain and explicit language of the specification requires a construction 
 of the claim which will enable the defendant to escape liability. There is 
 nothing in the context to indicate that the patentee contemplated any 
 alternative arrangement. — Snow v. Railway, 121 U. S. 617; 30 L. Ed. 
 1004; 7 S. Ct. 1343. 
 
 The invention, of course, must be described, and the mode of putting it to 
 practical use, but the claims measure the invention. They may be explained
 
 §223 CLAIMS 223 
 
 and illustrated by the description. They cannot be enlarged by it. — Con- 
 tinental V. Eastern; 210 U. S. 405; 51 L. Ed. 922; 28 S. Ct. 748. 
 Yale V. Greenleaf, 117 U. S. 554; Snow v. Lake Shore, 121 U. S. 617. 
 
 It is true that the claims must be construed according to the language 
 of each, but specifications and designs may be referred to to limit or explain 
 if not to enlarge. — Jones v. Hunger, 49 Fed. 61 ; 1 C. C. A. 158. 
 
 Evans v. Kelly, 13 Fed. 903; Turrill v. Railroad, 1 Wall. 491; Tompkins v. 
 Gage, 5 Blatchf. 268; Vance v. Campbell, 1 lilack, 427. 
 
 It is always the duty of the courts to construe the patents by reference 
 to the language of the claims and an examination of the specifications and 
 drawings accompanying the same. — Norton v. Jensen, 49 Fed. 859; 1 C. C. 
 A. 452. 
 
 Reference may be made to the specifications to supply in a claim what 
 it is plain to every one skilled in the art is a necessary incident. — Reece v. 
 Globe, 61 Fed. 958; 10 C. C. A. 194. 
 
 Seymour v. Osborne, 11 Wall. 516; Day v. Railway, 132 U. S. 98. 
 
 The claims of a patent limit the exclusive privileges of the patentee, and 
 his specification may be referred to to explain and restrict, but never to 
 expand them. General language in a claim which points to an element or 
 device more fully described in the specification is limited to such an element 
 or device as is there described. — Adams v. Lindell, 77 Fed. 432 ; 23 C. C. A. 
 223. 
 
 Mitchell V. Tilghman, 19 Wall. 287; Stirrat v. Mfg. Co. 61 Fed. 980. 
 
 The claims and the specifications are to be read together, not for the pur- 
 pose of enlarging the invention stated in the claims, but " for the purpose of 
 better understanding the meaning of the claims," the limit and extent of the 
 invention, and the object of the inventor, and the construction, method, 
 and process, as understood by him. — American v. Rowland, 80 Fed. 395 ; 
 25 C. C. A. 500. 
 
 Howe V. National, 134 U. S. 388; Vance v. CampbeU, Fed. Cas. 16,837; Wilson 
 V. Coon, 6 Fed. 611; Gottfried v. Brewing Co. Fed. Cas. 5633; Brass Co. v. 
 Miller, Fed. Cas. 17,254; Seymour v. Osborne, 11 Wall. 516; Rob. Pat. sec. 
 750; Curt. Pat. sec. 225, 227. 
 
 If, therefore, we apply the benignant rule of construction, — as we are 
 required to do, — that the claims should be construed by the specifications, 
 and that if, looking at both, the court is able to understand the meaning of the 
 patentee in the language of his claims, and, as so understood, the combina- 
 tion is a practicable one, it will give effect to them according to the apparent 
 purpose. Ryan v. Goodw^in, Fed. Cas. 12,186; Blanchard v. Sprague, Fed. 
 Cas. 1518; Turrill v. Railroad, 1 Wall. 491; Klein v. Russell, 19 Wall. 433; 
 Haworth v. Hardcastle, Webst. Pat. Cas. 480; Blandy v. Griffith, Fed. Cas. 
 1529; Roller-Mill Co. ?;. Coombs, 39 Fed. 25. 
 
 These are a few of the great number of cases in which the foregoing rule has 
 been approved and applied. Of course, if the language of a claim, in the 
 light of the specifications, does not show that the patentee has described a 
 practicable combination, there is an end of it, and the claim is nugatory. — 
 Soehner v. Favorite Co. 84 Fed. 182; 28 C. C. A. 317. 
 
 If interpretation of the claim were requisite, the specification might, of 
 course, be resorted to for the purpose of arriving at a better understanding 
 of its meaning, but this may not be done " for the purpose of changing it
 
 224 THE FIXED LAW OF PATENTS §223 
 
 and making it different from what it is." — Boynton v. Morris, 87 Fed. 225; 
 30 C. C. A. 617. 
 
 White V. Dunbar, 119 U. S. 47. 
 
 The patent when construed by a reference to the whole specification, 
 including the description and the claims, fully accomplishes these several 
 ends. If a claim, uncertain when considered apart from the description, 
 can by reference to the latter be rendered so clear as to satisfy the require- 
 ment of the statute, that the inventor " shall particularly point out and dis- 
 tinctly claim " his invention, by parity of reasoning a doubtful point in the 
 description, when considered apart from the claims, can by reference to the 
 latter when in themselves unambiguous, be rendered so clear as to satisfy 
 the other requirement of the statute that the inventor shall fully and clearly 
 set forth his invention in the description. That under such circumstances a 
 description uncertain or indefinite when considered alone, but not incon- 
 sistent with the claims, may be rendered certain and sufficient to meet the 
 requirements of the statute by reading the whole specification together has 
 frequently been recognized and is, we think, a sound rule of law. — Electric 
 V. Carborundum, 102 Fed. 618; 42 C. C. A. 537. 
 
 Battin V. Taggert, 17 How. 74; Corn-Planter Pat. 23 WaU. 181; Carver v. 
 Mfg Co 2 Story, 430; Howes v. Nutes, 4 Cliff. 173; Ryan v. Goodwin, 3 bumn 
 514;" Myers v. Frame, 8 Blatchf. 446; Parker v. Stiles, 5 McLean, 44; Lowell 
 V. Lewis, 1 Mason, 182. 
 
 It is true that neither they nor the specification can be read to expand the 
 claim; but the specification and the drawings must be read together, and 
 given 'their obvious force and meaning, for the purpose of determining what 
 devices are pointed out and described therein. — Brammer v. Schroeder, 106 
 Fed. 918;46C.C. A. 41. 
 
 We may go to the description to amplify a claim, but we can not, out of 
 the mere descriptive portion of the patent, wholly create a claim. — General 
 V. Mailers, 110 Fed. 529; 49 C. C. A. 138. 
 
 While it is the purpose of the statute to require the inventor to set forth 
 the nature and extent of his patent, and it is not the province of the courts 
 to add to or take from a claim that which is not embraced within its language, 
 nevertheless we may look to the specifications for the purpose of construing 
 the language used in the claim. If this language includes an element only 
 described in general terms, we may look to the specifications to ascertain its 
 meaning. — Stillwell-Bierce v. Eufaula, 117 Fed. 410; 54 C. C. A. 584. 
 
 Soehner v. Range Co. 84 Fed. 182; Lake Shore r. National 110 U. S 229; 
 Sevmour v Osborne, 11 WaU. 516; Corn Planter Pat. 23 Wall. 181; Fuller v. 
 Yentzer, 94 U. S. 288; Hailes v. Van Wormer, 20 WaU. 353; Westinghouse v. 
 Brake Co. 170 U. S. 537. 
 
 While this court may resort to the language of the specification for the 
 purpose of interpreting the claim, it cannot read into such claim elements 
 not specifically covered thereby, especially where to do so would be to con- 
 tradict the clear and definite statement in the specification. When the terms 
 of the claim are clear and distinct, the patentee cannot claim anything 
 beyond for the purpose of establishing infringement. — Westinghouse v. 
 N. Y. 119 Fed. 874; 56 C. C. A. 404. 
 
 Keystone v Phoenix, 95 U. S. 274; MerriU v. Yeomans, 94 U. S. 568; McCarty 
 V. RaUroad, 160 U. S. 110; White v.: Dunbar, 119 U. S. 47. 
 
 Within certain Hmits the courts are incUned to adopt the mode of con- 
 struction, of construing the claims by reference to the specification, when it
 
 223 
 
 CLAIMS 225 
 
 is necessary, as in the present case, to save the patent from the objection that 
 the claims are too broad. — Lamb v. Lamb, 120 Fed. 267; 56 C. C. A. 247. 
 Rubber v. Goodyear, 9 Wall. 788; McClain v. Ortmayer, 141 U. S. 419; Coupe 
 V. Royer, 155 U. S. 565; Soehner v. Stove, 84 Fed. 182. 
 
 The claims must stand or fall as made (Keystone v. Phoenix, 95 U. S. 274); 
 but it is equally well settled that the claims for a patent are to be construed 
 by reference to the specifications (of which the drawings form a part) and 
 that such reference may be had, not for the purpose of expanding the claim, 
 but for the purpose of defining it and limiting it to the description of the 
 invention. — Lamb v. Lamb, 120 Fed. 267; 56 C. C. A. 247. 
 
 McClain v. Ortmayer, 141 U. S. 419; Howe v. National, 134 U. S. 388; Coupe 
 V. Royer, 155 U. S. 565; Tilghman v. Proctor, 102 U. S. 729. 
 
 To sustain the validity of claims 1 and 2, it is necessary " to refer back 
 to the specification; not, it is true, for a slavish adoption of the identical 
 instrumentaUties therein described, but for the understanding of the essential 
 and substantial features of the means therein illustrated." — Seller v. Fuller, 
 121 Fed. 85; 57 C. C. A. 339. 
 
 Westinghouse v. Boyden, 170 U. S. 537. 
 
 The claims of a patent must be read in the light of the specification. The 
 specification may always be referred to to restrict, though not to expand, 
 the claims. — Anderson v. Collins, 122 Fed. 451 ; 58 C. C. A. 669. 
 
 The claims cannot be broadened or made to include things not therein 
 included, but to know what is included we may resort to the specification 
 for the purpose of interpreting the claim. — Canda v. Michigan, 124 Fed. 486; 
 61 C. C. A. 194. 
 
 McCarty v. Lehigh, 160 U. S. 110; White v. Dunbar, 119 U. S. 47. 
 
 It is well settled that for such purpose, and especially when the claim refers 
 to the specification for further description, it is proper to resort to the 
 specification, if explanation is necessary. — Canda v. Michigan, 124 Fed. 486; 
 61 C. C. A. 194. 
 
 Soehner v. Favorite, 84 Fed. 182; Stillwell-Bierce v. Eufaula, 117 Fed. 410; 
 Klein v. Russell, 19 Wall. 433; Hailes v. Van Wormer, 20* Wall. 353; Lamb v. 
 Lamb, 120 Fed. 267. 
 
 Features of construction which the specification of a patent recommends 
 or describes as preferable do not thereby become essential parts of the patent, 
 or limitations of the claims. — Smeeth v. Perkins, 125 Fed. 285; 60 C. C. A. 
 199. 
 
 Sewall V. Jones, 91 U. S. 171; Krajewski v. Pharr, 105 Fed. 514; Winans v. 
 Denmead, 15 How. 330; Klein v. Russell, 19 Wall. 433. 
 
 Reference may be made to the specification to explain but not to extend 
 or hmit the claim. The words "to operate substantially as described" 
 mean " substantially as described in regard to the combination which is 
 the subject of the claim." — General v. International, 126 Fed. 755; 61 
 C. C. A. .329. 
 
 Lake Shore v. Car Brake, 110 U. S. 229. 
 
 It is evident that the express terms of the claim do not limit the patentee 
 to a particular device, and therefore the construction adopted by the court 
 below practically rewrote the claim, and in effect expunged it from the 
 patent ; for to limit it to one form of structure described in the specification and
 
 226 THE FIXED LAW OF PATENTS §224 
 
 shown in the drawings necessarily introduced into the claim such modificationa 
 of the lan'^uage used by the inventor as turned it into a substantial, and there- 
 fore a superfluous, equivalent of the claims preceding. — Ryder v. Schlichter, 
 126 Fed. 487; 61 C. C. A. 469. 
 
 The claims of a patent are to be fairly construed so as to cover, if possible, 
 the invention, and thus save it, especially if it be a meritorious one. In 
 approaching a patent, we are to look primarily at the thmg which the in- 
 ventor conceived and described in his patent, and the claims are to be inter- 
 preted with this particular thing ever before our eyes. In confining our 
 attention too closely to the claims, we are apt to look at them as separate 
 and independent entities, and to lose sight of the important consideration 
 that the real invention is to be found in the specification and drawings, and 
 that the language of the claims is to be construed in the light of what is 
 there shown and described. — Mossberg v. Nutter, 135 Fed. 95; 68 C. C. A. 
 257. 
 
 If any doubt existed as to the meaning of the claim, or if it were sus- 
 ceptible to two interpretations, it would be both right and proper that refer- 
 ence should be made to the drawings and specifications, not for the purpose 
 of changing or altering the claim, but to ascertain the true and proper mter- 
 pretation. — Robins v. American, 145 Fed. 923; 76 C. C. A. 461. 
 
 McClain v Ortmayer, 141 U. S. 419; Klein v. Russell, 19 Wall. 433; McEwan 
 V. McEwan, 91 Fed. 787; Stillwell-Bierce v. Eufaula, 117 Fed. 410; Electric v. 
 Carborundum, 102 Fed. 618; Hogg v. Emerson, 11 How. 587. 
 
 We are satisfied, not only that the scope of the patentee's invention was 
 narrow in fact, but that such limitation was advisedly recognized in his 
 specifications, and is conclusive against the broad interpretation now sought. 
 — Lowden v. Janesville, 148 Fed. 686; 78 C. C. A. 548. 
 
 § 224. Construction — State of Art. 
 
 The case is one where, in view of the state of the art, the invention must be 
 restricted to the form shown and described by the patentee. He was not a 
 pioneer. He merely devised a new form to accomplish these results. — Duff 
 V. SterUng, 107 U. S. 636; 27 L. Ed. 517; 2 S. Ct. 487. 
 
 R. R. V. Sayles, 97 U. S. 554. 
 
 Where the state of the art shows prior devices limiting the scope of the 
 invention the claims must be strictly construed. — Newton 1;. Furst, 119 
 U. S. 373; 30 L. Ed. 442; 7 S. Ct. 369. 
 
 Letters patent, though not set up in the answer, may be received in evi- 
 dence to show the state of the art and to aid in the construction of the plain- 
 tiff's claim, though not to invalidate the claim on the ground of want of 
 novelty when properly construed. — Grier v. Wilt, 120 U. S. 412; 30 L. Ed. 
 712; 7 S. Ct. 718. 
 
 Vance v. Campbell. 66 U. S. 427; Railroad v. Dubois, 79 U. S. 47; Brown v. 
 Piper, 91 U. S. 37; Eachus v. Broomall, 115 U. S. 429. 
 
 The extent of novelty which can be read into a claim must be limited by 
 the state of the art. — ConsoUdated v. Walker, 138 U. S. 124; 34 L. Ed. 
 920; 11 S. Ct. 292. 
 
 Phoenix v. Spiegel, 133 U. S. 360.
 
 § 224 CLAIMS 227 
 
 The inventor is legally presumed to have all prior patents before him when 
 he makes his invention. — Duer v. Corbin, 149 U. S. 216; 37 L. Ed. 707; 
 13 S. Ct. 850. 
 
 Devices, though not claimed to fully anticipate the patent in suit, are 
 important in their bearing upon the construction of this patent and upon the 
 alleged infringement of the defendants. — Deering v. Winona, 155 U. S. 286;- 
 39 L. Ed. 153; 15 S. Ct. 118. 
 
 The line that the patentee drew in his patent between the old and new 
 mechanism marks the extent of that portion of his invention now under 
 consideration. — Lalance v. Haberman, 59 Fed. 143 ; 8 C. C. A. 53. 
 
 The claims must be construed in view of the state of the art, and unless it 
 be a pioneer invention they are not entitled to the rule applicable to pioneer 
 inventions. — Lamson v. Godehard, 59 Fed. 776; 8 C. C. A. 265. 
 
 Machine Co. v. Lancaster, 129 U. S. 263; McCormick v. Talcott, 20 How. 402; 
 Railway v. Sayles, 97 U. S. 554. 
 
 The claims and specifications of every patent must be read and construed 
 in the light of a full knowledge of the state of the art when the patent was 
 issued. A patent to the original inventor of a machine which first performs 
 a useful function protects him against all machines that perform the same 
 function by equivalent mechanical devices, but a patent to one who has 
 simply made a slight improvement on a device that performed the same 
 function before as after the improvement, is protected only against those 
 who use the very improvement he describes and claims, or mere colorable 
 evasions of it. — Stirratt v. Excelsior, 61 Fed. 980; 10 C. C. A. 216. 
 
 McCormick v. Talcott, 20 How. 402. 
 
 The claims and specifications of every patent must be read and construed 
 in the light of a knowledge of the state of the art when it was issued. — Mur- 
 phy V. Excelsior, 76 Fed. 965; 22 C. C. A. 658. 
 
 A claim made necessarily complex and specific by reason of the prior art 
 must be specifically construed. — Volkmann v. Dohnhofif , 77 Fed. 978 ; 
 23 C. C. A. 599. 
 
 If the specifications and claims of the patent were to be given effect without 
 regard to the history of the art or the proceedings in the patent office, it 
 might be conceded that the defendant's device would come within the scope 
 of complainant's monopolv- We must, however, use both aids in construing 
 the patent. — Thomas v. Rocker, 77 Fed. 420; 23 C. C. A. 211. 
 
 If the patented pull-off and take-up are merely improvements upon old 
 devices for doing the same work, or if the patentee has imposed a limitation 
 on his invention by express words in the specification and claims, it is mani- 
 fest that the court would not be warranted in giving that breadth of con- 
 struction to the patent which would be given in a case where the inventor 
 was the first to devise a pull-off and take-up mechanism, or had not expressly 
 restricted his invention by the terms of the specification and claims. — 
 Goodyear v. Spaulding, 110 Fed. 393; 49 C. C. A. 88. 
 
 We must charge the inventor with knowledge of all that preceded him in 
 the art, for " it is a presumption of law that all mechanics interested in up- 
 holding or defeating a patent were fully acquainted with the state of the art 
 when they took out their patent, or when they built their machine. Each
 
 228 THE FIXED LAW OF PATENTS §§ 225-226 
 
 party may then be assumed to have borrowed from the other whatever was 
 actually first invented and used by the other." — Daylight v. American, 142 
 Fed. 454; 73 C. C. A. 570. 
 Crompton v. Knowles, 7 Fed. 199; Mast v. Stover, 177 U. S. 493. 
 
 § 225. Construction — Unclaimed Elements. 
 
 If the patentee by his specification, including the summary claim at its 
 close, points out and distinguishes what he claims as his own invention, it 
 is all that is required; the rest he impliedly, if he does not expressly, disclaims 
 as old. — Brown v. Guild, 90 U. S. 181; 23 L. Ed. 161. 
 
 In testing the validity of this patent for the " sheets " (blank forms) 
 the methods and forms of contract described and not claimed in it are to be 
 considered as outstanding. — U. S. Credit v. American, 59 Fed. 139; 8 
 C. C. A. 49. 
 
 Underwood v. Gerber, 149 U. S. 224. 
 
 Of course the discovery is unimportant if the patent does not secure it. 
 The claim for a method of glass manufacture, as we have seen, was disal- 
 lowed. If the advantages of the discovery are not, therefore, embodied in a 
 new function, the discovery is not secured. — I^enjamin v. Chambers, 59 
 Fed. 151; 8C. C. A. 61. 
 
 An unclaimed peculiarity of construction is rarely read into a claim, the 
 life of which consists in minor improvements upon an old article, and in which 
 the patentee has undertaken to point out minutely the distinctive features 
 which differentiate his combination from that of pre-e.xisting devices. — 
 Eagle V. Corbin, 64 Fed. 789; 12 C. C. A. 418. 
 
 As it was the combination which was claimed, the tension device was to be 
 deemed incorporated into the claims, notwithstanding it was not in terms 
 included. — Thomson-Houston v. Black River, 135 Fed. 759; 68 C. C. A. 
 461. 
 
 Hartshorn v. Saginaw, 119 U. S. 678; Consolidated v. Walker, 138 U. S. 124. 
 
 Where the patentee in his specifications has limited himself to do what he 
 states to be his primary invention, and to " the several combinations herein- 
 after described and claimed," and where the combination upon which the 
 contention of infringement is based is neither described, claimed nor illus- 
 trated, it should not be read into the patent. — Edison v. Crouse, 152 Fed. 
 437; 81 C. C. A. 579. 
 
 § 226. Construction — Undue Limitation by Patentee. 
 
 When a claim is explicit, the courts cannot alter or enlarge it. If the 
 patentees have not claimed the whole of theif invention, and the omission 
 has been the result of inadvertence, they should have sought to correct the 
 error by a surrender of their patent and an application for a reissue. They 
 cannot expect the courts to wade through the history of the art and spell out 
 what they might have claimed, but have not claimed. — Keystone v. Phoenix, 
 95 U. S. 274; 24 L. Ed. 344. 
 
 Merrill v. Yeomans, 94 U. S. 568. 
 
 The principle of construction which we think applicable to the plaintiff's 
 
 f)atent is that such construction must be in conformity with the self imposed 
 imitations which are contained in the claims. Such claims are the measure
 
 § 227 CLAIMS 229 
 
 of their right to rehef. — Coupe v. Royer, 155 U. S. 565; 39 L. Ed. 263; 15 
 S. Ct. 199. 
 
 Keystone v. Phoenix, 95 U. S. 274; Burns v. Meyer, 100 U. S. 672; McClain 
 V. Ortmayer, 141 U. S. 425. 
 
 That where a claim includes a specific element in a specifically limited 
 form, where such limitation is not required by the general terms of the patent, 
 or by the state of the prior art, the court may construe the claim, neverthe- 
 less, with a scope commensurate with the invention, see MetaUic v. Brown, 
 104 Fed. 345 ; 43 C. C. A. 568. 
 
 McCormick v. Aultman, 69 Fed. 371; Reece v. Globe, 61 Fed. 958; Electric 
 V. LeRue, 139 U. S. 601; Devlin v. Paynter, 64 Fed. 398. 
 
 That where the inventor has industriously set forth as essential to his 
 invention a certain construction and in his claims limits it to " substantially 
 as described," such element or construction must be imported into the 
 claim whether specifically stated or not, see Brill v. Peckham, 108 Fed. 267; 
 47 C. C. A. 315. 
 
 It is an elementary rule that a patentee may claim the whole or a part of 
 what he has invented. He is entitled to limit his claims to any extent that 
 rnay seem desirable, but, having done so, his right to protection is so limited, 
 since the claim actually made by the patentee is the measure of his right to 
 relief . — Lanyon v. Brown, 129 Fed. 912; 64 C. C. A. 344. 
 
 McClain v. Ortmayer, 141 U. S. 419; Keystone v. Phoenix, 95 U. S. 274; White 
 V. Dunbar, 119 U. S. 47. 
 
 The court is not permitted to reconstruct the claims of a patent, and the 
 patentee is bound by the claims as he has written them. — American v. 
 Wagner, 151 Fed. 576; 81 C. C. A. 120. 
 
 In view of the failure of the patentee specifically to point out, illustrate, 
 or broadly claim such location, we cannot so read it into the patent so as to 
 embrace defendant's construction. In fact, it may be said that the de- 
 fendant's construction is founded on a discovery not disclosed in the patent 
 in suit, namely, that the change which the patentee supposed could only be 
 obtained by a location of the main or working circuit, might be obtained by a 
 location in the generator circuit. In these circumstances the rule must be 
 applied that, while a patentee is entitled to all the beneficial uses of his 
 invention when the property or function is inherent in the invention or is 
 described or claimed by him, yet that, where such change or function is 
 neither described nor claimed, and especially where other changes are de- 
 scribed and insisted on as essential and specifically claimed, it is significant 
 proof that the change which had not been disclosed by him to the public 
 is not his invention. — Electric v. Gould, 158 Fed. 610; 85 C. C. A. 432. 
 
 Fastener Co. v. Kraetzer, 150 U. S. Ill; Goodyear v. Rubber, 116 Fed. 375; 
 Long V. Pope, 75 Fed. 835; Wells v. Curtis, 66 Fed. 318; Bates v. Force, 149 
 Fed. 220. 
 
 If a patentee by his specification and claims industriously makes an 
 unnecessary device an essential mechanical element of the combination he 
 claims, he is thereby estopped from maintaining that a combination which 
 omits it infringes. — Brammer v. Witte, 159 Fed. 526; 86 C. C. A. 207. 
 
 Cimiotti v. American, 198 U. S. 399. 
 
 § 227. Construction — Unduly Broad. --^ 
 
 Having thus enlarged his claims, the court should not be astute to restrict | 
 them by reading in the real invention which he has failed to include within / 
 their terms. — Excelsior v. Morse-Keefer, 101 Fed. 448; 41 C. C. A. 448. /
 
 230 THE FIXED LAW OF PATENTS §§ 228-229 
 
 Courts lean towards reading into the claims of a patent such limitations 
 as will save the real invention as disclosed by the specification and the prior 
 state of the art. But when the claims are drawn in broad and nebulous terms 
 with the apparent purpose of enabling the patentee to monopolize an im- 
 portant industry, the courts should be slow in attempting to sustain their 
 validity by narrowing them beyond the boundaries which are clearly war- 
 ranted in the specification. — National v. New England, 151 Fed 19 • 80 
 C. C. A. 485. 
 
 § 228. Construction — Valeat quam Pereat Rule. 
 
 Patents for inventions are not to be treated as mere monopolies, and, 
 therefore, odious in the eyes of the law; but they are to receive a liberal 
 construction, and under the fair application of the rule, ut res magis valeat 
 quam pereat, are, if practicable to be so interpreted as to uphold and not 
 destroy the right of the inventor. — Turrill v. Railroad, 68 U. S. 491 • 17 
 L. Ed. 668. 
 
 Ryan v. Goodwin, 3 Sumn. 520. 
 
 In case of doubt when a claim is susceptible of two constructions the one 
 will be adopted which will preserve to the patentee his actual invention; 
 but if the language of the specification and claims show clearly what he 
 desired to secure as a monopoly nothing can be held to be an infringement 
 which does not fall within the terms the patentee has himself chosen to 
 express his invention. — McClain v. Ortmayer, 141 U. S. 419; 35 L. Ed. 800' 
 12 S. Ct. 76. 
 
 Vance v. Campbell, 66 U. S. 427. 
 
 That interpretation which sustains and vitalizes the grant should be pre- 
 ferred to that which strikes down and paralyzes it. — National v. Inter- 
 changeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Reece v. Globe, 61 Fed. 958; Consolidated v. Columbian, 79 Fed. 795; Ameri- 
 can V. Newton, 82 Fed. 732; McSherry v. Dowagiac, 101 Fed. 716. 
 
 § 229. Construction — Words and Phrases. 
 
 It is generally true, when a patentee describes a machine, and then claims 
 it as described, that he is understood to intend to claim, and does by law 
 actually cover, not only the precise forms he has described, but all other 
 forms which embody his invention; it being a familiar rule, that to copy the 
 principle or mode of operation described is an infringement, although the 
 copy should be totally Uiilike the original in form or proportions. — Winans 
 V. Denmead, 15 How. 330; 14 L. Ed. 717. 
 
 Words of such import, if not expressed in the claim, must be implied, else 
 the patent m many cases would be invalid as covering a mere function, 
 principle or result, which is obviously forbidden by the patent law, as it 
 would close the door to all subsequent improvements. — Mitchell v. Tilgh- 
 man, 86 U. S. 287; 22 L. Ed. 125. 
 
 Seymour v. Osborne, 11 Wall. 538; Curt Pat. sec. 242. 
 
 Objection is taken to the patent because it claims " the design for a carpet 
 substantially as shown." We see no good objection to the form of the claim. 
 It refers to the description as well as the drawing, in using the word " shown." 
 — Dobson V. Hartford, 114 U. S. 439; 29 L. Ed. 177; 5 S. Ct. 945. 
 
 These words have been uniformly held by us to import into the claim the 
 particulars of the specification. — Westinghouse v. Boyden, 170 U. S. 537; 
 42 L. Ed. 11.36: 18 S. Ct. 707.
 
 § 229 CLAIMS 231 
 
 The words " substantially as set forth " do not justify reading into the 
 claim qualifications expressed in the specification. — Westinghouse v. 
 Edison, 63 Fed. 588; 11 C. C. A. 342. 
 
 It is said that the claims of the reissued patent are void because too broad. 
 Unless the claims are to be restricted by construction, this criticism is a just 
 one. The only adaptation capable of appropriation by the inventor is that 
 which is shown in the specifications and drawings of his patent, and this is 
 the necessary limiting effect of the words " substantially and for the purpose 
 specified." In this way the court may sustain the validity of the claims, as 
 it is its duty to do when possible. — Columbus v. Robbins, 64 Fed. 384; 
 12 C. C. A. 174. 
 
 Corn Planter Pat. 23 Wall. 181. 
 
 The phrase, " substantially as set forth," is technical and is equivalent to 
 saying, " by the means described in the text of the inventor's application for 
 letters patent, as illustrated by the drawings, diagrams, and models which 
 accompany the application." These words limit the general terms of the 
 specification which set out the function performed by the invention, and 
 confine the inventor's rights to his own special means of performing the 
 function. — Boyden v. Westinghouse, 70 Fed. 816; 17 C. C. A. 430. 
 
 The words in the claims " as herein described " and " as described " must 
 be construed closely in a patent of narrow scope. — Davis v. Parkman, 71 
 Fed. 961 ; 18 C. C. A. 398. 
 
 Duff V. Pump Co. 107 U. S. 636; Bragg v. Fitch, 121 U. S. 478; Knapp v. 
 Morss, 150 U. S. 221. 
 
 It is rare that the words, " substantially as described " aid the courts in 
 construing patents, if they ever do. In view of the fact that the statutes 
 require an inventor seeking a patent to give in his application a " written 
 description " of his invention, the words in question are usually implied when 
 not expressed. They cannot enlarge a patent for a narrow invention, and they 
 cannot narrow a claim justly broad. — Bresnahan v. Tripp, 72 Fed. 920; 
 19 C. C. A. 237. 
 
 Machine v. Lancaster, 129 U. S. 263; Rob. Pat. 750; Walker, (3d ed.) 182. 
 
 That claim is dangerously near being a claim for a mode of operation, and, 
 if saved, it is saved by the words " substantially as set forth " which serve to 
 limit the claim to the described mechanism. — Rousseau v. Peck, 78 Fed. 
 113; 24C. C. A. 7. 
 
 Seymour v. Osborne, 11 Wall. 516; Curt Pat. 4 ed. 281. 
 
 The " whereby " clause does not add anything to the claim. — Frazer 
 V. Gates, 85 Fed. 441 ; 29 C. C. A. 261. 
 Birmingham v. Gates, 78 Fed. 350. 
 
 The claim has the usual conclusion " substantially as described," without 
 these qualifying words, however, the claim is to receive a reasonable construc- 
 tion, regard being had to the nature of the described structure and the object 
 to be attained. — Thompson v. Second Avenue, 93 Fed. 824; 35 C. C. A. 620. 
 
 If the claim is to be read in connection with the specification, or any 
 significance is to be given to the words " substantially as described," it 
 plainly must be limited to the coils of the patent. The proceedings in the 
 Patent Office show that Eickemeyer attempted to claim the method of double
 
 232 THE FIXED LAW OF PATENTS § 230 
 
 winding and abandoned it. — General v. Webster, 113 Fed. 756; 51 C. C. A. 
 446. 
 
 That in a specific or improvement patent, such terms as " means em- 
 ployed," " means for," or " means whereby " will be limited to the sub- 
 stantial means disclosed in the specification, see Lowden v. Janesville, 148 
 Fed. 686; 78 C. C. A. 548. 
 
 That where the claim contains the words " substantially as set forth," and 
 elements not directly included in the claim but fully disclosed in the descrip- 
 tion as a part of the combination will be read into the claim, even if the claim 
 is thereby limited, see Boston v. Pennsylvania, 164 Fed. 557; C. C. A. 
 
 § 230. Construction — Miscellaneous Rulings. 
 
 The defect here is both in the specification and in the claim. The former 
 does not distinguish the new parts from the old, nor is there anything in the 
 specification by which they can be distinguished; and the latter, instead of 
 claiming the old parts, should have excluded them, and claimed the new by 
 which the old were adapted to the new use, producing the new result. — 
 Phillips V. Page, 65 U. S. 164; 16 L. Ed. 639. 
 
 Inventions secured by letters patent sometimes, though rarely, embrace 
 an entire machine, and in such cases it is sufficient if it appear that the claim 
 is co-extensive with the invention. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 The Whitney process described a system of re-heating car wheels which 
 had been chilled upon the tread to a point a trifle below the fusing point. 
 Its utility was attacked on the ground that reheating to such a point would 
 destroy the chill. From the fact that the invention in practice had proved 
 eminently useful, even by a wide modification of the degree of heat emploj^ed, 
 the patent was held good upon the ground that the description was suffi- 
 ciently exact to enable one skilled in the art to use the process. — Mowrv v. 
 Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 Doubtful expressions may be subject to construction, but when the lan- 
 guage emploved is clear and unambiguous it must speak its own construction 
 in the specification. — Mitchell v. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 This duty is now cast upon the Patent Office. There his claim is, or is 
 supposed to be, examined, scrutinized, limited and made to conform to what 
 he is entitled to. — Keystone v. Phoenix, 95 U. S. 274; 24 L. Ed. 344. 
 
 Mere technicality of terms employed in the claims or specification does 
 not render the patent void for ambiguity or indefiniteness. — Loom Co. v. 
 Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 The first claim of the reissue, if construed so as to cover the defendant's 
 structure, is void for want of novelty, being anticipated by the old structures 
 referred to. — Gosling v. Roberts, 106 U. S. 39; 27 L. Ed. 61 ; IS. Ct. 26. 
 
 There is no suggestion that the combination of the second claim was not 
 new; and, there being nothing shown in the state of the art which requires 
 any such construction of the second claim as that contended for by the 
 defendant, and it being fairly susceptible of the opposite construction, and 
 the latter being one which is commensurate with the real invention embraced 
 in the second claim and one which prevents the real substance of that in- 
 vention from being bodily appropriated by an infringer, it is proper to give 
 the claim such construction. — Lake Shore v. National, 110 U. S. 229; 
 28 L. Ed. 129; 4 S. Ct. 33.
 
 § 230 CLAIMS 233 
 
 \Vh9ve certain elements of the invention are shown and described with 
 
 and mode of operation. - Sharp i;. Riessner, 119 U. b. 631 , 6U L. l.a. ou/ , 
 
 7 S. Ct. 417. 
 
 The doctrine which is applicable to a machine patent is of a kindred char- 
 act^er'^tht^t applied i^this -untry and in E:gW o a pate.J^^for a 
 
 process. - f ^^ t Tut ' /c^' Chit ol' Say'. 9-fu:'s"5M; VUh .. 
 McCormick «. TalcoU, 61 L. b 4^^^^^^^^ ^3 Consolidated v. Crosby, 
 
 Barker, 106 U. S. 166, I^™ "'; '^HH^'^' '^ Proctor 102 U. S. 707; Nelson v. 
 '}' V- H- I'^e^ ?X' (f'Rl Uy " Morse 56 U S. 62, 115; Curtis .. Piatt 
 Hartford, 1 ^\eb P. L- -90 ^,^1 Pratt 1 Web. 146; Badische v. Leveinstem, 
 K^24 ^h^D^iv ?56 fit, H?usVhfuf Nelson. 1 W b. PC. 685; Proctor .. 
 BeSiis L R. ?6 Ch. Div. 740; Clark .. Adie, L. R. 2 App. Cas. 315, 320. 
 
 If the inventor had been the first to devise a «>^^t"J^^^^^«{/^^\^26 'and 
 
 Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 Arlmittinff that additional elements are necessary to render the device 
 Admitting ;^i'\^^'^'^^^^^ follow that the omission of these elements 
 
 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 Q>,on1H thi^ device (a device covering specific means for the alignment and 
 adSment of tlTe rolls ofa roller mill fbe adjudged an infrii^ement, we shall 
 nKX wS rfto draw the fine, providing the alleged infringing device ac- 
 complished the four results. - Consolidated v. Barnard, 156 U. S. 261 , 39 L. 
 Ed. 417; 15 S. Ct. 333. 
 
 variety of filament. — Edison v. U. S. 52 led. 3UU, 3 ^. k.. a. oo. 
 
 Tt i. difficult to see why the circumstance that the patentee had no solicitor 
 
 Gould V. Trojan, 74 Fed. 794; 21 C. C. A. 97. 
 
 SSinTh TolicHor in /he^ed states ^^^^^^^^^ 
 plicated machme; ^ut. ^'i*^' '^h'^'y^Sfne Co., there is nothing whieh 
 
 r^Sot of 1X*niS:\o"'b''e' d'rr d in the Ught of the nature of
 
 234 THE FIXED LAW OF PATENTS §§ 231-233 
 
 the invention, which, though limited in its scope in a certain sense, yet, on 
 account of its importance is entitled to liberal protection. — Heap v. Tremont, 
 82 Fed. 449; 27 C. C. A. 316. 
 
 In construing this claim, we are permitted to omit the alternative 
 words which we have stricken out, because, if they stood alone, they would 
 narrow the claim within Brush's actual invention. — Hatch v. Electric, 
 100 Fed. 975; 41 CCA. 133. 
 
 A new rule will be established in patent law if claims for combinations of 
 old elements are held not to cover those elements as they were known in the 
 prior art because the patentee may have used inappropriate language in 
 describing them. — Cmiotti v. American, 115 Fed. 498; 53 C C A. 230. 
 
 The object of the patent law is "to secure to inventors a monopoly of 
 what they have actually invented or discovered," and it " ought not to be 
 defeated by too strict construction " of the terms of the claims, which may 
 be inartificially drawn. — Austin v. American, 121 Fed. 76; 57 C C A. 330. 
 
 Topliff V. Topliff, 145 U. S. 156; SewaU v. Jones, 91 U. S. 171. 
 
 § 231. Designs. 
 
 A claim in a patent upon a machine for the means employed for producing 
 a design, in connection with other claims upon the machine, is valid and 
 is not a design claim within the meaning of the statute. — Clark v. Bonsfield, 
 77 U. S. 133; 19 L. Ed. 862. 
 
 In Dobson v. Biglow, 114 U. S. 439, the claim of the design patent was 
 " the design of a carpet substantially as shown." Objection was taken to 
 the form of the claim. But this court said it saw no good objection to the 
 form, and that the claim referred to the description as well as the drawing, 
 in using the word " shown." Undoubtedly the claim in this case covers the 
 design as a whole and not any part of it as a part ; and it is so to be tested as to 
 the novelty and infringement. — Dobson v. Dornan, 118 U. S. 10; 30 L. Ed. 
 63; 6 S. Ct. 946. 
 
 § 232. Elements — Essential. 
 
 A claim for a machine or for a combination of mechanical devices is not 
 insufficient or invalid because it does not include mechanical devices for 
 uniting and operating the elements of the machine or combination, which 
 would readily suggest themselves to mechanics skilled in the art, or which 
 are described in the specifications and drawings. — Brammer v. Schroeder, 
 106 Fed. 918; 46 CCA. 41. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Deering v. Harvester Works, 155 U. S. 286. 
 
 The card's importance may be estimated by the fact that it is an element 
 in nine out of the eleven claims. — American v. Cimiotti, 123 Fed. 869; 
 59 C C A. 357. 
 
 § 233. Elements — Redundant. 
 
 This invention was for a method of lubrication. Held: If the crank shaft 
 were left out the claims of this patent would not be so obnoxious to the 
 criticism that they include in the combination specified any part of the 
 engine which is not a part of the means employed to effect lubrication. The 
 crank shaft is not essential because the necessary disc might be revolved by 
 other means. — Chuse v. Ide, 89 Fed. 491; 32 C. C A. 260.
 
 §§ 234-237 CLAIMS 235 
 
 Note: The entire spirit of this opinion by Judge Woods is to defeat the 
 patent, and the conviction of the court that this should be done (and appar- 
 ently it should) led to a hypercritical review of the claims. It is true, other 
 means might have been used instead of the crank shaft, but without some 
 means, the claims would have been open to criticism for want of operative- 
 ness, as is apparent where the court, on page 494, essays to draw a claim to 
 suit it. 
 
 § 234. Elements — Reference Characters. 
 
 The apron referred to in the claims and indicated by the letter " A," in 
 the drawings accompanying the patent, is an essential part of each claim, as 
 well as the vital part of the patent itself. — American v. Streat, 83 Fed. 700: 
 28 C. C. A. 18. 
 
 Parry v. Hitchcock, 58 Fed. 402; Weir v. Morden, 125 U. S. 98; Hendy v. 
 Iron Works, 127 U. S. 370; Knapp v. Morss, 150 U. S. 221. 
 
 A reference in a claim to a letter or figure used in the drawing and in 
 the specification to describe a device or an element of a combination does 
 not limit the claim to the specific form of that element there shown, unless 
 that particular form was essential to, or embodied the principle of, the 
 improvement claimed. — National v. Interchangeable, 106 Fed. 693; 45 
 C. C. A. 544. 
 
 Sprinkler v. Koehler, 82 Fed. 428; McCormick v. Aultman, 69 Fed. 371; Mul- 
 ler V. Tool Co., 77 Fed. 621; Delemater v. Heath, 58 Fed. 414; Reed v. Chase, 
 25 Fed. 94; Walk. Pat. (3d Ed.) sec. 117a. 
 
 § 235. Elements — Terminology. 
 
 In our opinion it cannot be construed as a claim for three elements (a valve, 
 a water chamber, and water in such chamber). The apparatus is the same 
 apparatus whether water is used in it or not. The method of use does not 
 change it, and an inventor who employs a new process of using it, does not 
 thereby invent a new apparatus. — Consolidated v. Metropolitan, 60 Fed. 
 93; 8 C. C. A. 485. 
 
 That a mathematical formula which is of the essence of an invention may 
 be made a positive and essential element of a claim, see Westinghouse v. 
 Saranac, 113 Fed. 884; 51 C. C. A. 514. 
 
 § 236. Excessive — Duplication. 
 
 It would be a waste of time to dwell upon the verbal differences in these 
 claims. The changes in phraseology import nothing of substance into their 
 respective combinations. They describe the same things in different language, 
 and the draftsman seems to have expended great ingenuity in cataloguing 
 a group of synonyms. — Thomson-Houston v. Hoosick, 82 Fed. 461: 27 
 C. C. A. 419. 
 
 The rule of construction which usually obtains, whereby the several 
 claims of a patent are to be differentiated so that effect may be given each, 
 cannot be reasonably invoked in behalf of this patent, where so many of the 
 claims are duplicated. — Thomson-Houston v. Union, 86 Fed. 636 ; 30 C. 
 C. A. 313. 
 
 § 237. Excessive — Effect of. 
 
 It is true, by the 9th sec. Act Mar. 3, 1837, ch. 45, it is provided, that the 
 suit shall not be defeated when the patentee claims more than he has invented ;
 
 236 THE FIXED LAW OF PATENTS §§ 238-241 
 
 it must be, however, in a case where the part invented can be clearly dis- 
 tinguishable from that claimed but not invented, 
 
 (See the modification of this act, in view of this construction, in the 
 amendment of 1870, sec. 4922 R. S.) — Vance v. Campbell, 66 U. S. 427; 
 17 L. Ed. 168. 
 
 § 238. Excessive — Foreclosing Improvement. 
 
 In other words, having himself experimented only with three or four bodies 
 out of a group of hundreds, he proposes to set himself in the pathway of future 
 experimenters with any or all of the other bodies, and, as the result of each 
 new experiment is disclosed, will fire away at it, calculating to " hit it if it is 
 a deer, and miss it if it is a cow." That this is precisely what is contended 
 for is manifest from the statement, prominently set forth in appellee's brief. 
 — Matheson v. Campbell, 78 Fed. 910; 24 C. C. A. 284. 
 
 § 239. Expansion. 
 
 One who has invented device with three elements necessary cannot claim 
 two elements to forestall another who employs the two elements for the same 
 position. — National v. Hedden, 148 U. S. 482; 37 L. Ed. 529; 13 S. Ct. 680. 
 
 Court will not import elements that would operate to so enlarge its scope 
 as to cover an invention not indicated upon its face. — WoUensak v. Sargent, 
 151 U. S. 221; 38 L. Ed. 137; 14 S. Ct. 291. 
 
 Day V. Fairhaven, 132 U. S. 98. 
 
 If the claim of the patent is not limited to the construction and description 
 of the original application which alone was supported by the required oath, 
 it would seem to be invalid. — De La Vergne v. Valentine, 66 Fed. 765; 14 
 C. C. A. 77. 
 
 Eagleton v. West, 111 U. S. 490; Machine v. Featherstone, 147 U. S. 209. 
 
 § 240. Failure to Claim. 
 
 The failure to claim either one of the elements separately raises a pre- 
 sumption that no one of them is novel. — Richards v. Chase, 159 U. S. 477: 
 40 L. Ed. 225; 16 S. Ct. 53. 
 
 A patentee who has claimed either more or less than was necessary, can- 
 not, in a suit for infringement, be relieved from the consequences. — Boynton 
 V. Morris, 87 Fed. 225; 30 C. C. A. 617. 
 
 MeClain v. Ortmayer, 141 U. S. 419; Durand v. Schulze, 61 Fed. 819. 
 
 The requirement of the patent law that a patentee shall claim in his patent 
 the exact invention is not only to enable the public to use it after the term 
 of the patent has expired, but also for the purpose of enabling any one to 
 determine what the invention is, which is protected by the patent, and what 
 processes which are not protected by the patent may be used in the 
 same manufacture. A person who discovers a new and useful invention 
 does not obtain a monopoly under the patent laws unless he claims his inven- 
 tion in his patent. Even if he describes his invention in the specifications, 
 and then claims as his invention something he has not invented, his patent 
 is good for nothing. — National v. New England, 151 Fed. 19; 80 C. C. A. 
 485. 
 
 § 241. Generic. 
 
 He (the inventor) may, for the purpose of describing the extent of his 
 claims, not only state the general principles and requisite features of the
 
 §§ 242-244 CLAIMS 
 
 invention in one claim, but the general P™"'?'- SulaTsfrLtoTthe 
 anotiier claim, supplementing tnis -f,?,."^°^^/'''^^^;"X tot consider the 
 
 srrs/»rt=rotVHES^^^^ 
 
 29 C. C. A. 386. 
 
 If the Moore patent. had preceded aU^ 
 work for which it was intended, it ^^f^^^^^'J/^,^ build within the wide 
 under tribute ah who should enter hj^fj^^Xfi^J^e advance in a new 
 four corners of his "went.on «^^^^ ^^^^^^^^^i proteS^ the extent of the 
 direction in an art not new he ^'^^^^ have^e^^^^^^^^ o ^^^ ^^ ^_ ^ ^ 
 
 limits of his large invention. — Moore v. r^ggei^,, xkj, 
 
 ^^Morley v. Lancaster, 129 U. S. 263; McCormick .. Aultman, 69 Fed. 371; 
 Bundy v. Detroit, 94 Fed. 524. 
 
 Fed. 915- 76 C C. A. 447. 
 
 S 242. Novelty. , , ,j j •+ :„ 
 
 The novelty in each case he describes clearly as he shodd; and it is 
 not nece'Ly\e should go farther. - Hogg v. Emerson, 6 How. 437, 12 
 
 r?^n ?af 6\'; ^G^orn^of Pat.^ristacsTcoope;, 4 Wash. 259. 
 
 C. A. 341. 
 
 8243. Process. .,. , . ,, 
 
 ThP natentee claimed the use of strong sulphuric acid m reducing rubber 
 scrap and pointedTut that weak sulphuric acid had proven insuffimnt. 
 mS; thft t'hTpatent must be lifted to the use o strong sulphuric acid. - 
 Chemical v. Raymond, 71 Fed. 179; 18 C. t. A. 31. 
 
 S 244. Purpose of. , ^ x .
 
 238 THE FIXED LAW OF PATENTS §245 
 
 expand it. — McClain v. Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 
 76. 
 
 Keystone v. PhcBnix, 95 U. S. 274; Lehigh v. Mellon, 104 U. S. 112; Masury 
 V Anderson, 11 Blatchf. 162; Merrill v. Yeomans, 94 U. S. 568; Burns v. Meyer, 
 100 U. S. 671; Sutter v. Robinson, 119 U. S. 530. 
 
 What is new must be covered by the claim. — Grant v. Walter, 148 U. S. 
 547; 37 L. Ed. 557; 13 S. Ct. 699. 
 James v. Campbell, 104 U. S. 356. 
 
 Formal claims necessary to ascertain scope of invention. — Grant v. 
 Walter, 148 U. S. 547; 37 L. Ed. 557; 13 S. Ct. 699. 
 
 Merrill v. Yeomans, 94 U. S. 568; Western Elec. Co. v. Ansonia, 114 U. S. 447. 
 
 It is well known that patentees generally make a much broader statement 
 of the novelty of their invention in the body of the specification than they 
 limit themselves to in the claim, which latter is held to be the distinctive 
 feature of a patent. By the act of congress of 1836, the applicant for a patent 
 was, for the first time, required to " particularly specify and point out the 
 part improvement or combination which he claims as his own invention or 
 discovery." — Durand v. Schulge, 61 Fed. 819; 10 C. C. A. 97. 
 
 Merrill v. Yeomans, 94 U. S. 568; Keystone v. Phoenix, 95 U. S. 278; Mahn t;. 
 Harwood, 112 U. S. 360; Burns v. Meyer, 100 U. S. 671; White v. Dunbar, 119 
 U. S. 51. 
 
 The claim is a statutory requirement prescribed for the very purpose of 
 making the patentee define precisely what his invention is; and it is unjust 
 to the public, as well as an evasion of the law, to construe it in a manner 
 different from the plain import of its terms. — Westinghouse v. Edison, 63 
 Fed. 588; 11 C. C. A. 342. 
 
 Quoting: White v. Dunbar, 119 U. S. 47. 
 
 Railroad v. MeUon, 104 U. S. 112; Mfg. Co. v. Greenleaf, 117 U. S. 554. 
 
 § 245. Scope. 
 
 Whether the telegraph is regarded as an art or machine, the maimer and 
 process of making and using it must be set forth in exact terms. The patent 
 embraces nothing more than the improvement described and claimed as new, 
 and anyone who afterwards discovered a method of accomplishing the same 
 object, substantially and essentially differing from the one described, has a 
 right to use it. The specification of the patentee describes his invention or 
 discovery, and the manner and process of constructing and using it; and his 
 patent, like inventions in the other arts, covers nothing more. — O'Reilly 
 V. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 We cannot describe a machine which will perform a certain function, 
 and then claim the function itself, and all other machines that may be 
 invented to perform the same function. — Corning v. Burden, 15 How. 
 252; 14 L. Ed. 683. 
 
 Inventions sometimes embrace an entire machine, and in such cases it is 
 sufficient if it appears that the claim is co-extensive with the patented im- 
 provement. Other inventions embrace one or more parts of a machine, 
 and in such cases the part or parts claimed must be specified and pointed 
 out, so that constructors, other inventors, and the public may know what 
 the invention is and what is withdrawn from general use. — Parks v. Booth, 
 102 U.S. 96; 26 L. Ed. 54.
 
 § 245 CLAIMS 239 
 
 To hold that one who has discovered that a certain fibrous or textile 
 material answered the required purpose, should obtain the right to exclude 
 everybody from the whole domain of fibrous and textile materials, and 
 thereby shut out any further efforts to discover a better specimen of that class 
 than the patentee had employed, would be an unwarranted extension of his 
 monopoly, and operate rather to discourage than to promote invention. — 
 Incandescent Lamp Patent, 159 U. S. 465; 40 L. Ed. 221; 16 S. Ct. 75. 
 
 Undoubtedly, when an invention is meritorious, and of a primary character, 
 as seems to be the case here, the patent should be liberally interpreted so as 
 to secure to the patentee his real invention as he has disclosed it to the 
 pubUc by his specification; and, if it be for a process, he should be protected 
 from the unauthorized practice of it by others, by whatsoever mode or forms 
 of apparatus they may apply the process. The appellant's pretensions, how- 
 ever, far transcend the limits of these settled and just rules. Virtually the 
 appellant claims all means, however differing in mode of action and principle 
 from the process described in the patent. — Celluloid v. Arlington, 52 Fed. 
 740; 3 C. C. A. 269. 
 
 Tilghman v. Proctor, 102 U. S. 707; Machine Co. v. Lancaster, 129 U. S. 263: 
 Bene v. Jeantet, 129 U. S. 683; McCIain v. Ortmayer, 141 U. S. 419- Com 
 Planter Pat. 23 Wall. 218. 
 
 If a man describes in his specifications, a machine by which to get a certain 
 result so that anyone skilled in the art can produce the machine and the 
 result, he cannot be deprived of his exclusive right in the machine by a demon- 
 stration that his theory stated in the patent, of the causes producing the 
 result is untrue. But a correct and certain knowledge of the principle by 
 which the result is reached will often enable the patentee, or his solicitor, to 
 cover, with general words, many different devices in which it may be applied. 
 If he fails to use broad enough language to do so, then one of two things is 
 true; either that he does not fully understand the true principle and the 
 other devices are not part of his real invention, or else, knowing the principle, 
 and its possible wider application, he has chosen to limit his claim for a 
 monopoly to one particularly described device, and has abandoned the others 
 to the public. Whichever horn of the dilemma he chooses, the court has no 
 power to broaden the claims. — Brown v. Stilwell, 57 Fed. 731 : 6 C. C. A. 
 528. 
 
 The scope of the claim must, on well-settled principles, be limited to the 
 specific forms of construction shown and described by the patentee. — Wells 
 V. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Johnson v. Steel, 50 Fed. 90. 
 
 A patentee is not required to claim the entire machine in each claim. Each 
 of the claims at issue is for a complete combination, and there was no neces- 
 sity for expressing in terms the actuating devices. Any appropriate means 
 for operating it will be understood. The omission of the actuating mechanism 
 does not affect the validity of either one of the claims, which belong to that 
 class where reference may be made to the specifications to supply in a claim 
 what it is plain, to anvone skilled in the art, is a necessary incident. — Taylor 
 V. SaTvyer, 75 Fed. 301 ; 22 C. C. A. 203. 
 
 Reece v. Globe, 61 Fed. 970; Deering v. Winona, 155 U. S. 286. 
 
 If his invention is of a broad and meritorious character, such as to work a 
 decided advance in the art, it will require something more than the use of 
 reference letters in his claims to limit him to the exact form of device he has 
 described. — Muller v. Lodge, 77 Fed. 621; 23 C. C. A. 357.
 
 240 THE FIXED LAW OF PATENTS §§ 246-247 
 
 Pluralizing terms in the claim for the purpose of broadening it does not 
 limit the claim so that a use in the singular is not an infringement of the 
 plural. — International v. Bennett, 77 Fed. 313; 23 C. C. A. 179. 
 
 We are referred to no authority, and know of no principle, which will 
 sustain the complainant's contention that he can thus, in the language of the 
 circuit court, " speculate on the equivalents of his claimed invention, and 
 thereby obhge the public to resort to experiments in order to determine the 
 scope of the claims of his patent. — Matheson v. Campbell, 78 Fed. 910; 
 
 24 C. C. A. 284. 
 
 A patentee is bound by what his patent actually discloses and not by what 
 he supposes his invention to be. — Jackson v. Birmingham, 79 Fed. 801 ; 
 
 25 C. C. A. 196. 
 
 The improvement was described in connection with a single thread 
 machine; but the specification indicated its general adaptability. Held: 
 The claims, therefore, in our opinion, cover the devices of the patent whether 
 used in a double or in a single thread machine. — Willcox v. Merrow, 93 Fed. 
 206; 35C. C. A. 269. 
 
 Deering v. Harvester, 155 U. S. 286. 
 
 A patentee is entitled to every function his device will perform, though he 
 was ignorant of it when he procured his patent. But he secures no patent on 
 the function, and a discovery of a new one in a patented device does not 
 operate to broaden or enlarge the letter of his claim. — Dunlap v. Will- 
 brandt, 151 Fed. 223; 80 C. C. A. 575. 
 
 § 246. Specific. 
 
 The fact that the defendant was able, by a skillful contrivance, to dis- 
 pense with one of the elements of plaintiff's claim, the plaintiff's patent not 
 being generic, does not make the device an infringement. — Derby v. Thomp- 
 son, 146 U. S. 476; 36 L. Ed. 1051; 13 S. Ct. 181. 
 
 If the first claim is valid, the second certainly is, because it is for the 
 same combination, with limitations which include some additional minor im- 
 provements. — Schenck v. Singer, 77 Fed. 841; 23 C. C. A. 494. 
 
 A patentee may, however, describe all the devices in his machine or manu- 
 facture, and instead of claiming all or any particular portion of them in 
 combination, may claim so much of the described mechanism as produces 
 a particular described result. — Parsons v. Seelye, 100 Fed. 455; 40 C. C. A. 
 486. 
 
 Silsby V. Foote, 14 How. 218. 
 
 The terms of the claim are most specific, and it must be read with refer- 
 ence to the particular descriptions contained in the specifications and illus- 
 trated by the patent drawings. — Reineke v. Dixon- Woods, 102 Fed. 349; 
 42 C. C. A. 388. 
 
 Fay V. Cordesman, 109 U. S. 408; Knapp v. Morss, 150 U. S. 221. 
 
 § 247. Sufficiency. 
 
 • The public should not be deprived of rights supposed to belong to it, 
 without being clearly told what it is that limits these rights. The genius 
 of the inventor constantly making improvements in existing patents, a proc- 
 ess which gives to the patent system its greatest value, should not be
 
 248 COMBINATIONS 
 
 241 
 
 restrained by vague and indefinite descriptions of claims in existing patents 
 from the salutary and necessary right of improving on that which nas already 
 been invented. It seems to us that nothing can be more just and fair both 
 to the patentee and to the public, than that the former should understand 
 and correctly describe just what he has invented, and for what he claims a 
 patent. — Merrill v. Yeomans, 94 U. S. 568; 24 L. Ed. 235. 
 
 But we are of opinion that the description and claim are sufficient. The 
 purport of the description is, that what the photographic illustration repre- 
 sents as a whole is the invention. It is that which is claimed, when applied 
 to carpeting. The design is a pattern to be worked into a carpet, and is 
 within the statute. Claiming " the configuration of the design " is the same 
 thint^ as claiming the design, or the figure or the pattern. It is better repre- 
 sented by the photographic illustration than it could be by any description, 
 and a description would probably not be intelligible without the illustration. 
 — Dobson V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946. 
 
 See Dobson v. Bigelow, 114 U. S. 439. 
 
 In every patent the language of the claim, specification and grant, should 
 be so clear, distinct and positive as to leave no question of what was asked 
 and granted, nor should it require a careful, nice and labored investigation 
 to ascertain whether one may not have trespassed upon the rights of the 
 patentee. It is the duty of the inventor to use language sufficiently plain 
 and explicit in his appUcation to denote clearly what he asks for, and when he 
 fails to do so, and the language of the grant follows that of the application, 
 and is thereby misleading to the general public, he should gain no profit 
 from such defective statement of that to which he considers he is entitled. — 
 Gerard v. Diebold, 61 Fed. 209; 9 C. C. A. 451. 
 
 It is plainly unsound argument to say that, because the patentee does not 
 expressly limit his patent to the device which he actually shows, therefore 
 he is not entitled to the benefit of the invention involved in the use of one. 
 — McCormick v. Aultman, 69 Fed. 371 ; 16 C. C. A. 259. 
 
 Where the invention is an improvement on a machine the claim need not 
 include the main elements of the machine. — Goshen v. Bissell, 72 Fed. 67 ; 
 19 C. C. A. 13. 
 
 Here the result is obtained quite irrespective of the location of the upper 
 ends of the brace-rods. The state of the art does not require the novelty 
 of the claims to be predicated of a particular location. — Avery v. Case, 
 148 Fed. 214; 78 C. C. A. 110. 
 
 Cazier v Mackie-Lovejoy, 138 Fed. 654; Machine Co. v. Murphy, 97 U. S. 120; 
 Beach v. American, 63 Fed. 597; King v. Hubbard, 97 Fed. 795; Calculagraph 
 V. Wilson, 132 Fed. 20; Benbow-Brammer v. Simpson, 132 Fed. 614. 
 
 § 248. Void. 
 
 One void claim does not vitiate a patent if made by mistake or inad- 
 vertence and without any wilful default or intent to defraud or mislead the 
 public. — Carlton v. Bokee, 84 U. S. 463; 21 L. Ed. 517. 
 
 COMBINATIONS. 
 
 General Statement § 249 
 See — Aggregation § 44; Anticipa- 
 tion §§ 67-69; Claims § 184; Ele- 
 
 ments § 232; Improvement § 433; 
 Infringement §§ 464-73; Invention 
 §§ 603-12.
 
 242 THE FIXED LAW OF PATENTS §§ 249-250 
 
 § 249. General Statement. 
 
 Combinations cannot be treated as constituting a single, unitary subject 
 in the patent law. The Patent Statute does not use the term either as desig- 
 nating a patentable class of invention or as a condition of invention. But the 
 term plays a large part in connection with Infringement §§466-473 and 
 Invention, §§ 603-612 and also with the subjects of Claims § 187. It is suffi- 
 cient to refer generally to those subjects, and to append what is regarded as 
 one of the nearest approaches to a definition of patentable combination. 
 
 It must be considered that a new combination, if it produces new and useful 
 results, is patentable, although all the constituents of the combination were 
 well known and in common use before the combinations were made. But 
 the result must be a product of the combination, and not a niere aggregate 
 of several results, each the complete product of one of the combined elements. 
 Combined results are not necessarily a novel result, nor are they an old 
 result obtained in a new and useful manner. Merely bringing old devices 
 into juxtaposition, and there allowing each to work out its own effect without 
 the production of something novel, is not invention. No one by bringing 
 together several old devices without producing a new and useful result, 
 the joint product of the elements of the combination and something more 
 than an aggregate of old results, can acquire a right to prevent others from 
 using the same devices, either singly or in other combinations, or, even 
 if a new and useful result is obtained, can prevent others from using some 
 of the devices, omitting others, in combination. — Hailes v. VanWormer, 
 87 U. S. 353; 22 L. Ed. 247. 
 
 COMITY 
 
 General Statement and Definition § 
 
 250 
 
 Between Circuit Courts § 251 
 
 Between Circuit Court of Appeals 
 
 and Circuit Court § 252 
 
 Between Circuit Courts of Appeal § 
 
 253 
 
 Prior Adjudication § 254 
 
 Supreme Court and Circuit Court of 
 Appeals § 255 
 Weight of § 256 
 Miscellaneous § 257 
 See — - Adjudication § 28; Defenses 
 § 315; Estoppel § 381; Injunction § 
 535; Interferences § 580; Res Judi- 
 cata § 893 
 
 § 250. General Statement and Definition. 
 
 If both court and counsel had kept before them more clearly the very 
 plain and reasonable rule of the Supreme Court that " comity is not a rule 
 of law, but one of practice, convenience and expediency," there would have 
 been less confusion than appears from the following quotations, and vastly 
 less than appears when we read the opinions of the circuit courts. In the 
 nature of things there can be no enforced comity. The only approach to such 
 a rule is that in Kessler v. Eldred, 206 U. S. 285, (see § 31); but the rule 
 of that case is one of res judicata rather than of comity. 
 
 The question of comity arises, or is attempted to be raised, perhaps more 
 frequently in connection with apphcations for injunctions pendente lite than 
 in any other, but it will be found that the distinct tendency of the courts 
 in all questions involving the exercise of the extraordinary powers of in- 
 junctive relief is to rely upon the exercise of a sound discretion in view of 
 the record presented, and not to rest the exercise of such authority upon the 
 event of another cause or the opinion of another court. 
 
 Comity is not a rule of law, but one of practice, convenience and expedi- 
 ency. It is something more than mere courtesy, which implies only deference 
 to the opinion of others, since it has a substantial value in securing uni- 
 formity of decision, and discouraging repeated litigation of the same question.
 
 §§ 251-252 COMITY 243 
 
 But its obligation is not imperative. If it were, the indiscreet action of one 
 court might become a precedent, increasing in weight with each successive 
 adjudication, until the whole country was tied down to an unsound principle. 
 Comity persuades; but it does not command. It declares, not how a case 
 shall be decided, but how it may with propriety be decided. It recognizes 
 the fact that the primary duty of every court is to dispose of cases according 
 to the law and the facts ; in a word, to decide them right. In doing so, the 
 judge is bound to determine them according to his own conviction. It 
 demands of no one that he shall abdicate his individual judgement, but only 
 that deference shall be paid to the judgements of other co-ordinate tribunals. 
 — Mast V. Stover, 177 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708. 
 
 A direct utterance (referring to Stover v. Mast, 89 Fed. 333, affirmed 177 
 U. S. 485) could not have made it more clear that no court is to be reviewed 
 or reversed, without an enquiry into the merits, merely because it failed or 
 refused to follow the decision of another court to which it was not directly 
 subordinate. Not less than of the Supreme Court, is it the duty of this court, 
 within the sphere of its jurisdiction, to decide questions presented according 
 to its own judgment. The purpose of Congress in creating the circuit courts 
 of appeals and in conferring upon them the extraordinary jurisdiction given 
 them in appeals from interlocutory orders of injunction, would be to a large 
 extent thwarted if the doctrine of comity, always factitious and sometimes 
 pernicious, should be allowed in these courts to take the place of independent 
 and conscientious judgment. The safeguard against the evil of diverted and 
 discordant decisions in the different circuits is in the power given to the 
 Supreme Court to require the certification of cases to that Court for review; 
 and evidently a prompt and healthy exercise of that power is more likely to 
 follow inconsistency of decision in the courts of appeals than a harmony of 
 rulings brought about by considerations of deference to comity. — Welsbach 
 V. Cosmopolitan, 104 Fed. 83; 43 C. C. A. 418. 
 
 § 251. Between Circuit Courts. 
 
 The rule of practice for one member of a court to regard the prior decision 
 of another, in cases of this kind, as to be followed until otherwise authori- 
 tatively adjudicated, seems to be justified in the orderly conduct of proceed- 
 ings. — Brill V. Peckham, 189 U. S. 57; 47 L. Ed. 706; 23 S. Ct. 562. 
 
 A circuit court will give respect to a decision of another circuit upon the 
 same patent and the same proofs; and will consider only new matters of 
 defense presented. — Wanamaker v. Enterprise, 53 Fed. 791 ; 3 C. C. A. iB72. 
 
 National v. American, 53 Fed. 367. 
 
 § 252. Between Circuit Court of Appeals and Circuit Court. 
 
 The court below followed the decision of the court in Massachusetts 
 (National v. Boston, 45 Fed. 481). The course pursued in this regard was in 
 conformity with the rule, well established in this circuit, to follow, unless 
 under extraordinary circumstances, a prior judgment of any other of the 
 circuit courts of the United States, wherever the patent, the question and the 
 evidence are the same in both suits. We do not question the propriety of 
 this practice as it has heretofore prevailed ; but it cannot be extended to this 
 court. The decisions of the several circuit courts, whenever pertinent, will 
 be attentively considered by this tribunal; but because they are subject to 
 appeal, and for other manifest reasons, it is not admissible for a court of 
 review to accord them controlling effect. — National v. American, 53 Fed. 
 367; 3C. C. A. 559.
 
 244 THE FIXED LAW OF PATENTS §§ 253-254 
 
 The practice of comity existing between circuit courts is not applicable to 
 this court. — Wanamaker v. Enterprise, 53 Fed. 791 ; 3 C. C. A. 672. 
 National v. American, 53 Fed. 367. 
 
 Upon a final hearing upon the merits it would be different, for then con- 
 siderations of comity might properly have weight with the court below, 
 which we should not hesitate, as an appellate court, to disregard m finally 
 settling the rights of the parties. — Duplex v. Campbell, 69 Fed. 250; 16 
 C. C. A. 220. 
 
 Questions on appeals of this character are ordinarily to be treated in this 
 court from the standpoint from which they were viewed by the circuit court, 
 and the decision on merits by a circuit court of another circuit, sustaining 
 the patent, is therefore usually of controlling weight here, as it should be in 
 the court below. — Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 This court as an appellate tribunal is not in the least concluded by the 
 decision in the New York case, nor do considerations of comity toward a 
 circuit court with respect to its ruhngs have the same potency with a circuit 
 court of appeals as they may properly have with a circuit court when con- 
 fronted with the alternative of following or departing from the ruhng of 
 another circuit court. — McNeely v. Williames, 96 Fed. 978; 37 C. C. A. 641. 
 
 § 253. Between Circuit Courts of Appeals. 
 
 Whether and how far in a case like this, in which a patent has been held 
 invalid by the circuit court of appeals in another circuit, this court should 
 be controlled by such judgement — quaere. — Hammond v. Weld, 72 Fed. 
 171; 18C. C. A. 502. 
 
 It is not claimed that the judgment of the Circuit Court of Appeals for the 
 Second Circuit is controUing in the sense that the question is res adjudicata, 
 but the high respect we have for the ability, learning and experience of the 
 judges of that court is a very persuasive reason for following it, when by so 
 doing we may assist in securing that uniformity which is very desirable, 
 thus avoiding confusion and preventing repeated litigation of the same 
 question; but the parties before us have the right to our individual judg- 
 ment, and considerations of convenience and expediency must give way to 
 demands of duty, from which we cannot be absolved by the doctrine of 
 comity. — Imperial v. Crown, 139 Fed. 312; 71 C. C. A. 442. 
 
 Mast V. Stover, 177 U. S. 488. 
 
 In accordance with our usual custom of yielding to decisions of the circuit 
 courts of appeals of other circuits, we perceive no reason why we should not 
 follow this one. Therefore the only question left for our investigation is 
 that of anticipation, and we open that only so far as it appears that the 
 alleged anticipations are shown to us which were not shown to the Circuit 
 Court of Appeals for the Second Circuit. — O'Brien v. Foster, 159 Fed. 
 710; 86 C. C. A. 464. 
 
 § 254. Prior Adjudication. 
 
 We appreciate the great importance in patent litigation of uniformity of 
 rulings by courts of concurrent jurisdiction, and ordinarily, it is a com- 
 mendable practice upon a question of the allowance of a preliminary in- 
 junction, to accept and follow the decisions of a circuit court of appeals of
 
 J§ 255-257 COMITY 245 
 
 another circuit sustaining and construing a patent. Such practice has always 
 prevailed in this circuit. In the present case, however, the circumstances 
 are so unusual that we are constrained to make an independent investigation 
 as to the validity and scope of the first claim of this reissue. — Horn v. 
 Pelzer, 91 Fed. 665; 34 C. C. A. 45. 
 
 American v. McKeesport, 57 Fed. 661; Edison v. Phila. 60 Fed. 397; Crump 
 V. Light Co. 65 Fed. 551. 
 
 Note: But the District Judge dissents; and on what possible ground the 
 court could have refused, at this stage of the litigation, to follow the decision 
 of the Second Circuit, is absolutely impossible to understand. 
 
 Although the defendants in this case are not the same, or in privity with 
 the defendants in other cases, we think, as a general rule, and especially in 
 patent cases, we should follow the decisions of the circuit court of appeals, of 
 another circuit upon final hearing with respect to the issues determined, if 
 based upon substantially the same state of facts, unless it should clearly 
 apjDcar that there was manifest error. — Beach v. Hobbs, 92 Fed. 146 ; 34 
 C. C. A. 248. 
 
 § 255. Supreme Court and Circuit Courts of Appeals. 
 
 Of course we are bound to give to this question of anticipation an inde- 
 pendent consideration. At the same time, we feel ourselves bound to defer 
 somewhat to the unanimity of opinion upon the part of so many learned and 
 distinguished judges, w^hose lives have been largely devoted to the examina- 
 tion of patent causes. — Hobbs v. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 
 S. Ct. 409. 
 
 § 256. Weight of. 
 
 The obligation to follow the decisions of other courts in patent cases of 
 course increases in proportion to the number of courts which have passed 
 upon the question, and the concordance of opinion may have been so general 
 as to become a controlling authority. So, too, if a prior adjudication has 
 followed a final hearing upon pleadings and proofs, especially after a pro- 
 tracted litigation, greater weight should be given to it than if it were made 
 upon a motion for a preliminary injunction. — Mast Co. v. Stover Co. 177 
 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708. 
 
 Macbeth v. Gillinder, 54 Fed. 169; Electric v. Edison, 61 Fed. 834; Edison v. 
 Beacon, 54 Fed. 678; Beach v. Hobbs, 82 Fed. 916; Newall v. Wilson, 2 DeG. 
 M. & G. 282. 
 
 Those adjudications, except the first, it is fair to assume, were governed by 
 the well-known rule of comity by which one federal court follows the ruUng of 
 another, especially in patent cases, and are therefore not entitled to the weight 
 of so many independent judgements. — National v. Quick, 74 Fed. 236; 
 20 C. C. A. 410. 
 
 That great deference should be paid to the circuit court of appeals of the 
 third circuit is true, and we have conformed to that duty, but have not been 
 able to accord with the result which that court reached. — Hanifen v. Price, 
 102 Fed. 509; 42 CCA. 484. 
 
 § 257. Miscellaneous. 
 
 Comity, however, has no application to questions not considered by the 
 prior art, or, in patent cases, to alleged anticipating devices which were not
 
 246 THE FIXED LAW OF PATENTS § 257 
 
 laid before the court. — Mast v. Stover, 177 U. S. 485; 44 L. Ed. 856; 20 
 S. Ct. 708. 
 
 Prima facie, a decision founded upon one patent not in suit here, and 
 another decision founded upon three patents collectively, one only of which 
 is in suit here, the two decisions declaring that an invention used by a de- 
 fendant who is not the defendant here, against a machine of that defendant 
 differing widely in its structure from the one complained of here, cannot be 
 treated as binding in the decision which this court may feel bound to render 
 in the suit at bar. — Boyden v. Westinghouse, 70 Fed. 816; 17 C. C. A. 430. 
 
 A decent respect for the stability of judicial decision, and a proper regard 
 for the security of property in patents, requires that we shall not reverse our 
 original holding in respect of the same patent, unless convinced of a very 
 palpable error in law or in fact. — Penfield v. Potts, 126 Fed. 475; 61 C. 
 C. A. 371. 
 
 We have especially shown the propriety of following decisions of the Cir- 
 cuit Courts of Appeals with regard to decisions touching letters patent for 
 inventions in Beach v. Hobbs, 92 Fed. 146; Hatch v. Electric, 100 Fed. 975. 
 The Supreme Court laid down a like practical rule in Hobbs v. Beach, 180 
 U. S. 383. In the present case, however, while the Circuit Court might well 
 have felt constrained to follow the result of the Circuit Court of Appeals for 
 the Second Circuit, the body of prior judicial decisions is of such an inhar- 
 monious character that we may well make an independent investigation, 
 based on the evidence before us. — Westinghouse v. Stanley, 133 Fed. 167; 
 68 C. C. A. 523. 
 
 The discussion in the opinion in the last case cannot be said to particularly 
 bind the court, because it was carried out for the most part by simply making 
 long extracts from the opinion passed down in the Circuit Court. This is a 
 mere quotation from the opinion of the Circuit Court, and not an expression 
 devised by the Supreme Court ; and it is not to be assumed that where an 
 appellate tribunal, as in this case, quotes long extracts, it is held to be bound 
 by all the expressions contained in them. — Westinghouse v. Stanley, 138 
 Fed. 823; 71 C. C. A. 189. 
 
 No two cases are identical upon the facts. Differences can always be 
 pointed out, but the question for the court to determine is are _ the differ- 
 ences of such a character as to induce the court to believe that if the facts 
 in the second case had been present in the first case the same result would 
 have been reached; in other words, are the cases the same in principle? — 
 Cortelyou v. Johnson, 145 Fed. 933; 76 C. C. A. 455. 
 
 See Cortelyou v. Carter, 118 Fed. 1022; Broderick v. Mayhew, 131 Fed. 
 92, affd. 137 Fed. 596. 
 
 The fact that the court is now differently constituted is, of course, quite 
 immaterial. If entitled to be considered at all upon a question of general 
 significance, like that under consideration, it should operate as an additional 
 reason for adhering to existing conditions. It is the court, not the indi- 
 viduals composing it, that declares the law; and it would be unseemly, to 
 say the least, to review propositions previously established, even though as 
 an original proposition we might have been led to a different conclusion. — 
 Cortelyou v. Johnson, 145 Fed. 933; 76 C. C. A. 455. 
 
 Cimiotti v. Nearseal, 123 Fed. 479.
 
 §§ 258-261 COMMISSIONER OF PATENTS 247 
 
 COMMISSIONER OF PATENTS. 
 
 Statutory Provision § 258 
 General Statement § 259 
 Actions § 260 
 Decisions of § 261 
 Duties § 262 
 
 Powers of § 263 
 
 See — Appeals § 114'; Defenses § 
 308; Interferences § 580; Patent 
 Office § 783; Reissue § 880; Res 
 Judicata § 895 
 
 § 258. Statutory Provisions. 
 
 Sections 476, 479, 481, 483, 484, 4883, 4893, 4905, 4910, and 4913, R. S. 
 relate especially to the Commissioner. Of these only the following need 
 be quoted: 
 
 The Commissioner of Patents, under the direction of the Secretary of the 
 Interior, shall superintend or perform all duties respecting the granting and 
 issuing of patents directed by law; and he shall have charge of all books, 
 records, papers, models, machines, and other things belonging to the Patent 
 Office. — R. S. 481. 
 
 The Commissioner of Patents, subject to the approval of the Secretary 
 of the Interior, may from time to time estabhsh regulations, not incon- 
 sistent with law, for the conduct of proceedings in the Patent Office. — R. S. 
 483. 
 
 § 259. General Statement. 
 
 The duties of the Commissioner are, therefore, both executive and judicial. 
 The records of the executive duties performed are to be found in the Annual 
 Reports of the Commissioner, and the records of the judicial acts are to be 
 found in the Patent Office Gazette and in the Commissioner's Decisions. 
 
 § 260. Actions of. 
 
 The issuance of a patent is prima facie evidence of the regularity of pro- 
 ceedings had. — Railroad v. Stimpson, 14 Pet. 448; 10 L. Ed. 535. 
 
 It is to be presumed, until the contrary is made to appear, that the com- 
 missioner did his duty correctly in granting the reissued patent. — Klein 
 V. Russell, 86 U. S. 433; 22 L. Ed. 116. 
 
 The action of the Commissioner in any case, within the limits of his author- 
 ity, is not open to collateral impeachment. But a reissue for a difTerent 
 invention is an excession of authority contrary to law. — Russell v. Dodge, 
 93 U. S. 460; 23 L. Ed. 973. 
 
 Seymour v. Osborne, 11 Wall. 544; Wicks v. Stevens, 2 Woods, 312. 
 
 Yet both these matters (abandonment and public use) as well as the 
 originality of the invention, upon which the Commissioner must pass, must 
 be contested in suits brought for infringement of the patent. Such defenses 
 are allowed by the statute. — Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 
 939. 
 
 § 261. Decisions of. 
 
 No other tribunal is empowered to controvert the sufficiency of the proofs 
 before the commissioner incident to the performance of his duties. — Rail- 
 road V. Stimpson, 14 Pet. 448; 10 L. Ed. 535. 
 
 Application for a patent is required to be made to the commissioner 
 appointed under authority of law, and inasmuch as that officer is empowered 
 to decide upon the merits of the application, his decision in granting the
 
 248 THE FIXED LAW OF PATENTS §§ 262-263 
 
 patent is presumed to be correct. — Agawam v. Jordan, 74 U. S. 583; 19 
 L. Ed. 177. 
 
 Pitts V. Hall, 2 Blatchf. 229; Union v. Matthieson, 2 Fish. 600. 
 
 Inasmuch as that officer is empowered to decide upon the merits of the 
 application, his decision in granting the patent is presumed to be correct. — 
 Mitchell V. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 Agawam v. Jordan, 7 Wall. 597. 
 
 The action of the commissioner of patents in granting a patent is not 
 conclusive either as to novelty, utility or prior use. — Reckendorfer v. 
 Faber, 92 U. S. 347; 23 L. Ed. 719. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Stimpson v. Woodman, 10 Wall. 117; 
 Hailes v Van Wormer, 20 Wall. 353; Rubber v. Howard, 20 Wall. 498; Smith 
 v.Nichois, 21 Wall. 115; Hicks v. Kelsey, 18 Wall. 670; Seymour v. Osborne, 11 
 WaU. 516. 
 
 In matters of this description, in which the action of the Commissioner is 
 quasi judicial, the fact that no appeal is expressly given to the Secretary of 
 the Interior is conclusive that none is to be impUed. — Butterworth v. Hoe, 
 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25. 
 
 The decision of the Commissioner in favor of the applicant, upon the ques- 
 tion whether the invention has been abandoned, is not conclusive, but may be 
 contested and reviewed in a suit brought for the infringement of the patent. 
 — U. S. V. Whitney, 118 U. S. 22; 30 L. Ed. 53; 6 S. Ct. 950. 
 
 Planing v. Keith, 101 U. S. 479. 
 
 § 262. Duties. 
 
 Patents are public records of which all persons are bound to take notice. 
 Upon proper application and the payment of fees the commissioner is obliged 
 to furnish copies of such records. — Boyden v. Burke, 14 How. 575 ; 14 L. 
 Ed. 548. 
 
 The relator had done all in his power to make his application effectual, 
 and had a right to consider it properly before the commissioner. If the 
 commissioner refused to take any action mandamus would lie ; but having 
 acted the remedy is by appeal. — Holloway v. Whiteley, 71 U. S. 522; 18 
 L. Ed. 335. 
 
 § 263. Powers of. 
 
 Doubtless the several requirements of the statute may be regarded as 
 conditions precedent to the right of the commissioner to grant the applica- 
 tion, as they must appear on the face of the letters patent, and are always 
 open to legal construction as to their sufficiency. — Seymour v. Osborne, 
 78U. S. 516; 20 L. Ed. 33. 
 
 When patents were issued by the Secretary of State, it was held that 
 the power to correct a mistake resided in that officer, irrespective of the 
 statute. Grant v. Raymond, 6 Pet. 243. By the laws creating the office of 
 Commissioner of Patents and transferring to the Secretary of the Interior 
 the power previously exercised by the Secretary of State, it has devolved 
 upon the Commissioner to superintend, execute and perform all acts 
 respecting the granting and issuing of patents, subject to revision by the 
 Secretary of the Interior. Original power was conferred upon him to grant 
 reissue by permissive language. By the act of July 8, 1870 (16 Stat. 205,
 
 §§ 264-266 COMPOSITION OF MATTER 249 
 
 c. 230) the permissive words were substituted by the mandatory words of the 
 statute as it now exists. It is the effect of this legislation to delegate to the 
 commissioner, subject to the interposition of the Secretary of the Interior, 
 all those acts with respect to the issuing of patents which originally devolved 
 upon the Secretary of State. — Thomson-Houston v. Black River, 135 Fed. 
 759; 68C. C. A. 461. 
 
 COMPOSITION OF MATTER. 
 
 Statutory Provision § 264 See — Manufacture § 772; Process 
 
 General Statement § 265 §§ 820-1; Product § 823 
 
 General Rules § 266 
 
 § 264. Statutory Provision. 
 
 Any person who has invented or discovered any new and useful art, 
 machine, manufacture, or composition of matter * * * — R. S. 4886. 
 
 When the invention or discovery is of a composition of matter, the appli- 
 cant, if required by the Commissioner, shall furnish specimens of ingredients 
 and of composition, sufficient in quantity for the purpose of experiment. 
 — R. S. 4890. 
 
 § 265. General Statement. 
 
 The line of' separation between a composition of matter and an article 
 of Manufacture is not always distinct. It will be noted that a composition 
 of matter may also be an article of manufacture, which may be patentable ; 
 but that, on the other hand, an article of manufacture, in order to be patent- 
 able, need not be composed of a novel combination of ingredients which 
 would render it patentable as a composition of matter. 
 
 The subjects of composition of matter and Manufacture and Process 
 are more or less closely related. 
 
 § 266. General Rules. 
 
 In most compositions of matter, some small difference in the proportions 
 must occasionally be required, since the ingredients proposed to be com- 
 pounded must be in some degree superior or inferior to those most commonly 
 used. — Wood v. Underhill, 5 How. 1 ; 12 L. Ed. 23. 
 
 When the specification of a mere composition of matter gives only the 
 names of the substances which are to be mixed together, without stating any 
 relative proportion, undoubtedly, it would be the duty of the court to declare 
 the patent void. And the same rule would prevail when it was apparent 
 that the proportions were stated ambiguously and vaguely. For in such 
 cases it would be apparent on the face of the specification that no one could 
 use the invention without first ascertaining by experiment the exact pro- 
 portions. — Wood V. Underhill, 5 How, 1 ; 12 L. Ed. 23. 
 
 The character and purpose of the specification as compared with the 
 English system. — Hogg v. Emerson, 6 How. 437; 12 L. Ed. 505. 
 
 Where a patent upon an article of manufacture does not claim the com- 
 position of matter, though it describes it, such omission is public dedication of 
 the said composition. — Underwood v. Gerber, 149 U. S. 224; 37 L. Ed. 
 710; 13 S. Ct. 854. 
 
 Had the description and claims proceeded upon some designated treat- 
 ment or process, we might have found a way to sustain their validity. But the
 
 250 THE FIXED LAW OF PATENTS §§ 267-269 
 
 patent is ambitious beyond this. It seeks to exclude the use, by others, of 
 pulverized silica in any proportion. It surveys a field that includes any silicate 
 " having a frictional property and capable of being pulverized and com- 
 pacted." To sustain this would be to hold that the use of pulverized silica 
 in a billiard chalk, independently of the proportions employed, was a dis- 
 covery properly embodied in appellant's patent. This the state of the art will 
 not justify. — Hoskins v. Matthes, 108 Fed. 404; 47 C. C. A. 434. 
 
 CONGRESS. 
 
 Constitutional Powers § 267 | Plenary Powers § 268 
 
 § 267. Constitutional Powers. 
 
 The Congress shall have power : 
 ************ 
 
 8. To promote the progress of science and useful arts by securing for 
 limited times to authors and inventors the exclusive right to their respective 
 writings and discoveries. 
 
 9. To constitute tribunals inferior to the Supreme Court. — Const. Art. 
 I, Sec. VIII. 
 
 It will thus be seen that the power to create the patent monopoly resides 
 in paragraph 8, while the power to maintain and protect that monopoly 
 emanates from paragraph 9. In the exercise of its power Congress creates 
 nothing that did not exist before. Continental v. Eastern, 210 U. S. 405. 
 It would not have been enough to empower Congress to create a monopoly 
 in derogation of the common-law; the power to punish for trespass and to 
 restrain from infringement are vital necessities. 
 
 § 268. Plenary Powers. 
 
 The powers of Congress are plenary. A patent may be granted by it 
 wholly independently of the Patent Office and the statutes relating to the 
 regular granting of patents. Such power has been exercised; but it would 
 be only in the event of a most extraordinary state of facts that such power 
 would be again asserted. It has not been asserted for years, and stern refusal 
 has met every attempt to invoke these powers. 
 
 The power of Congress to legislate upon the subjects of patents is plenary 
 by the terms of the Constitution, and as there are no restraints on its exercise, 
 there can be no limitation of their rights to modify them at their pleasure, 
 so they do not take away the rights of property in existing patents. — 
 McClurg V. Kingsland, 1 How. 202; 11 L. Ed. 102. 
 
 CONTEMPT. 
 
 General Statement § 269 | See — Injunction §§ 536-8, 577 
 
 § 269. General Statement. 
 
 Punishment for violation of a court order or decree occurs, in patent 
 causes, well-nigh invariably in connection with injunctions, and most com- 
 monly with preliminary injunctions. In order that the entire appellate law 
 on the subject may be studied together, all rulings relating to contempt are 
 assembled under Injunction — Appeals, § 536, and Injunction — Viola- 
 tion of, § 577. ^ 
 
 COPARTNERSHIP. 
 
 Miscellaneous Rulings § 270 I ventions § 704; Ldcense § 749; Title 
 
 See — Assignment § 155; Joint In- \ § 925
 
 §§ 270-271 CORPORATIONS 251 
 
 § 270. Miscellaneous Rulings. 
 
 It is competent for two persons, joint owners of letters patent, whether 
 valid or invalid, to enter into a copartnership for the manufacture and sale 
 of the patented machines and to enter into an agreement not to manufacture 
 independently thereunder, and such agreement is not in restraint of trade. — 
 Kinsman v. Parkhurst, 59 U. S. 289; 15 L. Ed. 385. 
 
 A copartner holding no interest in the patent could not sue on the patent 
 for such damages or any part of them. — Yale v. Sargent, 117 U. S. 536; 
 29 L. Ed. 954; 6 S. Ct. 934. 
 
 The plaintiff, as the owner of the patent, is entitled to recover the damages 
 in this case. He may be accountable to his copartner for a part of them, but 
 the copartner could not sue on the patent, for such damages or any part of 
 them. — Yale v. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S. Ct. 934. 
 
 Where partnership constructed a machine with knowledge and consent 
 of inventor before application, an implied license arises in favor of the ma- 
 chine so constructed. — Wade v. Metcalf, 129 U. S. 202; 32 L. Ed. 661; 
 9 S. Ct. 271. 
 
 A license from one member to the firm for the use of the firm expires with 
 the firm. — Haffeke v. Clark, 50 Fed. 531 ; ICC. A. 570. 
 
 Oliver v. Chemical Co., 109 U. S. 75; Nail Factory v. Corning, 14 How. 193; 
 Gayler v. Wilder, 10 How. 477. 
 
 The object of the agreement is expressly stated to be the creation and 
 building up of a good business, which business was to be owned and shared 
 equally and mutually by both. The learned judge who tried the case at 
 circuit, construed this agreement as providing that whatever rights either 
 might, by its terms, acquire in future inventions of the other, should be 
 " qualified down to the requirements of the business " they were undertaking 
 to build up, and that when the business ceased, each patent for an improve- 
 ment should remain the property of the individual inventor, unqualified 
 by any further interest of the other therein. — Denning v. Bray, 61 Fed. 
 651; IOC. C. A. 6. 
 
 CORPORATIONS. 
 
 Miscellaneous Rulings § 271 I § 156; Infringement §§ 479-82; In- 
 
 See — Abatement § 23; Assignment \ junction § 547 
 
 § 271. Miscellaneous Rulings. 
 
 One corporation cooperating with another in the infliction of a wrong 
 is directly responsible for the resulting damage. — Railroad v. Winans, 
 58 U.S. 31; 15 L.Ed. 27. 
 
 An implied license arising out of the employment and invention of an 
 employee confers upon a corporation an unassignable right only and does not 
 pass to a new corporation. — Hapgood v. Hewitt, 119 U. S. 226; 30 L. Ed. 
 369; 7 S. Ct. 193. 
 
 Troy V. Corning, 55 U. S. 193; Oliver v. Rumford, 109 U. S. 75. 
 
 The acquiescence of the former owners of the patent has in equity the 
 same effect upon complainant's rights as its own subsequent neglect. — 
 Woodmansee v. WiUiams, 68 Fed. 489; 15 C. C. A. 520.
 
 252 THE FIXED LAW OF PATENTS §§ 272-273 
 
 Rob. Pat. 1194; Spring v. Sewing, Fed. Cas. 13,258; McClurg v. Kingsland, 1 
 How. 205. 
 
 A mere stockholder is not bound by the acts of a corporate body for which 
 he labors as an employee. — American v. Phoenix, 113 Fed. 629; 51 C. C. A. 
 339. 
 
 Machine Co. v. Woodward, 82 Fed. 97. 
 
 COSTS. 
 
 Statutory Provisions § 272 
 Appeals § 273 {see § 109) 
 Disclaimer § 274 (see § 339) 
 
 Record § 275 
 Taxation § 276 
 Miscellaneous § 277 
 
 § 272. Statutory Provisions. 
 
 Costs may be recovered by a plaintiff or complainant who succeeds in an 
 action for infringement, under 4919 R. S. In like manner, a defendant 
 succeeding in such an action is entitled to his costs under 4920 R. S. 
 
 When judgment or decree is rendered for the plaintiff or complainant, 
 in any suit at law or in equity, for the infringement of a part of a patent, in 
 which it appears that the patentee, in his specification, claimed to be the 
 original and first inventor or discoverer of any material or substantial part 
 of the thing patented, of which he was not the original and first inventor, 
 no costs shall be recovered, unless the proper disclaimer, as provided by 
 the patent laws (4917 R. S.), has been entered at the Patent Office before 
 the suit was brought. 973 R. S. 
 
 * * * 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. * * * — 4922 R. S. 
 
 § 273. Appeals. 
 
 An appeal involving costs will not be entertained here. — Paper Bag 
 Cases, 105 U. S. 766; 26 L. Ed. 959. 
 
 When the plaintiffs fail in this court on both appeals, (one in which they 
 had been successful below) they are to pay the costs of this court on both 
 appeals. — Yale v. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 884. 
 
 This court has held in several cases that an appeal does not lie from a 
 decree for costs; and if an appeal be taken from a decree upon the merits, 
 and such decree be affirmed with respect to the merits, it will not be re- 
 versed upon the question of costs. — DuBois v. Kirk, 158 U. S. 58; 39 L. 
 Ed. 895; 15 S. Ct. 729. 
 
 Glendale v. Smith, 100 U. S. 110; Wood v. Weimer, 104 U. S. 786; Russell v. 
 Farley, 105 U. S. 433. 
 
 The apportionment of costs is generally for the master and the circuit 
 court, and appeals, except in extraordinary cases will not be entertained. — 
 Davis V. Parkman, 71 Fed. 961 ; 18 C. C. A. 398. 
 
 The patent having expired pendente lite and nominal damages having 
 been awarded, an appeal cannot lie, as the only question is one of costs. — 
 Gamewell v. Municipal, 77 Fed. 490; 23 C. C. A. 250.
 
 §274 COSTS 253 
 
 That when a claim sued on proves invalid on appeal costs will be barred, 
 
 *wm»x .. Merrow, 93 Fed. 206; Thomson-Houston .. Elmira, 71 Fed. 396; 
 Albany v. Felthousen, 20 Fed. 633. 
 
 Undoubtedly the statutory provision U^^^^^^^^^^ 
 
 in the »»■■' b;tTd AatThHtatutorrpr^^^^^^^ to costs on appeal, 
 
 it was directly held that tne s^'i^^'^"'.''^ f^^^Tnissine the bill, and remands 
 
 Lertedcertam parts of h,s patent w^^^^^^^^ 
 
 £:;^rheirt Lrfsfo;,d£on^^^ 
 
 r Struts, brrh^s^s^^^^^^^^ 
 
 toX 1?^ oThi^'Xr4:= S n—i^s^ ?^? r. 
 
 tended the whole of his contention. - Johnson v. Foos, 141 i^ea. /.5, 
 
 C. C. A. 105. 
 
 S 274. Disclaimer. cioV.,r ,, 
 
 Failure to make necessary disclaimer before suit bars costs. - Silsby .. 
 Foote, 61 U. S. 378; 15 L. Ed. 953. 
 
 The general issue of -fHngem-t w^ ^^^^^^^ 
 answer, in general, set up necessity of ^f^XTo^^ Jn£,t was not debarred 
 
 ''?;bl'co. t^;.. 100 U. S. 110; Paper Ba, Cases. .05 U. S. 766; MiUs 
 V. Green, 159 U. S. 651. 
 
 This claim being rejected as invalid^ and n„ disclaimer ha^gb^^^^^^^^ 
 
 A. 209. 
 
 Metallic v. Brown, 110 Fed. 665.
 
 254 THE FIXED LAW OF PATENTS § 275-277 
 
 § 275. Record. 
 
 Where appellee has encumbered record with some 50 immaterial patents, 
 under Rule 10 half of the costs of the printing will be assessed upon appellee. 
 — B. & S. Fastener v. Kraetzer, 150 U. S. Ill; 37 L. Ed. 1019; 14 S. Ct. 48. 
 
 There was so much irrelevant matter introduced into the case as to make 
 it inequitable that the defendant should pay costs in this court, and he should 
 not be compelled to pay the costs in the circuit court which were caused by 
 this class of evidence. — Ecaubert v. Appleton, 67 Fed. 917 ; 15 C. C. A. 73. 
 
 That $20.90 paid by appellant to the commissioner of patents for copies 
 of patents for insertion in the printed record may be taxed as costs on appeal. 
 This is allowed. It is part of the cost of printing the record, and therefore 
 taxable here. — Lee v. Penberthy, 109 Fed. 964; 48 C. C. A. 760. 
 
 § 276. Taxation. 
 
 The costs are, perhaps, never in fact, taxed, until after the judgement is 
 rendered ; and in many cases cannot be taxed until afterward and where this 
 is the case the amount ascertained is usually, under the direction of the court, 
 entered nunc pro tunc as a part of the original judgement. And this mode of 
 proceeding is necessary for the purposes of justice, in order to afford the 
 necessary time to examine and decide upon the several items of costs, to 
 which the successful party is lawfully entitled. — Sizer v. Many, 16 How. 
 98; 14L. Ed. 861. 
 
 Costs were properly allowed, but the court is of the opinion that the 
 complainant was not entitled to an allowance for any expenses beyond the 
 taxable costs. — Parks v. Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 § 277. Miscellaneous. 
 
 In this case we sustain the action of the court below both as to the inter- 
 locutory and final decree, and, as costs in equity and admiralty cases are 
 within the sound discretion of the court, we do not feel inclined to chsturb 
 this decree in awarding full costs to the plaintiff. — DuBois v. Kirk, 158 
 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 Canter v. American,'28 U. S. 307; Harmony v. V. S. 43 U. S. 110, 237; Sap- 
 phire V. Napoleon, 85 U. S. 51; Kittridge v. Race, 92 U. S. 116. 
 
 Distinguishing, Dobson V. Hartford, 114 U. S. 442; Dobson v. Dornan, 118 
 U. S. 10. 
 
 The co-complainant licensor would undoubtedly have the right to be 
 protected from any costs that might be adjudged against it, or incurred in the 
 management of the suit. The court, upon proper motion, would without 
 doubt compel this protection. The usual practice is in such cases, to require 
 a sufficient bond of indemnity. Under such conditions there would be an 
 implied contract on the part of the licensor to permit the use of its name by 
 the complainant. — Brush v. California, 52 Fed. 945; 3 C. C. A. 368. 
 
 It would seem that the death of one or two copartner defendants after 
 the closing of the record and before decree, does not effect the costs as they 
 are chargealDle against the surviving partners. — Hillborn v. Hale, 69 Fed. 
 958; 16 C. C. A. 569. 
 
 The statute refers to depositions taken out of court under such notice or 
 consent as will entitle them to be filed and read as evidence upon the hearing
 
 § 277 
 
 DAMAGES 
 
 255 
 
 of the case, and does not include evidence taken either in court or before a 
 master upon a reference. — Kissinger-Ison v. Bradford, 123 Fed. 91; 59 
 CCA. 221. 
 
 Troy V. Corning, 7 Blatchf. 16; In re Strauss v. Meyer, 22 Fed. 467; Spill v. 
 Celluloid, 28 Fed. 870; Missouri v. Texas, 48 Fed. 775; Ferguson v. Dent, 46 
 Fed. 88. 
 
 No costs will be recovered by either party in this court or in the court 
 below; each party having succeeded only in part. — Cleveland v. Detroit, 
 131 Fed. 853; 68C. C A. 233. 
 
 Appellant urges upon our consideration an alleged error of the court in 
 overruling his motion to tax against appellees the costs occasioned by their 
 propounding alleged improper cross-examining questions to appellant's 
 witnesses. The motion is based on the proposition that a cross-examiner in 
 an equity suit may not go beyond the scope of the direct examination. 
 Even on that basis the ruling was right, because the cross-examining 
 questions were germane to the matters in issue, which had been opened up 
 on direct examination. — Parsons v. New Home, 134 Fed. 394; 67 C C A. 
 392. 
 
 Inasmuch as complainant in the court below claimed infringement of all 
 the claims except one, and on the taking of proofs expressly declined to 
 state on which ones it relied, and now abandons all but four of said claims, 
 no costs will be allowed in favor of complainant on this appeal. — Cayuta 
 V. Kennedy, 135 Fed. 537; 68 C C A. 563. 
 
 That where officers of a corporation, acting merely as such officers, are 
 joined as defendants and the bill as against them is dismissed by the appellate 
 court, costs of both courts will go to them, see Western v. North, 135 Fed. 
 79; 67 0. C A. 553. 
 
 The process patent was contested and the machine patents were held to 
 be wanting in invention. The process patent being sustained, Held: In such 
 circumstances we do not feel that the statute requires this court to deny the 
 appellant his costs in this court. This is the view taken by the Third and 
 Seventh Circuits. — .Johnson v. Foos, 141 Fed. 73; 72 C C. A. 105. 
 
 Kahn v. Starrels, 136 Fed. 597; Ide v. Trorlicht, 115 Fed. 137. 
 
 In equity cases this court directs the imposition of costs according to 
 the circumstances, and apportions them or denies cost altogether by no iron- 
 clad rule. Indeed, such a rule could not be well prepared, and would more 
 often than otherwise lead to injustice. — Johnson v. Foos, 141 Fed. 73; 
 72 C C A. 105. 
 
 Northern v. Snyder, 77 Fed. 818. 
 
 Inasmuch as the defendant has been defeated on the issues contested, and 
 escapes upon a defense not pleaded, the case will be reversed, with costs to 
 the complainant in the court below and no costs to either party in this court. 
 Clancy v. Troy, 157 Fed. 554; 85 C C A. 314. 
 
 DAMAGES. 
 
 (See § 825) 
 
 Statutory Provisions § 278 
 
 General Statement § 279 
 
 Actual § 280 
 
 Designs § 281 (see § 328) 
 
 In Equity § 282 
 
 Increasing § 283 
 
 Interest § 284 
 
 Law Actions § 285 (see § 733) 
 
 Master's Report § 286
 
 256 THE FIXED LAW OF PATENTS §278 
 
 Measure 
 
 Absence of License or Royalty- 
 Measure § 287 
 Complainant's Loss § 288 
 Deductions and Mitigations § 289 
 Defendant's Gains § 290 
 Full Damages § 291 
 License Fee § 292 
 Nominal § 293 
 Royalty § 294 (see § 897) 
 
 Speculative § 295 
 
 Miscellaneous § 296 
 Proof of § 297 
 Segregation § 298 
 Miscellaneous Rulings § 299 
 See — Designs § 336; Injunction §§ 
 556, 565; Marking " Patented " § 
 776; Profits § 825; Statute of Limita- 
 tions § 291 
 
 § 278. Statutory Provisions. 
 
 Damages for the infringement of any patent may be recovered by action 
 on the case, in the name of the party interested either as patentee, assignee, 
 or grantee. And whenever in any such action a verdict is rendered for the 
 plaintiff, the court may enter judgment thereon for any sum above the 
 amount found by the verdict as the actual damages sustained, according 
 to the circumstances of the case, not exceeding three times the amount of 
 such verdict, together with costs. — R. S. 4919. 
 
 The several courts vested with jurisdiction of causes arising under the 
 patent laws shall have power to grant injunctions 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 entered in any such case for an infringement, the complainant 
 shall be entitled to recover, in addition to the profits to be accounted for by 
 the defendant, the damages the complainant has sustained thereby; and the 
 court shall assess the same or cause the same to be assessed under its direction. 
 And the court shall have the same power to increase such damages, in its 
 discretion, as is given to increase the damages found by verdicts in actions 
 in the nature of actions of trespass upon the case. — R. S. 4921. 
 
 * * * 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 infringement, and continued, after such 
 notice, to make, use, or vend the article so patented. — R. S. 4900. 
 
 The Act Feb. 4, 1887, makes this special provision for damages for the 
 infringement of design patents: 
 
 * * * Any person violating the provisions, or either of them, of this 
 section, shall be liable in the amount of two hundred and fifty dollars; and 
 in case the total profit made by him from the manufacture or sale, as 
 aforesaid, of the article or articles to which the design, or colorable 
 imitation thereof, has been applied, exceeds the sum of two hundred and 
 fifty dollars, he shall be further liable for the excess of such profit over and 
 above the sum of two hundred and fifty dollars ; and the full amount of such 
 liability may be recovered by the owner of the letters patent, to his own use, 
 in any' circuit court of the United States having jurisdiction of the parties, 
 either by action at law or upon a bill in equity for an injunction to restrain 
 such infringement. 
 
 That nothing in this act contained shall prevent, lessen, impeach, or avoid 
 any remedy at law or in equity which any owner of letters patent for a design, 
 aggrieved by the infringement of the same, might have had if this act had 
 not been passed ; but such owner shall not twice recover the profits made 
 from the infringement. 
 
 The word " circuit," above, to" be read district. Jud. Code, Sec. 291.
 
 §§ 279-281 DAMAGES 257 
 
 § 279. General Statement. 
 
 The terms " damages " and " profits " are used with little discrimination 
 in many instances, and the line of demarkation is often so indistinct that 
 separation of the two is attended with difficulty. No attempt at an extended 
 general statement upon the subject of damages, or that of profits will be 
 attempted. This title, therefore, should be read in connection with " Prof- 
 
 The segregation rule established in the Mop Case (111 U. S. 120) and the 
 long line of decisions growing out of it, which rendered recovery of substan- 
 tial damages or profits practically impossible in most cases, has been brought 
 to a pause, if not changed in its course, by the decision of Westinghouse v. 
 Wagner, 225 U. S. 604 (§ 845). The Mop Case"rule was, and is, sound as a rule 
 of evidence which, like anv minor rule of evidence, must conform and be 
 subject to the basic principles of evidence. The error was in regarding it 
 as a principle rather than a rule. The Supreme Court — not abrogating it 
 as a useful rule — declared it subject to the broad principles of onus pro- 
 band!; and thus it becomes possible to recover substantial damages and 
 profits in that class of cases where segregation must be made. 
 
 § 280. Actual. 
 
 Actual damages must be actually proved, and cannot be assumed as a 
 leo-al inference from anv facts which amount not to actual proof of the fact. 
 — Seymour v. McCorm"ick, 16 How. 480; 14 L. Ed. 1024. 
 
 When a plaintiff is allowed to recover only " actual damages," he is bound 
 to furnish evidence by which the jury may assess them. If he rest his case, 
 after merely proving an infringement of his patent, he may be entitled to 
 nominal damages, but no more. He can not call a jury to guess out his case 
 without evidence. Actual damages must be calculated, not imagined, and an 
 arithmetical calculation cannot be made without certain data on which to 
 make it. — Mayor v. Ransom, 64 U. S. 487 ; 16 L. Ed. 515. 
 
 Actual damages should be actually proved, and cannot be assumed as a 
 legal inference from facts, w^hich afford no data by which they can be cal- 
 culated. — Mayor v. Ransom, 64 U. S. 487; 16 L. Ed. 515. 
 
 Seymour v. McCormick, 16 How. 485. 
 
 The measure of damages to be recovered, prescribed by the act of 1870, 
 16 Stat at L. 207 is " the actual damages sustained by the plaintiff." — 
 Philip V. Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 If the test of a royalty cannot be applied, he will be entitled to an amount 
 which will compensate him for the injury to which he has been subjected 
 by the piracy. — Philip v. Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 § 281. Designs. 
 
 In absence of marking notice is necessary. — Dunlap v. Schofield, 152 
 U. S. 244; 38 L. Ed. 426; 14 S. Ct. 576. 
 
 The statute of 1887 was passed in consequence of the decision of the Su- 
 preme Court in Dobson v. Carpet Co. 114 U. S. 439. The manifest purpose 
 of Congress was to enlarge the remedy against infringers of design patents, 
 and to° declare that the measure of profits recoverable on account of the 
 infringement should be considered to be the total net profits upon the whole 
 article. A construction which should limit a recovery above $250.00 to the
 
 258 THE FIXED LAW OF PATENTS 5 282 
 
 amount which the complainant could clearly establish to be the value which 
 the design had contributed to the infringing carpets would be at variance, 
 not only with the apparent legislative intent but with the language of the 
 statute. The rule which Congress declared for the computation of profits 
 was the total profit from the manufacture or sale of the article to which the 
 design was applied, as distinguished from the pre-existing rule of the profit 
 which could be proved to be attributable to the design. — Untermeyer v. 
 Freund, 58 Fed. 205; 7 C. C. A. 183. 
 
 The Hability imposed by the act of Feb. 4, 1887, is a statutory penalty 
 in the nature of damages, and not, as has been contended, a " profit liqui- 
 dated." — Monroe v. Anderson, 58 Fed. 398; 7 C. C. A. 272. 
 
 § 282. In Equity. 
 
 If the appellees had sustained an injury to their legal rights the courts of 
 law were open to them for redress, and in those courts they might have 
 claimed not compensation merely but vengeance for such injury as they 
 could show they had sustained. — Livingstone v. Woodworth, 15 How. 546; 
 14 L. Ed. 809. 
 
 The rule in suits in equity of ascertaining by a reference to a master the 
 profits which the defendant has made by the use of the plaintiff's invention, 
 stands on a different principle. It is that of converting the infringer into a 
 trustee for the patentee as regards the profits there made; and the adjudg- 
 ment of these profits is subject to all the equitable considerations which are 
 necessary to do complete justice between the parties, many of which would 
 be appropriate in a trial by jury. With these corrective powers in the hands 
 of a chancellor, the rule of assuming profits as the groundwork for estimating 
 the compensation due from the infringer to the patentee has produced results 
 calculated to suggest distrust to its universal application even in courts of 
 equity. — Packet Co. v. Sickles, 86 U. S. 611; 22 L. Ed. 203. 
 
 Damages of a compensatory character may also be allowed in equity, in 
 certain cases where the gains and profits made by the respondent are clearly 
 not sufficient to compensate the complainant for the injury sustained. 
 Gains and profits are still the proper measure of damage in equity. — Bird- 
 sail V. CooUdge, 93 U. S. 64; 23 L. Ed. 802. 
 
 Damages of a compensatory character may be allowed to a complainant 
 in an equity suit, when it appears that the business of the infringer was so 
 improvidently conducted that it did not yield any substantial profits. — 
 Marsh v. Seymour, 97 U. S. 348; 24 L. Ed. 963. 
 
 R. S. Sec. 4921; Birdsall v. Coolidge, 93 U. S. 64. 
 
 By a uniform current of decisions of this court, beginning 30 years ago, 
 the profits allowed in equity, for the injury that a patentee has sustained by 
 the infringement of his patent, have been considered as a measure of un- 
 liquidated damages which, as a general rule, and in the absence of special 
 circumstances, do not bear interest until after their amount has been judi- 
 cially ascertained; and the provision introduced in the Patent Act of 1870, 
 regulating the subject of profits and damages made no mention of interest, 
 and has not been ur.derstood to affect the rule as previouslv announced. — 
 Til'^hman v. Proctor, 125 U. S. 136; 31 L. Ed. 664; 8 S. Ct. 894. 
 
 Silsby V. Foote, 61 U. S. 378; Mowry v. Whitnev. 81 U. S. 620; Littlefield v. 
 Perrv, 88 U. S. 205: R. S. 4921; Parks v. Booth, 102 U. S. 96; Root v. Railway, 
 105 tJ. S. 189; R. R. v. Turrill, 110 U. S. 301.
 
 §283 DAMAGES 259 
 
 We have been in doubt as to the proper ^ijPof ^o^ jUhe^^^^^^^ 
 it should be sent to a master for rehearing or whether this cou ^^^ 
 
 ascertain from the record ^he proper amount Mfg Co. k^o g, 
 TT a o^-i Thi<? rase has now been in the courts tor eignieen ycctio. 
 
 ingly to compel an additional expenditure ot time. ^^^^ 
 
 $40,000. - Tuttle i;. Claflin, 76 Fed. 227, 22 C. L. A. id». 
 
 in equity when ,t. Wears thatjhe business of ^^^^^^^^ i ^^ .^ ^^_^ ^^ 
 
 § 283. Increasing. 
 
 Damages of a compen, business of the infringer was so impiuv- 
 
 before the court. - Root v. Ry., 105 U. S. 189, 2b L. i^a. y/o. 
 Marsh v. Seymour, 97 U. S. 348. 
 
 Conduct of an infringer which will warrant. - Tophff .. Topliff, 145 U. 
 S. 156; 36 L.Ed. 658; 12 S. Ct. 82.5. 
 
 Is a matter of discretio^ by court and will notbe^^^^^^^^ 
 unless evidence clearly demands it. — Topliti v. iopnn, 
 L.Ed. 658; 12 S. Ct. 825. 
 
 Thev were perfectly indifferent to the claimed rights of anyone else and 
 p Jc'haseTiXgin/goods from, the ^a,.^,^^^^^^^^ f^^^n'e! 
 
 Luance of a P-hminary ii^unc ion ag^nis^^^tj^^r^^ ^^^ ^^^^^^ 
 
 half months after the date of J^^f ^VX^^^o^ks and papers to evade the 
 cautiously does not A'^^ ^ ^f ,^ /^J^^^^^t the4eivS^to produce them, 
 accounting, it appears that they d^d n«t e^ert tnemse J ^ 
 
 They were Passive instruments in the hands of the rea^d^^ interposed. 
 
 V. Elsas, 86 Fed. 917 ; 30 C. C. A. 487. 
 
 This ease is particularly free fron^^^^^^^^^^^^ 
 
 Kissinger-Ison v. Bradford, 123 Fed. 91, 59 C. C. A. 2il. 
 
 A suggestion was made with respec. to our ascertaWng from the marte^^^ 
 
 Court: — Murrav v. Orr, 153 Fed. 369; 82 C. L. A. 44G. 
 
 ing^i^p==:r»:g,rMok^^^^^^^^^^ 
 
 948; 89 C. C. A. 26.
 
 260 THE FIXED LAW OF PATENTS ' § 284 
 
 I In increasing the damages the court below was influenced by the fact that 
 the defendant had reason to believe that it was infringing, " as it was called 
 upon to indemnify at least one party with whom it was dealing and from 
 whom it secured business by a reduction of j^rice, thus knowingly taking 
 business from a licensee of the complainants." It also appeared that the 
 defendant destroyed all file proofs of the use by it of the infringing process 
 prior to the commencement of the accounting, although this was not done 
 maliciously or for the purpose of concealment. The account presented to 
 the master was not a frank and full statement, and defendant's infringement 
 was continued after the commencement of suit. If the question had bee'.i 
 presented to this court in the first instance, it is not improbaole that we should 
 have decided to treble the damages. It was, however, in the discretion of 
 the Circuit Court to do so and we hesitate to say that the discretion has been 
 abused. — Fox v. Knickerbocker, 165 Fed. 442; C. C. A. 
 
 Topliff V. Topliff, 145 U. S. 156; Day v. Woodworth, 13 How. 363: Weston v. 
 Empire, 155 Fed. 301; Folding Box v. Elsas, 81 Fed. 197, affd. 86 Fed. 917; 
 Lyon V. Donaldson, 34 Fed. 789. - 
 
 Since the statute permits only an increase of the damages found, and not 
 of profits, it follows that the complainant's motion in that regard falls to 
 the ground. — Yesbera v. Hardesty, 166 Fed. 120; C. C. A. 
 
 Note: This is clearly the rule in the Sixth Circuit. I have never been able 
 to see the logic of this rule. The statute giving courts of equity jurisdiction 
 provides: " And the court shall have the same power to increase such 
 damages, in its discretion, as is given to increase the damages found by ver- 
 dicts in actions in the nature of actions of trespass upon the case." (R. S. 
 4921). In the first place, "such damages" in an action at law may be 
 measured by the jury in sundry ways — in terms of losses by defendant, 
 gains of plaintiff, royalties, etc. In the second place, the distinction between 
 " profits " and " damages " in equity is, as one observes from reading the 
 eases, shadowy at least. Whether the award is in terms of jirofits or damages, 
 it comes to dollars and cents — a penalty on the one hand, and a recoupment 
 on the other. The rules and distinctions in damages and profits are means to 
 a common end, rules for reaching justice; and the plain intent of congress 
 in providing the means for increasing the award to a plaintifT or complainant 
 was to enable the court, in any case where the actual finding is palpably 
 insufiicient, to do justice, not merely to inflict a penalty; and the recoupment 
 feature is an equitable provision which a court of equity should be most 
 wiUing to enforce. 
 
 § 284. Interest. 
 
 Interest upon profits should not be allowed as part of the damages. — 
 Silsby V. Foote, 61 U. S. 378; 15 L. Ed. 953. 
 
 In our opinion the defendant should not have been charged with interest 
 before final decree. The profits which are recoverable against an infringer 
 of a patent are in fact in compensation for the injury the patentee has sus- 
 tained from the invasion of his right. They are the measure of his damages. 
 Though called profits they are reallv damages, and unliquidated until the 
 decree is made. — Mowry v. Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 The circuit court, however, in rendering its final decree, added interest 
 to the amount found by the master to be due upon the account for profits.
 
 5 285 DAMAGES 261 
 
 In Mowry v. Whitney, 14 Wall. 620 it was held that interest was not allow- 
 able in such cases except under peculiar circumstances. This case does 
 not, in cur opinion, justify such an allowance. It will be for the court to 
 determine, upon the coming in of the new report, accompanied by other 
 evidence, whether the conduct of the defendants has been such as to subject 
 them to liability in this particular. — Littlefield v. Perry, 88 U. S. 205; 
 22 L. Ed. 577. 
 
 The court in its former decision (94 U. S. 695) affirmed the decrees " with 
 
 costs and interest until paid at the same ra^e per annum that similar decrees 
 bear in the courts of the state of Illinois." By " similar " we did not mean 
 decrees in patent suits, for of such suits state courts have no jurisdiction. It 
 was right for the circuit court, when our mandate went down, to order the 
 decree affirmed to be executed by the collection of the money found to be due, 
 and interest, which, under the established rule in the state, will be six per cent. 
 — Railroad v. TurrilJ, 101 U. S. 836; 25 L. Ed. 1009. 
 
 Interest on the profits decreed to the complainant should not have been 
 allowed, as was decided by this court many years ago, the better opinion 
 being that profits in such a case can be regarded in the light of unhquidated 
 damages, which usually do not draw interest without a special order of the 
 court. — Parks v. Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 Silsby V. Foote, 20 How. 378. 
 
 In a case arising in New York State the court awarded damages with 
 interest until paid at the same rate per annum that decrees bear in the state 
 of New York. — Yale v. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S. Ct. 934. 
 
 Delay caused by the court, or not attributable to the plaintiff, in coming to 
 a conclusion on the master's report, where the amount found by that report 
 is confirmed, ought not to deprive the plaintiff of interest on the amount 
 found by the master. Under such circumstances, the account ought to be 
 considered as liquidated on the dav when the master's report is filed. — 
 Consofidated v. Crosby, 141 U. S. 441; 35 L. Ed. 809; 12 S. Ct. 49. 
 
 § 285. Law Actions. 
 
 . At law the jury can award only actual damages. — Hogg v. Emerson, 11 
 How. 587; 13 L. Ed. 824. 
 Lowell V. Lewis, 1 Mas. 182. 
 
 Profits are not the primary or true criterion of damages for infringement 
 in an action at law. That rule applies eminently and mainly to cases in 
 equity, and is based upon the idea that the infringer shall be converted into 
 a trustee, as to those profits, for the owner of the patent which he infringes; 
 a principle which it is very difficult to apply in a trial before a jury but quite 
 appropriate on a reference to a master, who can examine defendant's books 
 and papers, and examine him upon oath, as well as all his clerks and employees. 
 
 No doubt, in the absence of satisfactory evidence of either class in the form 
 to which it is most appropriate, the other may be resorted to as one of the 
 elements on which the damages or the compensation may be ascertained : but 
 it cannot be admitted, as the prayer which was refused implies, that in an 
 action at law the profits which the other party might have made is the primary
 
 262 THE FIXED LAW OF PATENTS §285 
 
 or controlling measure of damages. — Burdell v. Denig, 92 U. S. 716; 23 
 L. Ed. 764. 
 
 Packet V. Sickles, 19 Wall. 617. 
 
 We have repeatedly held that sales of licenses of machines, or of a royalty es- 
 tablished, constitute the primary and true criterion of damages in the action 
 at law. — Burdell v. Denig, 92 U. S. 716; 23 L. Ed. 764. 
 
 Where the suit is at law, the measure of damages remains unchanged, the 
 rule still being that the verdict of the jury must be for the actual damages 
 sustained, subject to the right of the court to enter judgement for any sum 
 above the verdict not exceeding three times that amount, with costs. — 
 Birdsall v. Coolidge, 93 U. S. 64; 23 L. Ed. 802. 
 
 There is a difference between the measure of recovery in equity and that 
 applicable in an action at law. In equity the complainant is entitled to re- 
 cover such gains and profits as have been made by the infringer from the 
 unlawful use of the invention, and, since the act of July 8, 1870, in cases 
 where the injury sustained by the infringement is plainly greater than the 
 aggregate of what was made by the defendant, the complainant is entitled to 
 recover the damages he has sustained, in addition to the profits received. 
 At law the plaintiff is entitled to recover, as damages, compensation for the 
 pecuniary loss he has suffered from the infringement, without regard to the 
 question whether the defendant has gained or lost by his unlawful acts — 
 the measure of recovery in such cases being not what the defendant has 
 gained, but what plaintiff has lost. As the case in hand is one at law, it is 
 not necessary to pursue the subject of the extent of the equitable remedy; 
 but reference may be had to Tilghman v. Proctor, 125 U. S. 137, where the 
 cases were elaborately considered and the rule above stated was declared to 
 be established. — Coupe v. Royer, 155 U. S. 565; 39 L. Ed. 263; 15 S. Ct. 
 199. 
 
 That in the absence of any measure of damages at law, recovery cannot be 
 measured in terms of the defendant's profits, see Brown v. Lanyon, 148 Fed. 
 838; 78 C. C. A. 528. 
 
 Reviewing history of the statute and citing: 
 
 Seymour v. McCormick, 16 How, 480; Suffolk v. Hayden, 70 U. S. 316; Mowry 
 V. Whitney, 81 U. S. 620; Philip v. Nock, 84 U. S. 460; Packet Co. v. Sickles, 86 
 U. S. 611; Burdell v. Denig, 92 U. S. 716; Tilghman v. Proctor. 125 U. S. 136; 
 Coupe V. Royer, 155 U. S. 565; Belknap v. Schild, 161 U. S. 10; Houston v. 
 Stern, 74 Fed. 636; Seattle v. McNamara, 81 Fed. 863; Boston v. Allen, 91 Fed. 
 248; Boyle v. Zacharie, 6 Pet. 647; Scott v. Neeley, 140 U S. 106; Root v. 
 RaUway, 105 U. S, 189. 
 
 The plaintiff offered to prove the utility and advantages of his patented 
 device, that it had been appropriated and used by a number of other rail- 
 roads, and that this use, being without his consent, prevented the establish- 
 ment of a market value therefor. This offer the court rejected. It will thus 
 be seen that Suffolk Co. v. Hayden, has been anprovinglv cited and consid- 
 ered as authority for the principle, therein enunciated, that, in the absence 
 of license fee or royalty, other proof can in an action at h\v be resorted to, 
 to show the damage done to the owner of the patent. The law thus an- 
 nounced in conclusion of the case before us, unless Suffolk v. Hayden was over-
 
 5 286 DAMAGES 263 
 
 ruled in Coupe v. Royer, 155 U. S. 567. Holding, then as we do, that Suffolk 
 V. Hayden is unreversed and unqualified by Coupe v. Royer, it follows the 
 court below erred. — McCune v. Baltimore, 154 Fed. 63; 83 C. C. A. 175. 
 
 Suffolk V. Hayden, 70 U. S. 318, Birdsall v. Coolidge, 93 U. S. 69; Root v. 
 Railway, 105 U. S. 198: Tilghman v. Proctor, 125 U. S. 143; Coupe v. Royer, 
 155 U. S. 567. 
 
 The complaint (at law) concluded with a prayer or petition for judg- 
 ment against the defendant in the sum of $50,000. During the trial plaintiff 
 sought to raise an issue respecting royalties, which was cut off by the court. 
 Damages were assessed at $1. Plaintiff then petitioned for an accounting 
 of profits. Held: Relief can be administered in lawsuits only in accordance 
 with the facts set out in the pleading, regardless of the prayer. As the profits 
 are based upon the existence of established royalties, involving matters of 
 accounting cognizable in equity, the bill should be framed accordingly, 
 containing the essential averments authorizing an inquiry for the ascer- 
 tainment of profits. There are no facts alleged in the petition as a basis 
 for the ascertainment of profits. — Portland v. Hermaim, 160 Fed. 91. 
 
 Brown v. Lanyon, 148 Fed. 838. 
 
 Note: It would seem as if this decision might fitly conclude the practice 
 that has so curiously prevailed in the Ninth Circuit of bringing actions for 
 infringement on the wrong side of the court. 
 
 § 286. Master's Report. 
 
 The master acted in view of this evidence, and the court below concurred 
 in his finding, except in some unimportant particulars. As no obvious error 
 or mistake has been pointed out to us, their conclusions must be permitted 
 to stand. — Warren v. Keep, 155 U. S. 265; 39 L. Ed. 144; 15 S. Ct. 83. 
 
 Tilghman v. Proctor, 125 U. S. 136. 
 
 The testimony on the reference was directed to both lines for recovery, 
 namely profits on the one and damages on the other; and that the master 
 followed this scheme, not for the purpose of duplicating the damages but 
 because the complainant might be able to succeed on one fine, even if he 
 should fail on the other. The master's report shows that, though he was 
 impressed that the proof was sufficient to make out a case for damages, he 
 thought it expedient to report his conclusions upon the proof offered in 
 support of the claim for profits, to the end that the court should have the 
 data for a decree upon the adoption of either basis as the court should deem 
 proper. We think the course pursued by the master was well advised, and 
 conducive to a proper result. — Mast v. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 The court abruptly departed from the orderly course of procedure. (The 
 master found $29,000 damages and the circuit judge arbitrarily reduced the 
 amount to $18,000.) The decree did not rest upon any finding of the master, 
 notwithstanding the court overruled all exceptions to it. Nor is it supported 
 by any evidence found in the record. It was for an arbitrary sum quite 
 distinct from either of the results which the evidence had any tendency to 
 prove, and the court was not at liberty to pronounce a decree at discretion. — 
 Mast V. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 N. Y. V. Ransom, 23 How. 487; Philip v. Nock, 17 WaU. 460.
 
 264 THE FIXED LAW OF PATENTS §287 
 
 § 287. Measure — Absence of License or Royalty Measure. 
 
 This question of damage, under the rule given in the statute, is ahvays 
 attended with diffi(;ulty and embarrassment, both to the court and jury. 
 There being no estabhshed patent or hcense fee in the case, in order to get 
 at a fair measure of damages, or even an approximation to it, general evidence 
 must necessarily be resorted to. And what evidence could be more ajjpro- 
 priate and pertinent than that of the utility and advantage of the invention 
 over the old modes or devices that had been used for working out similar 
 results? With a knowledge; of these benefits to the persons who have used 
 the invention and the extent of the use by the infringer, a jury will be in 
 possession of material and (lontrolling facts that may enable them in the 
 exercise of a sound judgement, to ascertain the damages, or, in other words, 
 the loss to the patentee or owner, by the piracy instead of the purchase of the 
 use of the invention. — Suffolk v. Hayden, 70 U. S. 315; 18 L. Ed. 76. 
 
 In cases where there is no established license fee in the case, or even an 
 approximation to it, general evidence must necessarily be resorted to. — 
 Packet Co. v. Sickles, 86 U. S. 611; 22 L. Ed. 203. 
 
 Suffolk V. Hayden, 3 Wall. 315. 
 
 In this case when the patentee granted no licenses and had no established 
 license fee, but supplied the demand himself and was able to supply the 
 demand, the master was unable to determine from the proofs what [)rofits 
 the defendant had made. He confined his award to the enforced reduction 
 of price caused by the infringement. That this is a proper item of damages, 
 if proved, is clear. — Yale v. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S.'Ct. 
 934. 
 
 McComb V. Brodie, 1 Woods, 153; Philip v. Nock, 17 Wall. 460. 
 
 This is an action at law for the damages sustained by the plaintiffs for the 
 alleged infringement, and in such actions where there has been proved an 
 established royalty or license fee, which has been customarily paid to the 
 owner of the patent by those who desired to use it, such regular price for a 
 license is its primary and true criterion of the plaintiff's damage ; but in this 
 case, there is no evidence of any license fee ever having been demanded or 
 paid by anyone; and so, if you find in favor of the plaintiffs, you should con- 
 sider the utility and advantage to the defendant of the use of the patented 
 device, as compared to any other means of obtaining similar results which 
 were open to the defendant to use ; and you may consider the cost of using 
 one as compared with the cost and savings to the defendant of using the other; 
 and from these data, if proven to you, you should ascertain, in the exercise 
 of a sound judgment, what would be a fair compensation to the plaintiffs 
 for the damage which they have sustained by reason of the defendant having 
 infringed, instead of having purchased the right to use, the invention. — 
 Brickill v. Mayor, 60 Fed. 98 ; 8 C. C. A. 500. 
 
 Suffolk V. Hayden, 3 Wall. 320; Sessions v. Romadka, 145 U. S. 29. 
 
 If there had been an established royalty, the jury could have taken that 
 sum as the measure of damages. In the absence of such royalty, and in the 
 absence of proof of lost sales or injury by competition, the only measure of 
 damages was such sum as, under all the circumstances, would have been a 
 reasonable royalty for the defendant to have paid. This amount it was the 
 province of the jury to determine. In so doing, they did not make a contract 
 for the parties, but found a measure of damages. — Hunt v. Cassidy, 64 
 Fed. 585; 12 C. C. A. 316. 
 
 McKoevor v. V. S. 14 Ct. CI. 414; Ross v. Railway, 45 Fed. 371; Royer v. 
 Coupe, 29 Fed. 371; Gary v. Mfg. Co. 37 Fed. 654.
 
 §§ 288-289 
 
 DAMAGES 265 
 
 That where there is no royalty basis, where the plaintiff can show no actual 
 damage, and no market price can be established, the plaintiff, under Coupe 
 V. Royer, 155 U. S. 565, can recover nominal damages only, see Seattle v. 
 McNamara, 81 Fed. 863; 26 C. C. A. 652. 
 
 § 288. Measure — Complainant's Loss. 
 
 Reduction of prices and consequent loss of profits, enforced by infringing 
 competition, is a proper ground for award of damages. The only question 
 is as to the character and sufficiency of the evidence in the particular case. — 
 Yale V. Sargent, 117 U. S. 536; 29 L. Ed. 954; 6 S. Ct. 934. 
 
 Where the patentee grants no licenses, and has no established license fee. 
 but supplied the demand himself, and was able to do so, an enforced reduc- 
 tion of price is a proper item of damages, if proven by satisfactory evidence. 
 — Boesch V. Graff, 133 U. S. 697; 33 L. Ed. 787; 10 S. Ct. 378. 
 
 Yale V. Sargent, 117 U. S. 536. 
 
 While the loss due to an infringing device reducing the market price of 
 complainant's manufacture is a proper element of damages, the evidence must 
 show that the reduction in price was due to the sale of the infringing devices 
 and not to other causes. — Boesch v. Graff, 133 U. S. 697; 33 L. Ed. 787; 
 10 S Ct. 378. 
 
 Cornley v. Marckwold, 131 U. S. 159; N. Y. v. Ransom, 64 U. S. 487; Rude 
 V. Westcott, 130 U. S. 152. 
 
 It is reasonable to conclude that, if the appellees had not deliberately 
 and wantonly become infringers, and wrongfully trespassed on appellant's 
 patent rights, they would have purchased from appellant the rods they used. 
 Moreover, the law is that in cases of wanton infringement, every doubt is to 
 be resolved against tlie infringer. These facts unite to afford substantial, 
 not mere conjectural, grounds on which to base the conclusion, that the 
 appellant, by appellees' wrongful act, lost the sale of these particular rods, 
 and to that extent assuredly was damaged. The facts we have stated being 
 in evidence, the master was fully justified in finding, as we do, and especially 
 so in the absence of all counterproof by the appellees, that the appellant, by 
 the appellees' wrongful impairment of his sales, was damaged to the extent of 
 the difference between the cost price and the selling price established as be- 
 tween these parties, and interest from the date of the filing of the master's 
 report. — Rose v. Hirsch, 94 Fed. 177; 36 C. C. A. 132. 
 
 Rubber Co. v. Goodyear, 9 Wall. 803; Creamer v. Bowers, 35 Fed. 209; Covert 
 V. Sargent, 38 Fed. 237; Tilghman v. Proctor, 125 U. S. 161. 
 
 It is undoubted that the wrongdoer compelled the complainant to reduce 
 its prices, but the complainant even then probably made a profit and it sold 
 more machines on account of the reduced price. What, on the whole, it lost 
 does not appear. It was within the power of the complainant to illustrate 
 to what extent its whole profit fell off by reason of the conipetition. _ It did 
 not do so, and the court is unable to know to what extent it was finally injured 
 by the competition. Therefore, no damages growing out of this unlawful 
 competition can be allowed. (Opinion of court below quoted and approved.) 
 — Force v. Sawyer-Boss, 143 Fed. 894; 75 C. C. A. 102. 
 
 § 289. Measure — Deductions and Mitigations. 
 
 The intent not to. injure never exonerates from all damages, though it 
 may mitigate them. — Hogg v. Emerson, 11 How. 587; 13 L. Ed. 824. 
 
 Whittemore v. Cutter. 1 Gall. 429: Jones v. Pearce, Web. P. C. 125; Bryce v. 
 Dorr, 3 McLean, 583; Lowell v. Lewis, 1 Mas. 182.
 
 266 THE FIXED LAW OF PATENTS § 290 
 
 Such general expenses as store rent, clerk hire, fuel, gas, porterage, etc. 
 are to be deducted proportionally upon the profits of the attachment. — 
 Tremain v. Hitchcock, 90 U. S. 518; 23 L. Ed. 97. 
 
 A receipt given after suit was commenced may be given in evidence to 
 reduce damages without setting it up in the pleadings bv amendment. — 
 Burdell v. Denig, 92 U. S. 716; 23 L. Ed. 764. 
 
 The judge of the circuit court was of opinion that the facts in this case 
 took it out of the general rule that the pecuniary advantage which the in- 
 fringers derived from the unauthorized use of the patent is to be es-timated 
 upon the entire production of the infringers, because, in his opinion, the 
 evidence showed that the defendants never would have resorted to the hand 
 method, because it was so expensive as to be prohibitory, and because it was 
 impossible to make marketable plaits by hand. There may be and probably 
 will be, cases in which an inadvertent infringer of an old and unknown patent 
 for the method of manufacturing an article which is made and sold by the 
 million at a cheap rate, and which is expensively made by hand, like the 
 article of paper bags, suggested by Judge Coxe, will have a persuasive 
 equity against a decree for his entire profits, upon the ground that the owner 
 of the patent suffered no damage, and that the paper-bag business was 
 created by automatic machinery, and never would have existed if the bags 
 must be made by hand. — Tuttle v. Claflin, 76 Fed. 227; 22 C. C. A. 138. 
 
 Before final hearing the courts referred the case back to " take proof 
 as to the entire or partial abandonment by complainant of the disk furrow 
 opener covered by the patent, and the substitution therefor of another and 
 different type of device for the same purpose." The master reported that he 
 was unable to discover how the later improvement should affect the conse- 
 quences of the infringement from 1898 to 1902 and adhered to his former 
 report. It is manifest that his conclusion upon the matter referred back to 
 him was correct. — Mast v. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 § 290. Measure — Defendant's Gains. 
 
 It must be apparent to the most superficial observer of the immense variety 
 of patents issued every day, that there cannot, in the nature of things, be 
 any one rule of damages which will equally apply to all cases. The mode of 
 ascertaining actual damages must necessarily depend upon the peculiar 
 nature of the monopoly granted. A man who invents or discovers a new 
 composition of matter such as vulcanized India rubber, or a valuable medi- 
 cine, may find his profit to consist in a close monopoly, forbidding anyone to 
 compete with him in the market, the patentee being himself able to supply 
 the whole demand at his own price. If he should grant licenses to all who 
 might desire to manufacture his composition, mutual competition might 
 destroy the value of such license. This may be the case also where the paten- 
 tee is the inventor of an entire new machine. If any person could use the 
 invention or discovery by paying what a jury might suppose to be a fair 
 value of a license, it is plain that competition would destroy the whole value 
 of the monopoly. In such cases the profit of the infringer may be the only 
 criterion of the actual damages of the patentee. — Seymour v. McCormick, 
 16 How. 480; 14 L. Ed. 1024. 
 
 It is only where, from the peculiar circumstances of tlie case, no other rule 
 can be found, that the defendant's profits become the criterion of the plain- 
 tiff's loss. — Seymour v. McCormick, 16 How. 480; 14 L. Ed. 1024.
 
 5 290 DAMAGES 267 
 
 The master reported as damages the entire profits ^^ defendant on cr 
 
 Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 tee of the process of ^^"^f '/^^^of whTch it is conceivable there might be 
 esses m the manufacture or eaehot^ men ^^ ^^^^^e a marketable 
 
 a patent and as every one of ^he processes sxec ^^^^ 
 
 Philip 1.. Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 The decree (covering ail gains ™d P^fit^J^f 'T„^r„«*^:'C;r^^ 
 f:iTm7^^S'^- IXrldva^r d^°l dde'dani derive U^ 
 iti,^ l?o°.« '-;:^'Xrrtr»alKi™ ?f :ltt^an^:.Tan 
 
 U.S. 205; 22L. Ed. 577. 
 
 22 L. Ed. 577, 
 
 J£^t!^J^heSS'-in;^n.1o»Lr..^^^^^^^^^^ 
 261 ; 23 L. Ed. 86. 
 
 716; 23L. Ed. 764. 
 
 that they saved themselves from loss. — Kailroaa ^. lurnu, ^ 
 24 L. Ed. 238. 
 
 Wp think the wei-ht of evidence leads to the conclusion that the number of 
 fee^ mended 0^ thelnfringing machines, the gain in mendmg compared .ith
 
 268 THE FIXED LAW OF PATENTS § 290 
 
 the cost of mending on the common anvil, considering the saving of labor and 
 fuel were such as justified the decrees that were made. — Railroad v. Turrill, 
 94 U. S. 695; 24 L. Ed. 238. 
 
 A limited locality required a particular kind of a pump to be used only 
 in that locality for a special purpose. The market was not only limited to a 
 particular locality but it was unusually limited in demand. A single manu- 
 facturer, possessing the facilities the appellant had could easily and with 
 reasonable promptness fill every order that was made. There was no other 
 pump that could successfully compete with that controlled by the patent. 
 Under these circumstances it is easy to see that what had been the appellee's 
 gain in this business must necessarily have been the appellant's loss and, 
 consequently, the appellant's damages are to be measured by the appellee's 
 profits derived from their business in that special and limited market. — 
 Goulds V. Cowing, 105 U. S. 253 ; 26 L. Ed. 987. 
 
 The question to be determined is, what advantage did the defendant 
 derive from using the complainant's invention over what he had in using other 
 processes then open to the public and adequate to enable him to obtain an 
 equally beneficial result. The fruits of that advantage are his profits. 
 Quoting Mowry v. Whitney, 14 Wall. 620. — Goulds v. Cowing, 105 U, S. 
 253; 26 L. Ed. 987. 
 
 There was no market for pumps adapted to this particular use, except 
 in the oil producing regions of Pennsylvania and Canada. The demand was 
 limited as well as local. Less than a thousand pumps actually supplied all 
 who wanted them. But for that particular use no other pump could at the 
 time be sold. If the appellant kept the control of its monopoly under the 
 patent, it alone had the advantage of the market. Unless the appellees got 
 the improved pump, they could not become competitors in the field, and just 
 to the extent they got into the field they drove the appellant out. Through 
 their infringement they got the advantage of selling the pumps that had 
 upon them the patented improvement. Without it no such sales would have 
 been effected. The fruits of the advantage they gained by their infringe- 
 ment were, therefore, necessarily the profits they made on the entire sale. — 
 Goulds V. Cowing, 105 U. S. 253; 26 L. Ed. 987. 
 
 It may be added that where no profits are shown to have accrued a court 
 of equity cannot give a decree for profits bv way of damages or as punish- 
 ment for the infringement. — Root v. Ry., 105 U. S. 189; 26 L. Ed. 975. 
 
 Livingston v. Woodworth, 15 How. 559. 
 
 No profits having been made by the defendant, in the absence of any 
 evidence as to the value imparted by the patented design it was error to 
 allow as damages upon the number of yards of goods made by the defendant 
 the sum per yard which was the profit of the plaintiff in making and selling 
 goods with the patented design. — Dobson v. Dornan, 118 U. S. 10; 30 L. 
 Ed. 63; 6 S. Ct. 946. 
 
 Dobson V. Hartford, 114 U. S. 439. 
 
 Exception is taken to the form of the interlocutory decree, in that, while it 
 awards a recovery for the profits and damages from the infringement of the 
 design, it orders an account to be taken of the profits of the defendants from 
 infringing upon the exclusive rights of the plaintiffs " by the manufacture, 
 use and sale of carpeting bearing said patented design," and of the additional 
 damages suffered by the plaintiffs " by reason of said infringements." We 
 do not think the decree is open to the objection made. It is not like the
 
 § 291 DAMAGES 269 
 
 decree in Littlefield v. Perry, 88 U. S. 228. It directs an account of the profits 
 from the infringement. The infringement could be committed only by 
 making, using, and selling carpets containing the patented design; but the 
 profits and damages to be accounted for are described as only those from 
 the infringement. — Dobson v. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 
 946. 
 
 Where defendant's entire profits were derived from the infringement his 
 profits are plaintiff's damages. — Hurlbut v. Schillinger, 130 U. S. 456; 32 
 L. Ed. 1011; 9S. Ct. 584. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Root v. Railway, 105 U. S. 189; Callaghan 
 V. Myers, 128 U. S. 617; Garretson v. Clark, 111 U. S. 120. 
 
 This court has repeatedly held that in estimating damages in the absence 
 of a royalty, it is proper to consider the savings of the defendant in the use 
 of the patented device over what was known and in general use for the same 
 purpose anterior to the date of the patent. — Sessions v. Romadka, 145 U. S. 
 29; 36 L. Ed. 609; 12 S. Ct. 799. 
 
 Mowry v. Whitney, 81 U. S. 620; Cawood Pat. 94 U. S. 695; Tilghman v. 
 Proctor, 125 U. S. 136; Williams v. Rome, 18 Blatchf. 181. 
 
 If the infringing machine or device derived the entire commercial value 
 from the patented feature or improvement, complainant would be entitled 
 to defendant's entire profits. — Mosher v. Joyce, 51 Fed. 441 ; 2 C. C. A. 322. 
 
 Mfg. Co. V. Cowing, 105 U. S. 253; Root v. Railway, 105 U. S. 189; Hurlbut 
 V. Schillinger, 130 U. S. 456; Crosby v. Consolidated, 141 U. S. 454. 
 
 Upon the foregoing facts, the question of the rule of law in regard to the 
 method of ascertaining the profits was not a debatable one. If the defendants 
 had made no addition to the Crosby and Kellogg invention, it being one of 
 an original and primary character, they took it as it was, although they fur- 
 nished their machine with mechanical equivalents which might produce 
 better work than the corresponding devices for which they were substituted, 
 and the complainants would be entitled to the pecuniary advantage which 
 the infringers derived from their unauthorized use of the patent, the profit 
 being in this case the difference between the expense of plaiting by the use 
 of the patented device and the expense of doing the same thing by hand. — 
 Tuttle V. Claflin, 76 Fed. 227; 22 C. C. A. 138. 
 
 Mowry v. Whitney, 14 Wall. 620; Cawood Pat. 94 U. S. 695; Thomson v. 
 Wooster, 114 U. S. 104; Sessions v. Romadka, 145 U. S. 29. 
 
 When the infringer uses in his infringing machine the essential part of the 
 patented machine, without which his infringing machine is worthless, it is 
 not an adequate answer to the demand for the payment of his entire profits 
 that his substituted equivalents improved the work of the corresponding 
 elements of the infringed machine. — Tuttle v. Claflin, 76 Fed. 227; 22 C. 
 C. A. 138. 
 
 §291. Measure — Full Damages. 1 
 
 It is the making and selling to be used, and not the selling or buying or 
 making alone for which full damages are usually given. — Hogg v. Emerson, 
 11 How. 587; 13 L. Ed. 824. 
 
 10 Wheat. 350; Curt. Pat. 256 n. 3; 3 McLean, 427. 
 
 When the entire profit of a business or undertaking results from the use of 
 the invention, the patentee will be entitled to recover the entire profits, if
 
 270 THE FIXED LAW OF PATENTS §292 
 
 he elects that remedy. And in such a case, the defendant will not be allowed 
 to diminish the show of profits by putting in unconscionable claims for 
 personal services or other inequitable deductions. — Root v. Ry., 105 U. S. 
 189; 26 L. Ed. 975. 
 
 Rubber Co. v. Goodyear, 76 U. S. 788. 
 
 § 292. Measure — License Fee. 
 
 When an inventor finds it profitable to exercise his monopoly by selling 
 licenses to make or use his improvement, he has himself fixed the average of 
 his actual damage, when his invention has been used without his license. 
 If he claims anything above that amount he is bound to substantiate his 
 claim by clear and distinct evidence. When he has himself established the 
 market value of his improvement as separate and distinct from the other 
 machinery with which it is connected, he can have no claim in justice or 
 equity to make the profits of the whole machine the measure of his demand. 
 — Seymour v. McCormick, 16 How. 480; 14 L. Ed. 1024. 
 
 The defendants in various forms prayed the court to instruct the jury that 
 the measure of damages was the established rate for the license to use their 
 invention, as ascertained by the sales made by plaintiffs of such license to 
 others. If this was the true rule of estimating the damages, the bill of 
 exceptions shows that a sufficient number of such licenses, and the prices at 
 which they were granted, was in evidence to enable the jury to apply the 
 principle to the case before them. 
 
 As we are of opinion that this was the sound rule, and that in refusing the 
 prayers for instruction based on it, as well as in admitting evidence of the 
 saving of fuel and its value as affecting the amount of the verdict, the court 
 below was in error. 
 
 On that subject in the case of Seymour v. McCormick, 16 How. 480, this 
 court on full consideration, and without dissent, laid down the proposition 
 that in suits at law for infringement of patents, where the sale of licenses 
 by the patentee had been sufficient to establish a price for such licenses, 
 that price should be taken as his measure of damages against the infringer. 
 The rule thus declared has remained the established criterion of damages 
 in cases to which it was applicable ever since. Sickles v. Borden, 4 Blatchf. 
 14; Suffolk V. Hayden, 3 Wall. 315; Livingstone v. Jones, 3 Wall. Jr. 330. 
 
 Certainly any unnecessary relaxation of the rule we have laid down in 
 cases at law, where the patentee has been in the habit of selling his invention 
 or license to use it, so that a fair deduction can be made as to the value which 
 he and those using it have established for it, does not commend itself to our 
 judgement, nor is it encouraged by our experience. 
 
 If such be the proper rule in case of the infringer who uses the invention 
 without license and against the consent of the owner, it should not be harsher 
 against the party who uses it with consent of the owner, express or implied, 
 but without any agreement as to the rate of compensation. In such case 
 nothing can be more reasonable than that the price fixed by the patentee for 
 the use of his invention, in his dealings with others, and submitted to by 
 them before using it, should govern. — Packet Co. v. Sickles, 86 U. S. 611; 
 22 L. Ed. 203. 
 
 It is obvious that there cannot be any one rule of damages prescribed which 
 will apply in all cases, even where it is conceded that the finding must be 
 limited to actual damages. Frequent cases arise where proof of an estab- 
 lished royalty furnishes a pretty safe guide both for the instructions of the 
 court and the finding of the jury. Reported cases of undoubted authority 
 may be referred to which support that proposition ; and yet it is believed to
 
 §292 DAMAGES 271 
 
 be good law that the rule cannot be applied without qualification, where the 
 patented improvement has been used only to a limited extent and for a short 
 time that in such a case the jury should find less than the amount of the 
 license fee • and it is admitted in several cases that the circumstances may 
 be such that the finding should be larger than the royalty. — Birdsall v. 
 Coolidge, 93 U. S. 64: 23 L. Ed. 802. 
 
 Seymour v. McCormick, 16 How. 490; Livingston v. Woodworth, 15 How. 
 560; Dean v. Mason, 20 How. 203; Curtis Pat. 459. 
 
 The inventor may indeed prohibit the use, or exact a license fee for it, and 
 if such license fee has been generally paid, its amount may be taken as a 
 criterion of damages to him when his rights are infringed. In the absence of 
 such criterion, the damages must necessarily be nominal. — Black v. Thome, 
 111 U. S. 122; 28 L. Ed. 372; 4 S. Ct. 326. 
 
 Established license fees are the best measure of damages that can be used. 
 There may be damages beyond this, such as the expense and trouble the 
 plaintiff has been put to by the defendant, and any special inconvenience 
 he has sufi^ered from the wrongful acts of the defendant ; but these are more 
 properly the subject of allowance by the court under the authority given to 
 it to increase the damages. — Clark v. Wooster, 119 U. S. 322; 30 L. Ed. 
 392; 7 S. Ct. 217. 
 
 In an action at law for the infringement of a patent, the plaintiff can 
 recover a verdict for only the actual damages which he has sustained; and 
 the amount of such royalties or license fees as he has been accustomed to re- 
 ceive from third persons for the use of the invention, with interest thereon from 
 the time when they should have been paid by the defendants, is generally, 
 though not always, taken as the measure of his damages; but the court 
 may whenever the circumstances of the case appear to require it, inflict 
 vindictive or punitive' damages by rendering judgement for not more than 
 thrice the amount of the verdict. — Tilghman v. Proctor, 125 U. b. 136; 
 31 L.Ed. 664; 8 S. Ct. 894. 
 
 Seymour v. McCormick, 57 U. S. 480; N. Y. v. Ransom, 64 U. S. 487; Suffolk 
 V Hayden 70 U. S. 315; Philip v. Nock, 84 U. S. 460; Packet Co. v. Sickles, 
 86 U. S. 611; Burdell v. Denig, 92 U. S. 716. 
 
 It is clear that the payment of any sum in settlement of a claim for an 
 alleged infringement cannot be taken as a standard to measure the value of 
 the ^improvements patented, in determining the damages sustained by the 
 owners of the patent in other cases of infringement. IMany considerations 
 other than the value of the improvements may induce the payment in such 
 cases. The avoidance of the risk and expense of litigation will always be a 
 potential motive for settlement. It is undoubtedly true that when there has 
 been such a number of sales by a patentee of licenses to make, use and sell 
 his patents, as to establish a regular price for a license that price may be 
 taken as a measure of damages against infringers. That rule was estab- 
 lished in Seymour v. McCormick, 57 U. S. 480; N. Y. v. Ransom, 64 U. b. 
 487; Packet v. Sickles, 86 U. S. 611 ; Birdsall v. CooHdge, 93 U. S. 64; Root 
 V. Railway, 105 U. S. 189. Sales of licenses made at periods years apart, will 
 not establish any rule on the subject and determine the value of the patent. 
 Like sales of ordinary goods, they must be common, that is, of frequent 
 occurrence, to establish such a market price for the article that it may be 
 assumed to express, with reference to all similar articles, the;r salable value 
 at the place designated. In order that a royalty may be accepted as a measure 
 of damages against an infringer, who is a stranger to the license establishing 
 it, it must be paid or secured before the infringement complained of; it must
 
 272 THE FIXED LAW OF PATENTS §293 
 
 be paid by such a number of persons as to indicate a general acquiescence in 
 its reasonableness by those who have occasion to use the invention; and 
 it must be uniform at the places where the licenses are issued. — Rude v. 
 Westcott, 130 U. S. 152; 32 L. Ed. 888; 9 S. Ct. 403. 
 
 A license fee, when established and agreed to by the public, is only a measure 
 of estimating the market value of a patented machine or device of which 
 the patentee has been deprived by infringement. — Hunt v. Cassidy, 53 
 Fed. 257; 3 C. C. A. 525. 
 
 Seymour v. McCormick, 16 How. 480; Packet Co. v. Sickles, 19 Wall. 617; 
 Rude V. Westcott, 130 U. S. 152. 
 
 The proof of a license fee for two improvements is not competent to show 
 the damages sustained by an infringement of one of these improvements. 
 And suit having been brought on only one patent and no proof having been 
 offered to apportion or segregate the profits due to each, nominal damages 
 only can be recovered. — Hunt v. Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 Philip V. Nock, 17 Wall. 460; Seymour v. McCormick, 16 How. 480. 
 
 It appears from the evidence that at the time of infringement, there was 
 an established license fee for the use of the apparatus such as that employed 
 by the defendant, and that it amounted on the proper basis of computation, 
 to $687.50. This sum with interest is the measure of damages which the 
 complainants are entitled to recover. — McNeely ?;. WiUiames, 96 Fed. 978; 
 37 C. C. A. 641. 
 
 The proof of damages consisted of licenses granted to a large proportion 
 of the leading manufacturers on which royalties substantially uniform were 
 agreed to be paid, and it was upon the basis of such royalties that the master 
 reckoned the damages. These licenses were made after this suit was begun and 
 while it was pending contemporaneously with the running of these licenses 
 and the pending of this suit, the defendant was continuing the infringement. 
 The licenses recited the pending of the litigation over the patent, and stipu- 
 lated that, if it should be adjudged invalid, the royalties should cease or be 
 remitted. The licensees were all substantial parties. In the present case, 
 so far as we can see there is no room for suspecting collusion. Nor can we 
 perceive any reason why the evidence in such a case should be hedged about 
 with suspicions and artificial limitations not felt or imposed in dealing with 
 business transactions generally. — Mast v. Superior, 154 Fed. 45; 83 C. C. 
 A. 157. 
 
 § 293. Measure — Nominal. 
 
 It does not always follow that because a party may have made an im- 
 provement in a machine and obtained a patent for it, another using the 
 improvement and infringing upon the patentee's rights will be mulcted in 
 more than nominal damages for the infringement. If other methods in 
 common use produce the same results, with equal facility and cost, the use 
 of the patented invention cannot add to the gains of the infringer, or im- 
 pair the just rewards of the inventor. — Black v. Thorne, 111 U. S. 122; 
 28 L. Ed. 372; 4 S. Ct. 326. 
 
 Where plaintiff claims profits of defendant where infringement does not 
 cover entire machine only nominal damages can be had in absence of segrega- 
 tion. — Keystone v. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295. 
 
 The court below charged the jury as follows: " Your verdict in this case 
 can be only for the damages which he (the plaintiff) has sustained by the
 
 §§ 294-295 DAMAGES 273 
 
 alleged use of his patent by the defendant during the six years prior to the 
 date of his writ. There being no evidence that the patent was of any value 
 to him during this time or that the use of it by the defendant during the 
 6 years was any injury to him, or that he paid anything for the patent, you 
 can find only nominal damages, if any, in this case." Under these circum- 
 stances, the court should have expressly directed the jury that it should not 
 return a verdict for more than nominal damages. — Boston v. Allen, 91 Fed. 
 248; 33C. C. A. 485. 
 
 Suffolk V. Hayden, 3 Wall. 315; Coupe v. Royer, 155 U. S. 565 (overruling 
 Suffolk V. Hayden); Black v. Thorn, 111 U. S. 122; Seattle v. McNamara, 81 
 Fed. 863. 
 
 § 294. Measure — Royalty. 
 
 Where the plaintiff has sought his profit in the form of a royalty paid 
 by his licensees, and there are no pecuUar circumstances in the case, the 
 amount to be recovered will be regulated by that standard. — Philip v. 
 Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 Evidence of an established royalty will undoubtedly furnish the true 
 measure of damages in an action at law when the wilful acts consist in making 
 and selling the patented improvement, or in the extensive and protracted use 
 of the same, without palliation or excuse ; but when the use is a limited one 
 and for a brief period it is error to apply the rule arbitrarily and without any 
 qualification. — Birdsall v. Coohdge, 93 U. S. 64; 23 L. Ed. 802. 
 
 Packet V. Sickles, 19 Wall. 617; BurdeU v. Denig, 92 U. S. 716; Suffolk v. 
 Hayden, 3 Wall. 320. 
 
 Where damages cannot be assessed upon the basis of a royalty, nor on that 
 of lost sales, nor on that of hurtful competition, the proper method of assess- 
 ing them is to ascertain what would have been a reasonable royalty. — Hunt 
 V. Cassidy, 64 Fed. 585; 3 C. C. A. 525. 
 
 Quoting Rob. Pat. Sec. .563. 
 
 (The application of the rule in this case seems to me wholly beyond the rule. 
 The only direct testimony of the royalty value was the opinion of the plaintiff. 
 If this is not allowing a plaintiff to assess his own damages under cover of 
 another name, then it would be hard to tell what would be.) 
 
 In the instant case, although three sales were sworn to, the price in only 
 two is given, and one of these was a sale made before the reissue of the patent. 
 All were more than ten years before the infringement alleged in this case, and, 
 during these ten years, although the appliance was on the market not a 
 single sale or license fee is shown. It cannot be seriously contended that the 
 sales referred to estabhsh the market value of the patent. From this state 
 of the case, it is clear that the court erred in refusing to charge the jury to 
 find nominal damages only. — Houston v. Stern, 74 Fed. 636 ; 20 C. C. A. 636. 
 
 Coupe V. Royer, 155 U. S. 565; Rude v. Westcott, 130 U. S. 152. 
 
 § 295. Measure — Speculative. 
 
 In the present case, the master found that the plaintiffs' profit on their 
 carpets was a certain percentage, and assumed or presumed that the de- 
 fendants' carpets, which were far inferior in quality as well as in market value, 
 displaced those of plaintiffs to the extent of the sales by the defendants, and 
 held that the entire profit which the plaintiffs would have received, at such 
 percentage, from the sale of an equal quantity of their own carpets of the 
 same pattern, was the proper measure of their damages. The defendants' 
 carpets were so inferior in quality that they sold them at a much less price
 
 274 THE FIXED LAW OF PATENTS §296 
 
 than the plaintiffs got for their carpets, and even at those prices the defend- 
 ants made no profits. Under these circumstances there can be no presump- 
 tion that the plaintiffs would have sold their better quality of carpets in 
 place of the defendants' poorer quality, if the latter had not existed, or that 
 the pattern would have induced the purchasers from the defendants to give 
 to the plaintiffs the higher price. On the contrary, the presumption is at 
 least equal that the cheaper price, and not the pattern, sold the defendants' 
 carpets. There was no satisfactory testimony that those who bought the 
 cheap carpets from the defendants would have bought the higher priced 
 goods from the plaintiffs, or that the design added anything to the defendants' 
 price or promoted their sale of the particular carpets; and none to show what 
 part of the defendants' price was to be attributed to the design. — Dobson 
 V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946. 
 
 Opinions not founded on knowledge are of no value. Conclusions from 
 such opinions are at best mere guesses. By the decision rendered a settled 
 rule of law was violated, that actual, not speculative damages must be shown, 
 and by clear and definite proof, to warrant a recovery for the infringement of 
 a patent. As was said long ago by this court; actual damages must be 
 calculated, not imagined; and an arithmetical calculation cannot be made 
 without certain data on which to make it. — Rude v. Westcott, 130 U. S. 
 152; 32 L. Ed. 888; 9 S. Ct. 463. 
 
 N. Y. V. Ransom, 64 U. S. 487. 
 
 In view of this record, it might be possible to make some vague guess, 
 as many of the witnesses have, as to how much faster some one appliance 
 would work than another, under favorable circumstances ; but there seems to 
 be absolutely no proof which would warrant the court in finding that by the 
 use of the infringing nets, defendant saved any specific number of hours out 
 of the time it would have taken to do the work with one or other of the 
 cargo-hoisting appliances available to defendant. The testimony falls far 
 short of the reUable and tangible proof which is required to establish profits. 
 — Hohorst V. Hamburg-American, 91 Fed. 655; 34 C. C. A. 39. 
 
 The parties agreed upon a guess as to the number of machines made and 
 sold and on this guess the amount of damages was estimated. If the Supreme 
 Court had not found plenty of reasons for reversing this decision upon other 
 grounds (192 U. S. 265) there is Uttle question but that it would have been 
 reversed on the question of damages. — Singer v. Cramer, 109 Fed. 652; 
 48 C. C. A. 588. Reversed, 192 U. S. 265. 
 
 Counsel for the defendant says, " the law requires that the two things to be 
 compared must be adequate to produce an equally beneficial result." This 
 proposition seems to have been borrowed from cases where the circumstances 
 were such as to make such a comparison possible. It has no application to 
 a case like this. There was no such thing to compare with and the rule above 
 stated, to be applicable to such a case as this, must be modified to suit the 
 different circumstances. — Mast v. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 Suffolk V. Hayden, 3 WaU. 315; Cawood Pat. 94 U. S. 695; Sessions v. Ro- 
 madka, 145 U. S. 29. 
 
 § 296. Measure — Miscellaneous. 
 
 These sales (of the attachment alone) furnish a much better measure of 
 profits than a ratable proportion on the entire machine. It may fairly be 
 presumed from them that the profits on the sale of the machine, with the 
 improvement attached, were increased by the infringing device quite as 
 much as was the profit on the improvement sold separately. It does not
 
 §§297-298 DAMAGES 275 
 
 appear at what profit, if any, the machines could have been sold without the 
 improvement. — Mason v. Graham, 90 U. S. 261 ; 23 L. Ed. 86. 
 
 As the infringement of a combination is in the use of the combination and 
 not its elements, so profits or damages for such infringement depend upon the 
 combination and not the elements. — Ehzabeth v. American, 97 U. b. 12b; 
 24 L. Ed. 1000. 
 
 For history of doctrine of damages, see Root v. Ry., 105 U. S. 189; 26 
 L. Ed. 975. 
 
 If made by such infringement they can hardly be set up against the com- 
 plainant to reduce the amount of profits made by the defendants. At all events, 
 since the defendants chose to make their own folded strips in their own 
 factory, instead of going outside to purchase them, or have them made by 
 others they cannot justly complain of their being accountable for the profits 
 realized in using the complainant's machine for that purpose. — Thompson v. 
 Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 § 297. Proof of. 
 
 The plaintiffs have furnished no data to estimate actual damage, and 
 therefore, in no aspect of the case can they recover more than nominal 
 damages. — Mayor v. Ransom, 64 U. S. 487; 16 L. Ed. 515. 
 
 The plaintiff must show his damages by evidence. They must not be left 
 to conjecture by the jury. They must be proved, and not guessed at. — 
 Philip V. Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 No license fee charged by complainant is shown. The burden of proof rests 
 upon him. Damages must be proved ; they are not to be presumed. — Rob- 
 ertson V. Blake, 94 U. S. 728; 24 L. Ed. 245. 
 
 Having failed to prove by reliable and tangible evidence that the entire 
 value of the infringing de\'ice as a marketable article, was properly and 
 legally attributable to his patented feature, the court cannot indulge in con- 
 jecture or speculation in order to give him the entire profits made by the 
 defendants. — Mosher v. Joyce, 51 Fed. 441 ; 2 C. C. A. 322. 
 
 The burden of proof of damages is upon the plaintiff. — Hunt v. Cassidy, 
 53 Fed. 257 ; 3 C. C. A. 525. 
 
 Garretson v. Clark, 111 U. S. 120; Blake v. Robertson, 94 U. S. 728. 
 
 The defendant below insisted that the damages recoverable must be actual, 
 and that proof as to sales to other parties or of an established license fee as 
 royalty, was inadmissible. The trial judge overruled the objection, and, 
 we think, rightly, admitted evidence of sales made and license tees 
 collected. — Houston v. Stern, 74 Fed. 636: 20 C. C. A. 636. 
 
 § 298. Segregation. 
 
 If the measure of damages be the same whether a patent be for an entire 
 machine, or for some improvement in some part of it, then it follows that each 
 one who has patented an improvement in any portion of a machine may 
 recover the whole profits arising from the skill, labor, material and capital 
 employed in making the whole machine, and the unfortunate mechanic 
 may be compelled to pay treble his whole profits to each of a dozen or more 
 several inventors of some small improvement m the machine he has built.
 
 276 THE FIXED LAW OF PATENTS §298 
 
 By this doctrine even the smallest part is made equal to the whole, and 
 " actual damages " to the plaintiff may be converted into an unlimited series 
 of penalties on the defendant. — Seymour v. McCormick, 16 How. 480; 14 L. 
 Ed. 1024. 
 
 One who invents some improvement in the machinery of a mill could not 
 claim that the profits of the whole mill should be the measure of damages for 
 the use of his improvement. And when the profit of the patentee consists 
 neither in the exclusive use of the thing invented or discovered nor in the 
 monopoly of making it for others to use, it is evident that the rule could not 
 apply. — Seymour v. McCormick, 16 How. 480; 14 L. Ed. 1024. 
 
 It is true of a process invented as an improvement in a manufacture, as it 
 is of an improvement in a machine, that an infringer is not liable to the 
 extent of his entire profits in the manufacture. — Mowry v. Whitney, 81 
 U.S. 620; 20L. Ed. 860. 
 
 Jones V. Morehead, 1 Wall. 155; Seymour v. McCormick, 16 How. 480. 
 
 Where the infringement is confined to a part of the thing sold, the recovery 
 must be limited accordingly. It cannot be as if the entire thing were covered 
 by the patent; or, where that is the case, as if the infringement were as large 
 as the monopoly. — Philip v. Nock, 84 U. S. 460; 21 L. Ed. 679. 
 
 Where segregation is necessary and is not made, only nominal damages will 
 be allowed. — Robertson v. Blake, 94 U. S. 728 ; 24 L. Ed. 245. 
 
 It does not necessarily follow from this rule (the rule in Mowry v. Whitney) 
 that where the patent is for one of the constituent parts and not for the whole 
 machine, the profits are to be confined to what can be made by the manu- 
 ■ facture and sale of the patented part separately. If, without improvement, 
 a machine adapted to the same uses can be made, which will be valuable in 
 the market and salable, then as was further said in Mowry v. Whitney, the 
 inquiry is, " what was the advantage in cost, in skill required, in convenience 
 of operation or marketability " gained by the use of the patented improve- 
 ment. If the improvement is required to adapt the machine to a particular 
 use, and there is no other way open to the public of supplying the demand 
 for that use, then it is clear the infringer has by his infringement secured the 
 advantage of a market 'he would not otherwise have had, and that the 
 fruits of his advantage are the entire profits he has made in that market. 
 Such, we think, is the case. — Goulds v. Cowing, 105 U. S. 253; 26 L. Ed. 
 987. 
 
 It is incumbent upon the complainant to separate the profits arising from 
 the saving to defendant by using the patented device from other savings or 
 profits. — Black v. Thorne, 111 U. S. 122; 28 L. Ed. 372; 4 S. Ct. 326. 
 
 It is provided by sec. 4921 of the R. S. that, in a suit in equity for the 
 infringement of a patent, the plaintiff may, on a decree in his favor, recover 
 the damages he has sustained, in addition to the profits to be accounted for 
 by the defendant, such damages to be assessed by the court, or under its 
 direction, and with the same power to increase the damages, in the discretion 
 of the court, as in the case of verdicts; and the damages intended are " the 
 actual damages sustained " in the language of sec. 4919. Root v. R. Co. 
 105 U. S. 189. By sec. 4933 all these provisions apply to patents for designs. 
 
 This court has, in a series of decisions, laid down rules as to what are to be 
 regarded as " profits to be accounted for by the defendant," and what as 
 " actual damages " in suits for the infringement of patents; and no rule has
 
 §298 DAMAGES 277 
 
 been sanctioned which will allow, in the case of a patent for a design for 
 ornamental figures created in the weaving of a carpet, or imprinted on it, 
 the entire profit from the manufacture and sale of the carpet, as profits or 
 damages, including all the profits from carding, spinning and weaving, thus 
 regarding the entire profits as due to the figure or pattern, unless it is shown 
 by reliable evidence that the entire profit is due to the figure or pattern. It 
 is matter of common knowledge that there is an infinite variety of patterns 
 in carpets, and that, between two carpets of equal cost to make and equal 
 merit as to durability of fabric and fastness of color, each with a pattern 
 pleasing to the taste, one having a design free to be used and the other a 
 design protected by a patent, the latter may or may not command in the 
 market a price larger than the former. If it does, then the increased price 
 may be fairly attributed to the design, and there is a sohd basis of evidence 
 for profits or damages. But, short of this, under the rules established by 
 this court, there is no such basis. The same principle is applicable as in 
 patents for inventions. The burden is upon the plaintiff, and if he fails to 
 give the necessary evidence, but resorts, instead, to inference and conjecture 
 and speculation, he must fail for want of proof. There is another suggestion 
 of great force. The carpet with the infringing design may be made on an 
 infringing loom, and various infringing processes or mechanisms for carding, 
 spinning and dyeing may be used in making it, and if the entire profit in 
 making and selling it is necessarily to be attributed to the pattern, so it may 
 as well, on principle, be attributed to each of the other infringements, and a 
 defendant might be called on to respond many times over for the same 
 amount. There is but one safe rule — to require the actual damages or profits 
 to be established by trustworthy legal proof. — Dobson v. Hartford, 114 
 U. S. 439; 29 L. Ed. 177; 5 S. Ct. 945. 
 
 Livingston v. Woodworth, 15 How. 546; Seymour v. McCormick, 16 How. 
 480; Mayor v. Ransom, 23 How. 487; Mowry v. Whitney, 14 Wall. 620; Philin 
 V. Nock, 17 WaU. 460: Littlefield v. Perry, 21 Wall. 205; BirdsaU v. Coolidge, 
 93 U. S. 64; Cavvood Pat. 94 U. S. 695; Blake v. Robertson, 94.U. S. 728; Gar- 
 retson v. Clark, 111 U. S. 120; Black v. Thorne, 111 U. S. 122. Distinguishing 
 Mfg. Co. V. Cowing, 105 U. S. 253. 
 
 The plaintiff must show what profit or damages are attributable to the use 
 of the infringing design. — Dobson v. Dornan, 118 U. S. 10; 30 L. Ed. 63; 
 6 S. Ct. 946. 
 
 Dobson V. Hartford, 114 U. S. 439. 
 
 Where patent covers only a part or an improvement upon a general machine 
 profits must be segregated. — McCreary v. Pennsylvania, 141 U. S. 459; 
 35L. Ed. 817; 12 S. Ct. 40. 
 
 Seymour v. McCormick, 57 U. S. 480; Mowry v. Whitney, 81 U. S. 620; Little- 
 field V. Perrv, 88 U. S. 205; Elizabeth v. Nicholson, 97 U. S. 126; Garretson v. 
 Clark, 111 U. S. 120. 
 
 Necessary to the recovery of more than nominal damages. — Keystone 
 V. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295. 
 Garretson v. Clark, 111 U. S. 120. 
 
 The rule requiring that profits arising from the patented features must be 
 separated from those arising from the unpatented features has little applica- 
 tion in a case where every feature is patented. — Warren v. Keep, 155 U. S. 
 265; 39 L. Ed. 144; 15 S. Ct. 83. 
 
 It is, no doubt, well settled that where a patent is for a particular part of 
 an existing machine, it is not sufficient to ascertain the profits on the whole
 
 278 THE FIXED LAW CF PATENTS § 298 
 
 machine, but it must be shown what portion of the profits is due to the par- 
 ticular invention secured by the patent in suit. But it is equally true that, when 
 the patented invention is for a new article of manufacture, which is sold 
 separately, the patentee is entitled to damages arising from the manufacture 
 and sale of the entire article. — Warren v. Keep, 155 U. S. 265; 39 L. Ed. 
 144; 15 S. Ct. 83. 
 
 Robertson v. Blake, 94 U. S. 728; Dobson v. Hartford, 114 U. S. 439; Goulds 
 V. Cowing, 105 U. S. 258; Hurlbut v. SchiUinger, 130 U. S. 456; Crosby v. 
 Consolidated, 141 U. S. 441. 
 
 Rule of Garretson v. Clark cited and applied. — Mosher v. Joyce, 51 Fed. 
 441; 2C. C. A. 322. 
 
 Dobson V. Carpet Co. 114 U. S. 444. 
 
 The authorities are full upon the point that a party cannot recover on 
 damages the profits to be derived from the manufacture of the whole of a 
 machine, when only a portion of the same contains a patented feature. — 
 Hunt V. Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 Garretson v. Clark, 111 U. S. 120; Dobson v. Carpet Co. 114 U. S. 440; Philip 
 V. Nock, 17 WaU. 460. 
 
 It would be impossible in the case of a patent such as this to introduce 
 testimony to separate the value of the patented from the unpatented parts. 
 The plaintiffs' invention practically introduced a new cart, — a cart for which 
 a demand at once arose. There is no evidence that at any time carts were 
 constructed after the manner of the plaintiff's but with the patented feature 
 omitted. There would be no demand for such a cart. It was impossible, 
 therefore, to compare the value of the patented cart with a cart which did 
 not contain the invention. There was in the case the admission of the 
 defendants that they had constructed 150 carts in 1893. The testimony of 
 the plaintiffs was that, by reason of the competition of infringers, the price 
 of their cart, which was originally $35, had been reduced to $22.50. The 
 measure of their damages was their entire loss. — Holmes v. Truman, 67 
 Fed. 542; 14 C. C. A. 517. 
 
 Fitch V. Bragg, 16 Fed. 243; Mfg. Co. v. Sargent, 117 U. S. 536. 
 
 The defendants insist, however, that they made additions which materially 
 benefited the machines, and increased their effective power. If this is true, 
 although they took the whole of the vital and effective part of the invention, 
 but superadded and annexed an improvement which contributed to the 
 saving which they obtained, they have a right to an apportionment, the 
 burden being upon them to show th t a portion of the profits was the result 
 of the improvement which they nexed. — Tuttle v. Claflin, 76 Fed. 227 ; 
 22 C. C. A. 138. 
 
 Elizabeth v. Pavement, 97 U. S. 126: Crosby v. ConsoHdated, 141 U. S. 441. 
 
 The general rule is clear that in an 'Ccov.nting of profits derived from 
 the infringement of a patent le plaintiff has the burden of proof, and the 
 infringer is chargeable o"ly with the actuai gains and advantages derived 
 from the use of the inveixtion. — Elgin v. Nichols, 105 Fed. 780; 45 C. C. A. 
 49. 
 
 Garretson v. Clark, 111 U. S. 120; Dobson r. Carpet Co., 114 U. S. 439; City v. 
 American, 97 U. S. 126. 
 
 But it does not follow that, because the only part of the machine sold 
 covered by this claim is the barred cy Under, the patentees' recovery of
 
 § 298 DAMAGES 279 
 
 profits is to be confined to what can be made by making and sale of this 
 cylinder only. — Penfield v. Potts, 126 Fed. 475; 61 C. C. A. 371. 
 
 Garretson v. Clark, 111 U. S. 120; Reed v. Lawrence, 29 Fed. 915; Mosher v. 
 Joyce, 51 Fed. 441; Manufacturing Co. v. Cowing, 105 U. S. 253; Crosby v. Con- 
 solidated, 141 U. S. 454. 
 
 Here is the rock on which many patent causes have been stranded at the 
 end of their course, for, though it can sometimes be done, it is generally next 
 to impossible to distinguish the profits due to one rather than another of the 
 characteristics of the article sold, or manufactured to be sold. The price is 
 single, and it would rarely happen that either the buyer or the seller would 
 contemplate the price as made up of components grounded on such a dis- 
 tinction. The facts are similar to those which in other cases would condemn 
 the guilty party to suffer the consequences of his minghng indistinguishably 
 the property of an innocent party with his own or that of another. Counsel 
 for defendant has argued this question upon the theory that the rule laid down 
 in the case of Elizabeth v. Pavement Co. was an exception to that stated in 
 Garretson v. Clark, and seems to suppose that, in every case where some ele- 
 ment or elements of a combination found in a former patent is found also 
 in the infringing article, the burden is cast upon the plaintiff to prove either 
 that it did not affect the seUing price of the article, or, if it did, to show what 
 part of the price was due to his own invention. But such a rule would be 
 inconsistent with the decision in EHzabeth v. Pavement Co. We think the 
 two cases above mentioned are not inconsistent ; but that they are easily recon- 
 ciled upon the assumption that the rule of the first case is applicable to the 
 question of the burden of proof of showing the presence of the extraneous 
 element and the probabihty that it has affected the price, and that the rule 
 of the second case relates to the burden of proof after these facts are estab- 
 lished. Thus in the later case of Keystone v. Adams, 151 U. S. 145, in sum- 
 ming up the conclusions reached thereon, one was stated to be, " that when 
 the infringed device was a portion only of defendant's machine, which em- 
 braced inventions covered by patents other than that for the infringement of 
 which the suit was brought, in the absence of proof to show how much of 
 that profit was due to such other patents, and how much was a manufacturer's 
 profit, the complainant is entitled to nominal damages only," from which 
 it seems that the conditions stated must have been made to appear before 
 the rule stated could be applied. — Cauda v. Michigan, 152 Fed. 178; 81 
 C. C. A. 420. 
 
 That the conduct of the infringer may require a modification of this rule 
 see Mast v. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 It is contended that the master should have made some apportionment in 
 his estimate of profits to other features of merit in the devices sold by the 
 defendant. No doubt if the defendant could have satisfied the master that 
 there were some other special features of merit not common to grain drills, 
 which contributed to the profits, it would have been his duty to make an 
 apportionment, and award to the Peckham patent only such part of the 
 profits as the proof would justify; but there was no factor brought forward 
 which was entitled to share in the profits the master was inquiring about. 
 The burden was on the defendant to prove that there existed such a factor. 
 
 — Mast V. Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 Canda v. Michigan, 152 Fed. 178; Elizabeth v. Pavement Co. 97 U. S. 126; 
 Sayer v. Scott, 55 Fed. 971; Tuttle v. Claflin, 76 Fed. 227. 
 Note: Many of the leading cases on this subject will be found under Profits 
 
 — Segregation.
 
 280 THE FIXED LAW OF PATENTS §§ 299-300 
 
 § 299. Miscellaneous Rulings. 
 
 The transfer of title to patent in suit pendente lite does not affect the right 
 to past damages. — Dean v. Mason, 61 U. S. 198; 15 L. Ed. 876. 
 
 Counsel fees cannot be included in the verdict. — Philip v. Nock, 84 U. S. 
 460; 21 L. Ed. 679. 
 
 When a suit in equity has been brought and prosecuted in the name of the 
 patentee alone, with the licensee's consent and concurrence, to final judgement, 
 from which, if for too small a sum, an appeal might have been taken in the 
 name of the patentee, we should hesitate to say that the licensee, merely 
 because he was not a formal plaintiff in that suit, could bring a new suit to 
 recover damages against the same defendant for the same infringement. — 
 Birdsall v. Shahol, 112 U. S. 485; 28 L. Ed. 768; 5 S. Ct. 244. 
 
 Proof of what other manufacturers have realized not a measure of damages. 
 
 — Keystone v. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295. 
 
 The fact that a competing article could be made and sold at an equal profit 
 does not affect the damages. — Warren v. Keep, 155 U. S. 265; 39 L. Ed. 
 144; 15 S. Ct. 83. 
 
 It has been often repeated that a patentee has three distinctive rights, — 
 the right to make, the right to sell, and the right to use his patented articles, 
 
 — and that whoever invades any one of these rights is an infringer, and 
 liable for damages. — Philadelphia v. Edison, 65 Fed. 551; 13 C. C. A. 40. 
 
 Since Birdsall v. Shaliol, 112 U. S. 485, the law has been settled that the 
 recovery of damages from a defendant, for manufacturing and selling, will 
 not prevent the recovery of other substantial damages from the defendant's 
 vendees; for their profits upon reselling the patented articles. — Philadelphia 
 V. Edison, 65 Fed. 551 ; 13 C. C. A. 40. 
 
 Kelley v. Mfg. Co. 44 Fed. 19; Tuttle v. Matthews, 28 Fed. 98. 
 
 The second patent is only for an attachment, which doubtless may be 
 usefully employed, especially in power mills, but if left off or removed no 
 equivalent in its i^lace is imperative. There can, therefore, be no good reason 
 for supposing that the profits derived from the manufacture and sale of the 
 mills in which that device was employed were all due to its use. — Elgin v. 
 Nichols, 105 Fed. 780; 45 C. C. A. 49. 
 
 Neither is there any doubt, since the Act July 8, 1870, R. S. 4921, but that, 
 where the injury resulting from an infringement shall be greater than the 
 gains and profits made by the infringer, the patentee, in addition to the 
 profits to be accounted for, is entitled to recover the damages he has sus- 
 tained. — Kisinger-Ison V. Bradford, 123 Fed. 91; 59 C. C. A. 221. 
 
 Root V. Railway, 105 U. S. 189; Coupe v. Royer, 155 U. S. 565. 
 
 DEATH OF APPLICANT. 
 
 Miscellaneous Rulings § 300 {see § 38) 
 
 § 300. Miscellaneous Rulings. 
 
 Power of attorney — right to amend, see Eagleton v. West, 111 U. S. 490; 
 28 L. Ed. 493; 4 S. Ct. 593. 
 
 Distinguished, De La Vergne v. Featherstone, 147 U. S. 209.
 
 §§ 301-303 
 
 DECREES 
 
 281 
 
 Executor or administrator, powers of defined in De La Vergne v. Feather- 
 stone, 147 U. S. 209; 37 L. Ed. 138; 13 S. Ct. 283. 
 
 Amendment after death of applicant made within the scope of the original 
 application without new oath or new power of attorney does not void patent. 
 — De La Vergne v. Featherstone, 147 U. S. 209; 37 L. Ed. 138; 13 S. Ct. 
 283. 
 
 Distinguishing, Eagleton v. West, 111 U. S. 490. 
 
 Does not void patent issued subsequent to his death for which he made 
 application. — De La Vergne v. Featherstone, 147 U. S. 209; 37 L. Ed. 
 138; 13 S. Ct. 283. 
 
 DECREES. 
 
 General Statement § 301 
 Appellate Power Over § 302 
 Classes § 303 
 Interlocutory § 304 
 
 Miscellaneous § 305 
 
 See — Adjudication § 24; Appeals 
 
 §§ 116-21; Injunction § 533 
 
 § 301. General Statement. 
 
 Since this work deals with pleading, practice and procedure only with 
 reference to matters peculiar to patent causes, such topics and titles as the 
 above will be found fragmentary and unsatisfactory as determining any 
 question arising thereunder. It is always presumed that the practitioner has 
 at hand the standard authorities on pleading, practice and procedure, and that 
 what is here given on such subjects is limited to the special ruhngs in patent 
 causes. 
 
 § 302. Appellate Power Over. 
 
 The general rule that a court of review may, whether the adjudication 
 appealed from be interlocutory or final, direct the court of original jurisdic- 
 tion to enter whatever decree ought to have been entered in the first instance, 
 as in LeGuen v. Gouverneur, 1 Johns, Cas. 436 ; Richmond v. Atwood, 52 Fed. 
 10; Bissell v. Goshen, 72 Fed. 545; and Green v. Mills, 69 Fed. 852, the 
 opinion in the last named case being by Chief Justice Fuller, — need not be 
 dwelt on. — Standard v. Crane, 76 Fed. 767; 22 C. C. A. 549. 
 
 An appellate tribunal cannot change the nature of a decree ; it cannot make 
 an interlocutory decree final. — Standard v. Crane, 76 Fed. 767; 22 C. C. 
 A. 549. 
 
 Disapproving, Bissell v. Goshen, 72 Fed. 545. 
 
 § 303- Classes. 
 
 The single division of decrees into two classes, and two only, interlocutory 
 and final, has been generally accepted by lawyers and judges in this country 
 and England. — Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 " Decrees are of two kinds, interlocutory and final. An interlocutory 
 decree is properly a decree pronounced for the purpose of ascertaining 
 matter of law or fact preparatory to a final decree." — Richmond v. Atwood, 
 52 Fed. 10; 2 C. C. A. 596. 
 
 A preliminary injunction had been granted and no appeal taken. Claim 
 1 was held invahd at circuit on proofs taken. On motion to dismiss cross-
 
 282 THE FIXED LAW OF PATENTS §§ 304-305 
 
 appeal, Held: Here defendants present a complete record. They do not 
 attack merely the injunction respecting the second patent, and that on the 
 ground that it was temporary and improvidently granted; but they contend 
 that, as to the five claims of the two patents held valid, the ultimate merits 
 of the questions of validity and infringement are in their favor. If we were 
 not authorized now to consider and decide the merits with respect to claim 1 
 of the first patent, which was included in the pleadings and proofs and held 
 invalid, the result would be that the Circuit Court would proceed with the 
 accounting on a basis that does not accord with our views of the ultimate 
 merits, and a new accounting would have to be taken after a subsequent 
 appeal to this court. Motion overruled. — Chicago v. Miller, 133 Fed. 541 ; 
 66 C. C. A. 517. 
 
 § 304. Interlocutory. 
 
 Decree finding certain claims invalid, certain claims valid and infringed, 
 and ordering an injunction. 
 
 The decree entered by the circuit court was interlocutory, and not final. 
 — Ex parte National, 201 U. S. 156; 26 S. Ct. 404. 
 
 Barnard v. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106; Esty 
 V. Burdette, 109 U. S. 633; McGourky v. Toledo, 146 U. S. 536; Hohorst v. 
 Hamburg-American, 148 U. S. 262; Smith v. Vulcan, 165 U. S. 518. 
 
 It will be observed, from an examination of the cases in the Supreme 
 Court of the United States, that a decree in patent cases, declaring the patent 
 in question valid, and that it has been infringed, and for an injunction and an 
 accounting, has uniformly been referred to as an interlocutory decree. — 
 Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 Barnard v. Gibson, 7 How. 650; Forgay v. Conrad, 6 How. 201; Humiston v. 
 Stainthorp, 2 Wall. 106; Railroad v. Soutter, 2 Wall. 510; Beebe v. Russell, 19 
 How. 283; Iron Co. v. Martin, 132 U. S. 91. 
 
 The Supreme Court has held a decree in a patent case, declaring the patent 
 valid and infringed, and for an injunction and accounting, interlocutory. — 
 Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 Barnard v. Gibson, 7 How. 650, Forgay v. Conrad, 6 How. 201; Humiston v. 
 Stainthorp, 2 Wall. 106; Railroad v. Soutter, 2 Wall. 510; Beebe v. Russell, 
 19 How. 283; Iron Co. v. Martin, 132 U. S. 91. 
 
 § 305. Miscellaneous. 
 
 A decree by consent for injunction and accounting does not preclude 
 defendant from objection or exception to proceedings subsequent to the 
 decree. — Livingston v. Woodworth, 15 How. 546; 14 L. Ed. 809. 
 
 The bill we have seen was taken pro confesso, and a decree pro confesso 
 was regularly entered. The defendants are concluded by that decree, so 
 far at least as it is supported by the allegations of the bill, taking the same to 
 be true. Being carefully based on these allegations, and not extending beyond 
 them, it cannot now be questioned by the defendants unless it is shown to be 
 erroneous by other statements contained in the bill itself. A confession of 
 facts properly pleaded dispenses with proof of those facts, and is as effective 
 for the purposes of the suit as if the facts were proved; and a decree pro 
 confesso regards the statements of the bill as confessed. — Thompson v. 
 Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 Keller, Proced. Rom. § 69; Hawkins v. Crook, 2 P. Wons. 556; Davis v. Davis, 
 2 Atk. 21: Williams v. Corwin, Hopk. Ch. 471; 1 Smith Ch.Pr. 153: 1 Dan. 
 Ch. Pr. 696; Ogilvie v. Hearne, 13 Ves. 463; Geary v. Sheridan, 8 Ves. 192; 
 Rose V. Woodruff, 4 Johns. Ch. 547.
 
 § 305 DECREES 283 
 
 The patent in suit contains 18 claims, and the prayers of the bill relate to 
 the patent as a whole. The decree below directed that an injunction issue 
 " according to the prayer of the bill " although only claims 2 and 13 were in 
 issue. It has been many times urged that the public has an incidental 
 interest in patent litigation, which throws a duty on the court to notice certain 
 matters of its own motion. This is one of them; and in a patent cause, a 
 decree should not go which is broader than the findings of the court. Hereto- 
 fore we have been content merely to correct the decree below, but, as the duty 
 of drawing out a proper decree rests on the solicitor for the complainant, 
 we will hereafter endeavor to protect the court by a proper adjustment of 
 costs. As the appellant assigned no error on this account, he is not entitled 
 to costs in this behalf. — Shute v. Morley, 64 Fed. 368; 12 C. C. A. 356. 
 
 When the decree is drawn broader than the findings the complainant can 
 have no costs on appeal. — Blair v. Eastman, 64 Fed. 491 ; 12 C. C. A. 603. 
 Following Shute v. Morley, 64 Fed. 368. 
 
 In connection with the caution which we have heretofore given parties 
 with reference to the proper limiting of decrees and decretal orders, we said 
 in Shute v. Machine Co. 64 Fed. 368, that, when the caution was not there- 
 after regarded, we should endeavor to protect ourselves by a proper adjust- 
 ment of the costs. — Hatch v. Electric, 100 Fed. 975; 41 C. C. A. 133. 
 
 "When a decree is " affirmed with respect to the merits, it will not be 
 reversed upon the question of costs." — SprouU v. Pratt & Whitney, 108 Fed. 
 963; 48C. C. A. 167. 
 
 DuBois V. Kirk, 158 U. S. 58. 
 
 That other defendant has rights. If Bouchat had permitted a decree pro 
 confesso to have been entered against him, and this corporation, which was 
 the original defendant, had answered, and had set up an available defense, 
 such defense would inure to the benefit of both defendants. — American v. 
 Phoenix, 113 Fed. 629; 51 C. C. A. 339. 
 
 Frow V. De La Vega, 15 Wall. 552; Andres v. Lee, 21 N. C. 319; Bates, Fed. 
 Eq. Pro. sec. 327. 
 
 In the preparation of his record, the appellant, although not an attorney, 
 acted as his own counsel. In dismissing the bill for want of equity, but with- 
 out prejudice, the court below e-vinced a recognition of the failure of the 
 appellant to properly conduct his case, and therefore dismissed the bill with- 
 out prejudice to the appellant. — Robinson v. Chicago, 118 Fed. 438; 55 
 C. C. A. 254. 
 
 The fact that the decree did not become final until after the interlocutory 
 decree in this case does not affect it as a bar when presented before the final 
 decree. — Penfield v. Potts, 126 Fed. 475; 61 C. C. A. 371. 
 
 Bradley v. Eagle, 57 Fed. 980. 
 
 No appeal has been taken by the complainant below from the part of the 
 decree holding claim 2 valid, and we must assume that the validity of this 
 broad claim is acquiesced in. — Press v. Westinghouse, 135 Fed. 767 ; 68 
 C. C. A. 469. 
 
 That a final decree may be amended after entry and after the term of such 
 entry, under certain conditions, see Maginn v. Standard, 150 Fed. 139; 
 80 C. C. A. 15.
 
 284 
 
 THE FIXED LAW OF PATENTS 
 
 306-307 
 
 DEFENSES. 
 
 Statutory Provisions § 306 
 
 General Statement § 307 
 
 General 
 
 Invalidity — Acts of Commissioner 
 
 § 308 
 
 Invalidity — Defective Grant or 
 
 Specification § 309 (see § 900) 
 
 Invalidity — Reissue § 310 (see 
 
 §869) 
 
 License or Purchase § 311 
 
 Non-Infringement § 312 (see § 445) 
 
 Non-Patentability § 313 
 
 Non-Utility § 314 
 
 Res Judicata § 315 
 
 Statutory 
 
 Abandonment § 316 (see § 1) 
 Fraud or Misrepresentation in 
 Specification § 317 (see § 900) 
 Fraud or Unfairness as Against 
 
 another Inventor § 318 
 
 Non-Inventorship § 319 
 
 Prior patent or Publication § 320 
 
 (see § 58) 
 
 Prior Public Use or Sale § 321 (see 
 
 §§ 58, 849) 
 Miscellaneous § 322 
 See — Adjudication §§ 31, 33; Aiv- 
 ticipation § 58; Demurrer § 323; 
 Double Patenting § 356; Estoppel § 
 381; Foreign Patent § 419; Infringe- 
 ment §§ 483-4; Judicial Notice § 
 705; Jurisdiction § 713; Laches § 
 726; License § 749; Marking 
 " Patented " § 776; Oath § 779; 
 Pleading and Practice § 788; Public 
 Use § 849; Reissue § 869; Res 
 Judicata § 893; Statute of Liraitations 
 §921; Title §925 
 
 § 306. Statutory Provisions. 
 
 In any action for infringement the defendant may plead the general 
 issue, and, having given notice in writing to the plaintiff or his attorney 
 thirty days before, may prove on trial any one or more of the following 
 special matters: 
 
 First. That for the purpose of deceiving the public the description and 
 specification filed by the patentee in the Patent Office was made to contain 
 less than the whole truth relative to his invention or discovery, or more than 
 is necessary to produce the desired effect; or. 
 
 Second. That he had surreptitiously or unjustly obtained the patent for 
 that which was in fact invented by another, who was using reasonable dili- 
 gence in adapting and perfecting the same; or. 
 
 Third. That it had been patented or described in some printed pubUca- 
 tion prior to his supposed invention or discovery thereof, or more than two 
 years prior to his application for a patent therefor ; 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 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 the 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 defenses may be 
 pleaded in any suit in equity for relief against an alleged infringement ; and 
 proofs of the same may be given upon like notice in the answer of the de- 
 fendant, and with like effect. — R. S. 4920. 
 
 § 307. General Statement. 
 
 The classification of defenses in patent causes, as made by the text-book 
 writers, is chiefly a matter of convenience in treatment of the subject. It is 
 unnecessary for present purposes to do more than to make these two general 
 divisions : statutory defenses specially mentioned in the above classes, and 
 the general defenses available under the general issue. 
 
 The subject of statutory notice will be found under the title of Pleading.
 
 §§ 308-310 DEFENSES 285 
 
 § 308. General — Invalidity — Acts of Commissioner. 
 
 It was not intended then, and is not now, to question the conclusiveness, 
 in suits for infringement of patents, of the decisions of the Commissioner on 
 questions of fact necessary to be ciecided before issuing such patents, except 
 as the statute gives specific defenses in that regard. But the statutory 
 defenses are not the only defenses which may be made against a patent. 
 When it is evident that the Commissioner, under a misconception of the law, 
 has exceeded his authority in granting or reissuing a patent, there is no sound 
 principle to prevent a party sued for its infringement, from availing himself 
 of the illegality, independently of any statutory permission so to do. — Mahn 
 V. Harwood, 112 U. S. 354; 28 L. Ed. 665; 5 S. Ct. 174. 
 
 Stoddard v. Chambers, 2 How. 318; Easton v. Salisbury, 21 How. 426; Richert 
 V Felps 6 Wall. 160; Header v. Norton, 1 Wall. 442; Best v. Polk, 18 Wall. 
 1*12; Morton v. Nebraska, 21 Wall. 660; Newhall v. Sanger, 92 U. S. 761; R. R. 
 V. U. S. 92 U. S. 733; Sherman v. Brick, 93 U. S. 209. 
 
 So far as we know, this is the first time the practical construction of the 
 statute now. called in question has been challenged, and much disturbance 
 of things supposed to rest on solid foundations would ensue if such an objec- 
 tion should be sustained. Whether the practice, if promptly challenged by 
 the government in a direct proceeding to recall a patent would be sanctioned, 
 we have not now to consider. We thinl: the patents ought not to be held 
 void for irregularity, if it be such, at the instance of a private party in a 
 collateral proceeding. — Western v. North, 135 Fed. 79; 67 C. C. A. 553. 
 
 " Where it is evident that the commissioner, under misconception of the 
 law, has exceeded his authority in granting or reissuing a patent, there is no 
 sound principle to prevent a party sued for its infringement from availing 
 himself of the illegality, independently of any statutory permission so to 
 do." — Weston v. Empire, 136 Fed. 599; 69 C. C. A. 329. 
 
 Mahn v. Harwood, 112 U. S. 354; Planing Machine v. Keith, 101 U. S. 479. 
 
 § 309. General — Invalidity — Defective Grant or Specification. 
 
 A claim is false, though not fraudulent, when founded upon an honest 
 mistake ; and, as it must have failed whenever called into question and the 
 facts were made known, it is void, — Hartshorn v. Saginaw, 119 U. S. 664; 
 SOL. Ed. 539; 7 S. Ct. 421. 
 
 We think it may be affirmed as a rule resting upon the fundamental prin- 
 ciples of patent law that, where the essence of the invention is the location, 
 form, size, or any other characteristic of the means employed, the patent 
 must distinctly specify the peculiarities in which his invention is to be 
 found. — American Lava v. Steward, 155 Fed. 731 ; 84 C. C, A, 157. 
 
 Store Co. v. Store Co. 150 Fed. 141; Bullock v. Gen. Elec. 149 Fed. 409. 
 
 Note: This rule is undoubtedly sound, but this is a dangerous case. See 
 same pat. sustained 128 Fed. 599, 
 
 § 310. General — Invalidity — Reissue. 
 
 If the defendant means, by the very vague answer to the bill, to set up and 
 to rely on a fraud by which the commissioner was misled and deceived and 
 induced to reissue the patent, and that the plaintiff or its assignors were the 
 guilty parties, that question cannot be raised in this collateral proceeding, 
 and can only be considered in some direct suit to impeach and set aside the 
 patent, — Eureka v. Bailey, 78 U. S. 488; 20 L. Ed. 209, 
 
 Rubber v. Goodyear, 9 Wall. 788.
 
 286 THE FIXED LAW OF PATENTS §311 
 
 In this very matter of reissued patents it has also been frequently decided 
 that it is a good defense in a suit on such a patent to show that the Conimis- 
 sioner exceeded his authority in granting it. Such a defense is established 
 by showing that the rescinded patent is for a different invention from that 
 described in the original; inasmuch as the statute declares that it must be 
 for the same invention. — Mahn v. Harwood, 112 U. S. 354; 28 L. Ed. 665; 
 5 S. Ct. 174. 
 
 Burr V Duryee, 1 Wall. 531; Gill v. Wells, 22 Wall. 1; Collar v. Van Deusen, 
 23 Wall. 530; Wood Paper Pat. 23 WaU. 566; Leggett v. Avery, 101 U. S. 259; 
 James v. Campbell, 104 U. S. 368. 
 
 §311. General — License or Purchase. 
 
 The defendant cannot justify his act by proving license under other patents. 
 — Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433. 
 Curt. Pat. 350, 353; Carver v. Mfg. Co. 2 Story, 432. 
 
 Defendants were innocent infringers. When they discovered the fact they 
 purchased a legal title to the patent for this territory. Held: That such 
 purchase converted their act into a legal right, and was equivalent to 
 an original lawful purchase or manufacture of the machine. — Eunson v. 
 Dodge, 85 U. S. 414; 21 L. Ed. 766. 
 
 That part of the defendant's affidavit which asserts that a certain named 
 •patentee has served the defendant with notice of a claim for damages for 
 infringement of letters patent by the defendant's use of the machinery and 
 appliances furnished to it by the plaintiff, and that by such use the defendant 
 is also liable to another patentee, affords no ground of defense to this action. 
 A purchaser of property who has had the full use and enjoyment of the same, 
 and is in the undisturbed possession thereof in the absence of fraud, cannot 
 withhold the purchase price because a third person claims to have a superior 
 title thereto, or an adverse right therein, and threatens to bring suit to enforce 
 the same, or because of an alleged liability on the part of a purchaser to a 
 patentee for an infringement of letters patent by reason of the use of the 
 priority. — Consumers v. Danville, 50 Fed. 778; 1 C. C. A. 663. 
 
 Wanzer v. Truly, 17 How. 584; Krumbhaar v. Birch, 83 Pa. St. 426; Geist 
 V. Stier, 134 Pa. St. 216. 
 
 To permit any undisclosed improvements controlled by either party to 
 be set up for the purpose of limiting the rights of the other under the contract 
 at bar, and especially fcr diminishing the apparent extent or validity of its 
 patents, would effect an unjust evasion of the stipulated terms. — B. & S. 
 Fastener v. B. G. Fastener, 58 Fed. 818; 7 C. C. A. 498. 
 
 While, under the contract, the state of the art could not be shown to defeat 
 the validity of the patents under the contract, it could be shown to determine 
 the scope of the claims, the character of the invention and the applicability 
 of the rule of equivalents. — B. & S. Fastener v. B. G. Fastener, 58 Fed. 818; 
 7 C. C. A. 498. 
 
 Complainant proved infringement by the production of an exhibit made 
 according to the terms of the patent, and proved that the sam.e had been made 
 by defendant. Defendants denied infringement in their answer and alleged 
 invalidity of the patent. After the case was ready for final hearing, defend- 
 ants having taken no proofs, defendant moved to amend their answer and 
 set up a license. This license ran from complainant to one Bry, who was an 
 importer and dealer, and provided a royalty and also provided that but one 
 royalty should be paid on such goods. 'Defendant claimed this hcense a bar
 
 g 312 DEFENSES 287 
 
 to recovery Held: We are not able to read the complainant's license to 
 Br^ S dving any sanction to the manufacture by the defendants of the 
 natented fabric. The defendants are neither parties nor pnvies to tnat n^stru- 
 ment ThS they themselves are not bound by any of its provisions is too 
 Sa^nfor aSume^it. The licensee thereunder is Jean Bry, and as to him it 
 is non assignable personal license. There is no contrac, relation whatever 
 beuveen the complainant and the defendants; hence no f ^o^^^ti^g^^" ^hat 
 basrsTs enforceable by the complainant against the defendants. If, then, the 
 Brv license is as claimed, a defense to a bill for infringement the complainant 
 Sremecmess as against the defendants in respect to their transactions with 
 4, Upon the defendants' theory, by their own simple election to resort o 
 i;'y's hSe they acquired, as against the owner of the p^^^^^^^^ 
 f-jcture without Uabil ty to account to him. But, it Bry s license is inus 
 Ivaikbirto the defendants, it is equally aval able to every other unlicensed 
 Manufacturer in the country. A construction of a license which leads to 
 ^TresXis not to be lightly adopted. - Hanifen .. Lupton, 101 Fed. 
 462; 41 C. C. A. 462. 
 
 S 312. General — Non-Infringement. 
 
 Courts did not perhaps, at first distinguish clearly between a defense 
 wWch would authoHze a ve'rdict and judgement in favor of the defendan in 
 rr,articular action, leaving the plaintiff free to use his patent, and to bring 
 fCr«n^tffnr its infringement; and one which, if successful, would require 
 thSou to en er a jud^r^en^ not only for the defendant in the particular 
 fai^ru^one wLich declLs the patent tol e void. This /-tinction is now 
 well settled. - Grant v. Raymond, 6 Pet A8; 8 L. Ed. 3/b. 
 
 There is no inconsistency i- the two allegations. The first is a direct 
 poSi": d^i^^l of infringemU; the second, thatthe^^^^^^^^^^^^ 
 
 ''Td'e ?hS'J&cts ^nfrg'd^h^^^^aS, tut as^t^'' n legafeTct 
 Sat f as th cc^rSlSnt te, they £ so infringe it, then the performance 
 KeiLtsdatei from a period six years P"- to the Paten^su^^^^^^^^ 
 the defense of a public use, and so estabhshing want of no^ elt> . Kobmson 
 V. American, 135 Fed. 693; 68 C. C. A. 331. 
 
 The infringement was conceded in the Circuit Court by the counsel for de- 
 fendan and such fact was recited in the opinion of the circuit judge. This 
 
 undersIanS^ig was adhered to in the P-P-^^-^ .1^-1^, couS 'counsel 
 <,ides Aopellee having submitted the case on briefs in this court counsel 
 for aDPellant on the orfl argument called attention to an alleged dis inguish- 
 wSure of Ae defendant's structure which he claimed relieved it from 
 fringetei^^^^ E^en if his proposition were --^ ^^s timfin ""^w Tit 
 
 deliSatelv waived by counsel. - Railway v. Munroe, 147 Fed. 241, 7. 
 C. C. A. 383. 
 
 Inswer and to relieve plaintiff of the necessity of proving it. It had this
 
 28g THE FIXED LAW OF PATENTS §§ 313-314 
 
 defense of the original answer as the only defense to the suit. — Buser v. 
 Novelty, 151 Fed. 478; 81 C. C. A. 16. 
 
 Defendant avers that it ceased the sale of said grain drill long prior to the 
 be"-inning of the present action. Answers in equity must be full, unequiv- 
 ocal, and responsive to the bill. The indefinite, evasive averments of the 
 answer in this case signally fail to respond to the requirements of that rule 
 and well justify us in treating them as negative pregnants admitting the truth 
 of the definite averments of the bill which are not fully answered. — Deere 
 V. Dowagiac, 153 Fed. 177; 82 C. C. A. 351. 
 
 §313. General — Non-Patentability. 
 
 We do not attach much significance to the act, which was intended to 
 create an easy system of pleading. Proof that there is no invention strikes 
 at the root of the whole claim. The patent is based on an affirmative act 
 of which this is the direct negative. It needed no statute to aid or justify 
 this defense. It is provable when it exists under any general denial, like the 
 fact of not guilty or non-assumpsit in cases where guilt or a promise is first to be 
 estabhshed. — Reckendorfer v. Faber, 92 U. S. 347; 23 L. Ed. 719. 
 
 A valid defense not given by the statute often arises where the question 
 is whether the thing patented amounts to a patentable invention. This 
 being a question of law, the courts are not bound by the decision of the Coni- 
 missioner, although he must necessarily pass upon it. — Mahn v. Harwood, 
 112 U. S. 354; 28 L. Ed. 665; 5 S. Ct. 174. 
 
 Brown v. Piper, 91 U. S. 38; Glue Co. v. Upton. 97 U. S. 3; Dunbar v. Myers. 
 94 U S 187; Atlantic v. Brady, 107 U. S. 199; Slawson v. R. R. 107 U. S. 652; 
 King V. Gallun, 109 U. S. 101. 
 
 This defense is one which may be availed of without setting it up in an 
 answer. — Hendy v. Golden, 127 U. S. 370; 32 L. Ed. 207; 8 S. Ct. 1275. 
 
 Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Mahn v. 
 Harwood, 112 U. S. 354. 
 
 Want of patentability is a defense, though not set up in an answer or plea. 
 — May V. Juneau, 137 U. S. 408; 34 L. Ed. 729; 11 S. Ct. 102. 
 
 Brown v Piper, 91 U. S. 37; Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 
 107 U. S. 649; Hendy v. Golden, 127 U. S. 370. 
 
 Although want of novelty is not pleaded, the patent may be declared void 
 for want of novelty. — Richards v. Chase, 158 U. S. 299; 39 L. Ed. 991; 
 15 S. Ct. 831. 
 
 Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Brown v. 
 Piper, 91 U. S. 37. 
 
 § 314. General — Non-Utility. 
 
 The burden is upon the defendant to prove want of utility. He must either 
 show that it is theoretically impossible for such a device to operate, or 
 demonstrate by clear proof that a person skilled in the art to which the 
 invention pertains has endeavored in good faith to make the patent work, 
 and has been unable to do so ; and it follows that such evidence is overthrown 
 if it is demonstrated by practical experiments of credible persons that they 
 have succeeded in producing by the patent process the results claimed by the 
 patent. — Crown v. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 The proposition that the invention is without utility is sufficiently answered
 
 DEFENSES 289 
 
 §§ 315-317 
 
 by the fact that defendants persistently use it. - Rumford v. New York, 
 
 134 Fed. 385; 67 C. C. A. 367. 
 
 The aDPellee company, failing to use any of the older forms of clamping 
 iai anSTng upon appellant's success, is hard y ni a Position to question 
 • thrutiUty of the Mvel feature. - Cazier .. Mackie-Lovejoy, 138 Fed. 654, 
 71 C. C. A. 104. 
 
 „ U asserted by the ^^^^:t^^tt.^'l^l^^lT:t^^^^:^ 
 coSr^X' wtre't sTass'ertTthat a patenLd device is inopemUve a„d 
 Lcks utUitv evidence that it has never been put to use is persuasive but n a 
 lacks uuiiij, <" , ^ f J ji^ t t[,g device is useful and operative 
 
 r bSe^n^ara'gtn'cf su^ evidence is negligible The complainant h^^^^^ 
 right to use the patent in any way it saw fit. - U. b. fastener v. J^raaiey, 
 149 Fed. 222; 79 C. C. A. 180. 
 
 § :»ic. General — Res Judicata. 
 
 This court described the rule in Aspden v. Nixon, 4 How. 476 in such cases 
 tn hP tha^ a Sement or decree, set up as a bar by plea, or relied on as evi- 
 dence t way of^^^^^^^^^^ must have been made by a court o competent 
 fu'Sic^on /pon the sTme subject rnatter between the same pait^^^^ for the 
 same purpose. - Packet Co. v. Sickles, 65 U. S. 333, lb L. b.a. bDU. 
 
 Tn the absence of a plea other than res adjudicata based upon an interfer- 
 ence Indtn the absence of any proof other than the record he prima fac^_ 
 of the patent in suit wiU entitle a decree. - Garratt v. Siebert, 98 U. S. 75, 
 25 L. Ed. 84. 
 
 Without respect to pleading, wherever a former recovery is properly i^ 
 ^JZnZ — ns here it was by agreement of the parties — full effect shouia 
 evidence as here it was oy g presented. The issue here 
 
 TeinTnovehXv-^^^^^^ 
 
 ad udication the former decree becomes conclusive evidence of the validity 
 
 of Ihe patent as between the parties affected by such prior adjudication. - 
 Bradley v. Eagle, 58 Fed. 721 ; 7 C C. A. 442. 
 
 S ^i6. Statutory — Abandonment. 
 
 It must then be open to every person, charged with an infringement to 
 shJwThVSns: th'at the pat|n?ee had abandoned his "-nticn. before 
 he obtained his patent. - Woodbury v. Keith, 101 U. S. 479, 25 L. JLa. 
 939. 
 
 The defense of abandonment was not pleaded, and the ^PPf^^^'^',^ ,^f^^, ^^ 
 
 rtS\SiJia^^t ri^i^on trs-ttr^^^^^^ 
 
 U. S. 485. 
 
 S 317. Statutory -Fraud or Misrepresentation in Specification. 
 
 -ol^d^t'Cd«irpr.iu^^^^^^^^^^^^^^ 
 
 commissioner. - Seymour v. Osborne, 78 U. S. 516, 20 L. Ed. 66.
 
 290 THE FIXED LAW OF PATENTS §§ 318-320 
 
 Rubber v. Goodyear, 9 Wall. 797; Stimpson v. R. R. 4 How. 404; R. R. v. 
 Stimpson 14 Pet. 458. 
 
 The defendants when sued for an infringement, were not at liberty to set 
 up as a defense that the patent had been fraudulently obtained, no fraud 
 appearing on its face. — Railroad v. DuBois, 79 U. S. 47; 20 L. Ed. 265. 
 
 Rubber v. Goodyear, 9 Wall. 788. 
 
 Whether under the present act the defense of defective specification 
 implies fraudulent intent, the court said: 
 
 There is plausibility in this argument, and if it were necessary to the 
 decision of this case, it might give us some embarrassment. —. Loom Co. 
 V. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 The right given to the infringer to make this defense is a right given to 
 him personally, and to him alone, and the effect of a successful defense of 
 this character by one infringer is simply to establish the fact that, as between 
 him and the patentee, no right of action exists for the reasons set up in such 
 defense. But the patentee is not prevented by any such decision from suing 
 a hundred other infringers if so many there be, and putting each of them 
 to an expensive defense, — in which they all, or some of them, may be 
 defeated and compelled to pay, because they are not in possession of the 
 evidence on which the other infringer succeeded. On the other hand, the 
 suit of the Government, if successful, declares the patent void, sets it aside 
 as of no force, vacates it or recalls it, and puts an end to all suits which the 
 patentee can bring against anybody. — United States v. Am. Bell, 128 
 U. S. 315; 32 L. Ed. 450; 9 S. a. 90. 
 
 § 318. Statutory — Fraud or Unfairness as Against Another 
 Inventor. 
 
 The charge that the original patentee in this case fraudulently and sur- 
 reptitiously obtained the patent for that which he well knew was invented by 
 another, unaccompanied by the further allegation that the alleged first 
 inventor was at the time using reasonable diligence in adapting and per- 
 fecting the invention is not sufficient to defeat the patent, and constitutes 
 no defense to the charge of infringement. — Agawam v. Jordan, 74 U. S. 
 583; 19 L. Ed. 177. 
 
 Reed v. Cutter, 1 Story, 599. 
 
 § 319. Statutory — Non-Inventorship. 
 
 Viewed in any light the proposition amounts to the charge that the inven- 
 tion was made by the person therein mentioned, and not by the assignor of 
 the complainant, and the burden to prove it is on the respondents, not only 
 because they make the charges, but because the presumption arising from 
 the letters patent is the other way. — Agawam v. Jordan, 74 U. S. 583 ; 
 19 L. Ed. 177. 
 
 § 320. Statutory — Prior Patent or Publication. 
 
 The defense of anticipation by a prior patent must be raised by the statu- 
 tory notice. — Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433. 
 
 Patented inventions cannot be superseded by the mere introduction of a 
 foreign publication of the kind, though of a prior date, unless the description 
 and drawings contain and exhibit a substantial representation of the patented 
 improvement in such full, clear and exact terms as to enable any person skilled
 
 5 320 DEFENSES 291 
 
 in the art or scier.ce to which it appe^^^^^^^^^^^ 
 
 the invention to the same PJ^^^i^^l ^^Jf^^J ^™ Mere vague and general 
 
 the information was derived f/«\^ P^^P/^^^^^^^^ 
 
 representations willnotsupportsuchadeens^^ g PP^^^ .^ ^^^ 
 
 derived from the P^^hca ion must be sute^^^ ^^^ .^^^^^.^^ ^^^ 
 
 art or science to understand t^,^^f J^^"^ ^'^^^^^^ particular circumstances 
 
 "■ W* ■ P tT,; 'cu": Patios!; Hiut Evans, a Law T. N. S. 00; Bet. .. 
 Menzies, 4 Bert. & S. Q. S. 999. 
 
 /DuBois, 79 U. S. 47 ; 20 L. Ed. 265. 
 
 Neither the ciefenda^^^-^^^^^^^^^^^ ^^nTheTS 
 
 suit, can be P^™^\t.^d/.^^P7Xe.\rthrprinted pubUcation, was made prior 
 patent, or the mvention d^f/^^ed m the pn^^^^^^^ ^^^^ ^^^^ ^j^^ . 
 
 to the date of such patent or f ^^^^^^ PXrt as eV dence that is given to the 
 tent or pubUcation can only ^ave ^h^ ^^f ^^^^^^^^^^^^^ in respect to the 
 same by the Act of Congress. Unlike that the presui f _ 
 
 invention described m the patent ^ suit if it ^^^^^^^/^^^.^^ion was filed; 
 tion for the same, is that it was "^^^e at the time the a ^^^^ 
 
 and the complainant or plaintiff may, ^^ ^e caji, mtroduce p ^^ ^ ^^ ^^^ 
 it was made at a much earher date. — Bates v. uoe, yo u . 
 
 Evidence to sustain the defense that the i^^^^^^^^^^^ 
 or described in some printed P^^hcation is suftcient, n m^^^^ complete 
 
 for the purpose, whether foreign or domestic, was du^J^^^^^^^ 
 description of the invention was P^^f ^^ed in some prmt^^^^ 
 prior to the patented \nvention in su t and the pat^^^^^^ ^^^ 
 
 Sr the printed pubhcation will be held o be prio^, iH Us ot prio ^.^^^.^^ 
 patent in suit, unless the P^t^^V\"n.ni4roduSs parol pr^oof to show that 
 for the same, or unless the c«";iPl^^"^f, "^V^^X^^^^^ or prior to 
 
 treiiiTappr^rw^^^^^^ 
 
 Where tl. thh^ ^ :£ J^ tnc^pS^^f ^^--^-^^^ 
 that a part of the entire ^^^^^^troni found m a pioj^^te p ^^.^^ J^^^^^ 
 cation or machine and another Pa^t^n another P^^^^f^^^^/^^^ber of such 
 in a third exhibit, and fyo^^^^^ese three or an_y greaie ^^^^ 
 
 exhibits draw the conclusion that the P^^^^^j^^J^^^^^^^^ U. S. 647; 
 
 inventor of the patented improvement. — Imhauser v. liuerK, 
 
 25 L. Ed. 945. 
 
 Bates V. Coe, 98 U. S. 31. 
 
 It is no answer to patents and publications s^up ^^^^^ ^y^:,S,fZ 
 machines and incapable of successful practical working. 
 McCuUough, 104 U. S. 310; 26 L. Ed. 749. 
 
 It does not lie in the mouth of a P-Jy f o is mfr^^^^^^^^ 
 provement and the original invention to set up the existence o
 
 292 THE FIXED LAW OF PATENTS §§ 321*322 
 
 patent as an excuse for the infringement. It is only the patentee of the 
 original invention who has the right to complain of the use made of his inven- 
 tion. — Cantrell V. Walhck, 117 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970. 
 
 The general rule laid down in Seymour v. Osborne, 78 U. S. 516, and in 
 Cohn V. U. S. 93 U. S. 366, and affirmed in Downton v. Yaeger, 108 U. S. 
 466 recited and approved. — Eames v. Andrews, 122 U. S. 40; 30 L. Ed. 
 1064; 7S. Ct. 1073. 
 
 There is a clear distinction in law between merely anticipatory matter, 
 which, under the statute, must be specially pleaded in defense, and the state 
 of the art, although they, of course, at times run into each other. — Parsons 
 V. Seelye, 100 Fed. 452 ; 40 C. C. A. 484. 
 
 Edmund Pat. 2 ed. 48. 
 
 § 321. Statutory — Prior Public Use or Sale. 
 
 Evidence to show that the invention of the original patentee, as finally 
 perfected, was on sale and in public use more than two years before he applied 
 for a patent is entirely wanting, and if such evidence was offered, it could not 
 be admitted under the pleadings, as no such defense is set up in the answer. 
 — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 
 
 Foster v. Goddard, 1 Black 518. 
 
 Prior use and knowledge of the thing patented may be pleaded, but the 
 defendant cannot be allowed to give evidence in support of such defense, if 
 seasonable objection is made, unless it appears that he gave the statutory 
 notice in his answer. — Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. 
 
 Blanchard v. Putnam, 8 Wall. 420. 
 
 The answer set up " that the alleged invention was in public and common 
 use, and on sale, with and by the knowledge and consent of the patentee, for 
 more than two years before the application." It did not in terms allege, that 
 such public use was " in this country," as the statute provides. While this 
 defense may not have been pleaded with technical accuracy, yet the testi- 
 mony tending to establish it, was received on the final hearing without any 
 objection. The first time the question has been raised, as appears from the 
 record, is on the argument of the appeal in this court; and when it is too 
 late. — Smith & Davis v. Mellon, 58 Fed. 705; 7 C. C. A. 439. 
 
 Roemer v. Simon, 95 U. S. 214; Loom Co. v. Higgins, 105 U. S. 580. 
 
 § 322. Miscellaneous. 
 
 Defenses of the kind, if the thing patented is an entirety and incapable of 
 division or separate use, must be addressed to the invention and not merely 
 to one or more of the claims of the patent if less than the whole of invention. 
 More than one patent may be included in one suit and more than one inven- 
 tion may be secured by the same patent ; in which case the several defenses 
 may be made to each patent in suit and to each invention included in the bill 
 of complaint. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Gill V. Wells, 22 Wall. 27. 
 
 Each of these defenses (statutory) it will be seen goes to the entire inven- 
 tion, and not to separate parts of the thing patented; and the provision is, 
 that if any one or more of the special matters alleged shall be found for the 
 defending party, the judgement or decree shall be rendered in his favor, with 
 costs. — Bates 'i). Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 R. S. 4920.
 
 § 322 DEFENSES 293 
 
 The fact that the answer (fuly sworn to cites anticipatory patents and 
 states that the device was well known in the art prior to complainant's inven- 
 tion does not seem to tally very well with the allegation that the inventor 
 had failed to point out, in his patent, how to use and apply his invention, 
 and that it requires further invention to use and apply it. — Loom Co. v. 
 Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 In this case a decree pro confesso had been taken and the case sent to a 
 master. Then defendants raised objections as to the validity of the reissue, 
 etc. Held: We think that the objection to the decree going to the vahdity 
 of the patent, and the whole cause of action cannot be sustained. — Thomp- 
 son V. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 We have the material for ascertaining its meaning in that view, by means 
 of the evidence on that point contained in the record, which, although 
 objected to on the ground that no prior use or knowledge of the invention 
 claimed had been specifically set up in the answer as a defense, was neverthe- 
 less, admissible for the purpose of defining the limits of the grant in the 
 original patent and the scope of the invention described in the specification. 
 — Eachus V. Broomall, 115 U. S. 429; 29 L. Ed. 419; 6 S. Ct. 229. 
 
 Vance v. Campbell, 1 Black. 427; Brown v. Piper, 91 U. S. 37. 
 
 It may be true that the device used is better than that of the plaintiff, 
 but this cannot relieve them from the charge of infringement if the devices 
 are substantially alike. — Cantrell v. WaUick, 117 U. S. 689; 29 L. Ed. 1017; 
 6 S. Ct. 970. 
 
 Machine v. Murphy, 97 U. S. 120. 
 
 It is not the rule that the decision of the Commissioner of Patents is 
 final as to the matters involved in granting a patent, except as to the questions 
 specifically enumerated as defenses in the five subdivisions of section 4920 
 of the R. S. Or that, unless substantially the same thing existed before, the 
 article, if useful, is new ai)d patentable ; or that the decision of the Commis- 
 sioner of Patents to that effect is not reviewable in a suit on the patent. — 
 Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158; 6 S. Ct. 1027. 
 
 Thompson v. Boisselier, 114 U. S. 1; Yale v. Greenleaf, 117 U. S. 554. 
 
 An affidavit of defense is insufficient to prevent judgment, unless it sets 
 forth all the facts necessary to constitute a substantial defense. Mere general 
 averments amounting to legal conclusions will not do. The specific facts must 
 be stated, so that the court may draw the proper conclusions. Nothing 
 should be left to conjecture, for that which is not stated must be taken not 
 to exist. — Consumers v. Danville, 50 Fed. 778; 1 C. C. A. 663. 
 
 Bryan v. Harrison, 37 Pa. St. 233; Marsh v. Marshall, 53 Pa. St. 396; Peck 
 V. Jones, 70 Pa. St. 83; Asay v. Lieber, 92 Pa. St. 377. 
 
 It would seem that the defense of laches Vv-ill not be favorably regarded, 
 when the defendant denies infringement and then attempts to establish 
 laches through the acquiescence of complainant in the infringement of 
 defendant's concern. — Imperial v. Stein, 77 Fed. 612; 23 C. C. A. 353. 
 
 That a defendant in an action at law, where the plaintiff has pleaded the 
 terms of the statute limiting recoveries to six years, in the event of the failure 
 of plaintiff to prove under such pleading, the defendant need not have 
 pleaded the statute to take advantage of the facts, see Peters v. Hanger, 
 127 Fed. 820; 62 C. C. A. 898.
 
 294 THE FIXED LAW OF PATENTS § 323 
 
 The conviction that there was no merit in such defense, and the entire 
 abandonment of the same after it had been set up in the answer, seems to us 
 to be entitled to great weight as the opinions of experts against their interest. 
 — Ideal V. Crown, 131 Fed. 244; 65 C. C. A. 436. 
 
 Assuming that this question (that the patent is void on its face) may be 
 presented for the first time on appeal, it is manifest that the defendant's 
 contention cannot be maintained. The patent deals with an abstruse and 
 comphcated art and there is nothing existing prior to the date of its applica- 
 tion, of which the court can take judicial notice, which throws any light 
 upon the question of invention. Obviously the patent is valid on its face 
 and it \v as the duty of the defendant to prove the contrary. — Fox v. Kjiicker- 
 bocker, 165 Fed. 442; C. C. A. 
 
 DEMURRER. 
 
 Dismissing Bill on § 323 
 Judicial Notice § 324 {see § 705) 
 Patentability and Novelty § 325 
 Validity § 326 
 
 Miscellaneous § 327 
 
 See — Appeals § 122; Jurisdiction 
 
 713; Pleading § 791; Title § 925 
 
 § 323. Dismissing Bill on. 
 
 While patent causes are usually disposed of upon bill, answer and proof ^ 
 there is no objection, if the patent be manifestly invalid upon its face, to the 
 point of being raised bv demurrer. — Richards v. Chase, 158 U. S. 299; 39 
 L. Ed. 991; 15 S. Ct. 831. 
 
 Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Brown v. 
 Piper, 91 U. S. 37. 
 
 We think the court erred in holding upon demurrer that the patent was 
 void upon its face. It may be admitted that the patent is one of narrow 
 limitations, but we are not prepared to hold that in the circumstances, which 
 may be susceptible of proof, the patent should be held void in the absence of 
 any anticipation, and, supported, as it is possible it may be, by evidence that 
 it fulfils a useful purpose, and has been extensively adopted by the public in 
 practical use, and further supported by the presumption of validity arising 
 from the allowance of the patent, the force of which presumption is aug- 
 mented by the fact that there was a serious contest in the office. It is 
 undoubtedly established law that the court may, in a clear case, dismiss a 
 bill upon demurrer ; but this court has on former occasions in substance said 
 that this ought only to be done when there is no room for thinking that any 
 evidence could be adduced which would, if put into the case, alter the clear 
 conviction of the court. — Milner v. Yesbera, 111 Fed. 386; 49 C. C. A. 397. 
 
 Richards v. Elevator, 158 U. S. 299; American v. Buckskin, 72 Fed. 508; 
 Mfg. Co. V, Scherer, 100 Fed. 459. 
 
 We have not been unmindful in the consideration of this case of the ad- 
 monition so frequently made by courts, that patents should not be declared 
 invalid, upon demurrer or otherwise, upon the face of the patent itself, unless 
 the invalidity so clearly appears that no testimony can change the legal 
 aspect of the case, and that if doubt, exists, the complainant is entitled to its 
 benefit. But in cases thus clear on the face of the patent itself, courts may, 
 even where the question is not raised by the pleadings, suo sponte, declare 
 the patent invahd and dismiss the bill. — Wills v. Scranton, 153 Fed. 181; 
 82 C. C. A. 355. 
 
 Brown v. Piper, 91 U. S. 37; Slawson v. Grand, 107 U. S. 649.
 
 §§ 324-325 DEMURRER 295 
 
 That the question here presented may properly be decided on demurrer 
 was decided by the Supreme Court in Richards v. Chase, 158 U. S. 299. This 
 court has frequently approved this practice, believing it for the interests of 
 both parties that the court, when convinced that the complainant cannot 
 succeed, should say so in limine and thus save them from the expense and 
 annoyance of a protracted litigation. — Kuhn v. Lock-Stub, 165 Fed. 445; 
 C. C. A. 
 
 Fowler V. City, 110 Fed. 749, affd. 121 Fed. 747; Lappin v. Corning, 94 Fed. 
 162, affd. 99 Fed. 1004; Conley v. Marum, 83 Fed. 309, affd. 85 Fed. 990. 
 
 § 324. Judicial Notice. 
 
 It will be observed that the learned judge in the court below was able to 
 point out instances of similar devices within his personal observation of a 
 kind necessarily within common knowledge. Herein is the distinction 
 between this case and the fibre chamois cases (just decided) 72 Fed. 508, 
 516. — Heaton v. Schlochtermayer, 72 Fed. 520; 18 C. C. A. 674. 
 
 It is well settled that in considering the question of the vahdity of a 
 patent on its face, the court may take judicial notice of facts of common and 
 general knowledge tending to show that the device or process patented is 
 old, or lacking in invention, and that the court may refresh and strengthen 
 its recollections and impression of what facts were of common and general 
 knowledge at the time of the application for the patent by reference to any 
 source of general information which is known to the court to be reliable, 
 and to have been published prior to the apiDlication for the patent. Brown 
 V. Piper, 91 U. S. 38. The presumption from the issuance of the patent is 
 that it involves both novelty and invention. The effect of dismissing the 
 bill upon demurrer is to deny to the complainant the right to adduce evi- 
 dence to support the presumption. Therefore the court must be able, from 
 the statements on the face of the patent, and from the common and general 
 knowledge already referred to, to say that the want of novelty and invention 
 is so palpable that it is impossible that evidence of any kind could show the 
 fact to be otherwise. Hence it must follow that, if the court has any doubt 
 whatever with reference to the novelty or invention of that which is patented, 
 it must overrule the demurrer, and give the complainant an opportunity, 
 by proof, to support and justify the action of the patent office. This is the 
 view which has been taken by the Supreme Court and the most experienced 
 patent judges upon the circuit. — American v. Buckskin, 72 Fed. 508; 18 
 C. C. A. 662. 
 
 N. Y. V. N. J., 137 U. S. 445; Mfg. Co. v. Adkins, 36 Fed. 554; Blessing v. 
 Copper, 34 Fed. 753; Bottle v. De La Vergne, 47 Fed. 59; Industries v. Grace, 
 57 Fed. 124; Goeble v. Supply, 55 Fed. 825; Harden v. Primrose, 56 Fed. 600; 
 Dick V. Well, 25 Fed. 105; Kaolatype v. Hoke, 30 Fed. 444; Coop v. Development, 
 47 Fed. 899; Krick v. Jansen, 52 Fed. 823; Mfg. Co. v. Housman, 58 Fed. 870; 
 Davock V. Railroad, 69 Fed. 468; Henderson v. Tompkins, 60 Fed. 758. 
 
 § 325. Patentability and Novelty. 
 
 While patent causes are usually disposed of upon bill, answer and proof, 
 there is no objection, if the patent be manifestly invalid upon its face, to the 
 point being raised by demurrer. — Richards v. Chase, 158 U. S. 299; 39 
 L. Ed. 991; 15 S. Ct. 831. 
 
 Dunbar v. Mvers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Brown v. 
 Piper, 91 U. S. 37. 
 
 The rule is now well settled that a defendant to a patent infringement bill 
 may raise the question on demurrer whether the alleged invention, as dis-
 
 296 THE FIXED LAW OF PATENTS §326 
 
 closed by the specifications of the patent, is void of patentable novelty or 
 invention. — American v. Buckskin, 72 Fed. 508; 18 C. C. A. 662. 
 Richards v. Elevator, 158 U. S. 299; West v. Rae, 33 Fed. 45. 
 
 Undoubtedly, want of patentability may be adjudged upon demurrer, but 
 only in exceptional cases, where the question is entirely free from doubt. 
 Ordinarily, a patent should not be defeated without a hearing on the proofs. 
 
 — Chinnock v. Paterson, 112 Fed. 531 ; 50 C. C. A. 384. 
 
 New York v. New Jersey, 137 U. S. 445; Caldwell v. Powell, 73 Fed. 488; 
 Mfg. Co. V. Scherer, 100 Fed. 459; Beer v. Walbridge, 100 Fed. 465. 
 
 Under the well settled rule of this court, a patent is to be declared void 
 upon its face, " only when there is no room for thinking that any evidence 
 can be adduced which would, if put into the case, alter the clear conviction 
 of the court that there is no patentable invention in the production patented." 
 
 — Drake v. Brownell, 123 Fed. 86; 59 C. C. A. 216. 
 
 Mihier v. Yesbera, 111 Fed. 386; Strom v. Weir, 83 Fed. 170; Richards v. 
 Chase, 158 U. S. 299. 
 
 There is nothing new in this device. This is a matter of such common 
 knowledge that the court below took judicial notice of it, and properly held 
 the patent void on demurrer for lack of novelty. The fact that the action 
 was one at law did not place the initial pleading beyond the reach of the 
 demurrer. — Thomas v. St. Louis, 149 Fed. 753; 79 C. C. A. 89. 
 
 Brown v. Piper, 91 U. S. 37; Slawson v. Railroad, 107 U. S. 649; Diamond v. 
 Excelsior, 156 U. S. 611; Richards v. Chase, 158 U. S. 299; Richards v. Michigan, 
 102 Fed. 508; id., 179 U. S. 606; id., 186 U. S. 479; American v. Buckskin, 
 72 Fed. 508; Strom v. Weir, 83 Fed. 170; Northwood v. Dalzell, 100 Fed. 98; 
 Drake v. Brownell, 123 Fed. 86; Baker v. Duncombe, 146 Fed. 744. 
 
 § 326. Validity. 
 
 It is no longer open to question that where the case as presented is clear, 
 and the court finds no diflnculty in understanding the character and scope of 
 the invention from the patent itself, when tested by the common knowledge 
 pertaining to it, and thereupon discerns that the patent is not sustainable, 
 the proper and expedient course is to dispose of the case on demurrer, and 
 thus put an end to useless litigation. — Strom v. Weir, 83 Fed. 170; 27 
 C. C. A. 502. 
 
 Locomotive v. Medart, 158 U. S. 68; Richards v. Elevator, 158 U. S. 299; 
 American v. Buckskin, 72 Fed. 508. 
 
 Undoubtedly, if there appears upon the face of the patent something 
 inhering in the substance of the invention which is recondite or abstruse, 
 something which creates a difficulty for the court in fully comprehending 
 its nature or its limitations, and the court, upon applying the common 
 knowledge of the art, is embarrassed with doubt as to the proper conclusion 
 to be reached, such difficulty, reinforced by presumption of the validity of 
 the patent, would indicate the propriety of refusing to dismiss the bill upon 
 demurrer, and awaiting the further development of the invention by the 
 proofs. — Strom v. Weir, 83 Fed. 170; 27 C. C. A. 502. 
 
 That where a device has shown such large utility as to put seeming want of 
 novelty in doubt, a demurrer will not be sustained, see Higgin v. Scherer, 
 100 Fed. 459; 40 C. C. A. 491. 
 
 We are of the opinion that the case is one where evidence of a prior art 
 and of the commercial value of the patented article may be persuasive that
 
 $ 327 DEMURRER 297 
 
 the patent is valid, and that the question is too doubtful to be decided upon 
 the face of the patent upon demurrer. — Beer v. Walbridge, 100 Fed. 465; 
 40 C. C. A. 496. 
 
 The patent is not so clearly and indubitably void of invention as to justify 
 a ruling to that effect upon demurrer. — Faries v. Brown, 102 Fed. 508; 
 42 C. C. A. 483. 
 
 The patent had been sustained on appeal in a former suit. Subsequently, 
 owing to the discovery of a prior construction, a disclaimer had been made. 
 Held: The bill presents the disclaimer as well as the patent, and, with the 
 concession that in the prior art the returning ball had been retarded by an 
 up grade, the case may properly be disposed of on demurrer; and, for the 
 reasons set forth in our former opinion (111 Fed. 904) we have reached the 
 conclusion that the patent discloses no patentable invention in claims here 
 in controversy. — Brunswick v. Klumpp, 131 Fed. 255; 65 C. C. A. 447. 
 
 The manufacture of stovepipes had employed the skill of numberless 
 artisans for generations without the earlier discovery of the simple locking de- 
 vice of the patent. Under such circumstances can it be said, confidently and 
 without doubt, that such device would have occurred to any skilled mechanic 
 engaged in such manufacture, and called for no exercise of the inventive 
 faculty? Unless that can be said, this patent should not have been on de- 
 murrer held to be void for lack of invention. — Jackes v. Hemp, 140 Fed. 
 254; 71 CCA. 646. 
 
 General v. Campbell, 137 Fed. 600. 
 
 Although the presumption from the issuance of a patent is that it involves 
 both novelty and invention, yet the question of its validity may be raised 
 by demurrer. — Jackes v. Hemp, 140 Fed. 254; 71 C. C. A. 246. 
 
 American v. Buckskin, 72 Fed. 508. 
 
 The court below sustained a demurrer on the ground that the patent was on 
 its face void for lack of patentable novelty. While such a decree may be 
 entered where a case is clear from doubt, we are of opinion the present was 
 not one of that character. — Hogan v. Westmoreland, 154 Fed. 66; 83 C. 
 C. A. 178. 
 
 Caldwell v. Powell, 73 Fed. 488; Chinnock v. Paterson, 112 Fed. 531. 
 
 § 327. Miscellaneous. 
 
 When there is a demurrer to the whole bill, and also to part, and the latter 
 only is sustained, the regular decree is to dismiss so much of the bill as seeks 
 relief in reference to the matters adjudged bad, and to overrule the demurrer 
 to the residue, and direct the defendant to answer thereto. — Powder v. 
 Powder, 98 U. S. 126; 25 L. Ed. 77. 
 
 That the court, on demurrer, will not pass upon questions requiring evi- 
 dence of experts, see American v. Buckskin, 72 Fed. 508; 18 C. C. A. 622. 
 
 It is a general principle of equity pleading that, as a demurrer proceeds 
 upon the ground that, admitting the facts stated in the bill to be true, the 
 complainant is not entitled to the relief he seeks, all matters of fact which 
 are stated in the bill are admitted by the demurrer, and cannot be disputed 
 in arguing the question whether the defense thereby made be good or not, 
 and such admission extends to the whole manner and form in which it is 
 here stated; or, to state the principle more concisely, every change in the
 
 298 THE FIXED LAW OF PATENTS § 328 
 
 bill, well pleaded, is absolutely admitted by the demurrer. — Caldwell v. 
 Powell, 73 Fed. 488; 19 C. C. A. 592. 
 
 It has been law time out of mind that a demurrer to an entire declaration 
 must be overruled if there be one good count. Such demurrer asserts that 
 no cause of action is shown. It therefore raises no further question if one 
 count be good. The argument in such case may properly cover all the counts, 
 but the ruling is complete with the determination that one count is good. — 
 Standard v. Crane, 76 Fed. 767; 22 C. C. A. 549. 
 
 It is contended by appellant that the court below erred in disposing of 
 the demurrer upon the assumption that the state of the art was set forth in 
 the specifications; Fibre Co. v. Grace, 52 Fed. 124 being cited in support 
 of such contention. That decision, however, is opposed to the great weight 
 of authority. — Lyons v. Drucker, 106 Fed. 416; 45 C. C. A. 368. 
 
 Fougeres v. Murbarger, 44 Fed. 291; Studebaker v. Illinois, 42 Fed. 52; Button 
 Fastener v. Schlochtmeyer, 72 Fed. 520. 
 
 That the presence of the slightest evidence of novelty is sufficient to 
 defeat a demurrer for want of invention, see Lyons v. Drucker, 106 Fed. 416 ; 
 45 C. C. A. 368. 
 
 A decree on demurrer, in the absence of any specific statement or showing 
 in the pleadings, will be presumed to have been upon the merits. — Bradford 
 V. Kisinger-Ison, 113 Fed. 811; 51 C. C. A. 483. 
 
 Ashley v. Board, 60 Fed. 55; Terry v. Davy, 107 Fed. 50; Cattle Co. v. Frank, 
 148 U. S. 603. 
 
 There can no longer be a doubt that where, in an infringement suit, profert 
 of the patent is made in the usual form, the patent is regarded as part of 
 the bill and will be examined on demurrer. — Fowler v. City of N. Y. 121 
 Fed. 747; 58 C. C. A. 113. 
 
 Heaton v. Schlochtmeyer, 69 Fed. 592; Chinnock v. Paterson, 110 Fed. 199; 
 International v. Maurer, 44 Fed. 618. 
 
 DESIGNS. 
 
 Statutory Provisions § 328 
 Definition § 329 
 Identity § 330 
 
 Infringement § 331 (see § 445) 
 Invention § 332 {see § 588) 
 Mechanical § 333 
 
 Novelty § 334 
 
 Patentability § 335 
 
 Penalty § 336 
 
 Miscellaneous § 337 
 
 See — Claims § 231; Damages § 281 
 
 § 328. Statutory Provisions. 
 
 Any person who has invented any new, original, and ornamental design 
 for an article of manufacture, not known or used by others in this country 
 before his invention thereof, and not patented or described in any printed 
 publication in this or any foreign country before his invention thereof, or 
 more than two years prior to his application, and not in public use or on sale 
 in this country for more than two years prior to his application, unless the 
 same is proved to have been abandoned, may, upon payment of the fees 
 required by law and other due proceedings had, the same as in cases of in- 
 vention or discoveries covered by section 4886, obtain a patent therefor. — 
 R. S. 4929.
 
 § 329 DESIGNS 299 
 
 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 appUcant may, in 
 his application, elect. — R. S. 4931. 
 
 All the regulations and provisions which apply to obtaining or protecting 
 patents for inventions or discoveries not inconsistent with the provisions of 
 this Title, shall apply to patents for designs. — R. S. 4933. 
 
 Section 4932 provides for conditions arising under the old act, now wholly 
 obsolete. The amendment of Feb. 4, 1887, makes the following provision 
 for protection against infringement: 
 
 That hereafter, during the term of letters patent for a design, it shall be 
 unlawful for any person other than the owner of said letters patent, without 
 the license of such owner, to apply the design secured by such letters patent, 
 or any colorable imitation thereof, to any article of manufacture for the 
 purpose of sale, or to sell or expose for sale any article of manufacture to 
 which such design or colorable imitation shall, without the license of the 
 owner, have been applied, knowing that the same has been so applied. * * * 
 
 The remainder of this amendment is the provision for the recovery of 
 damages and profits, and will be found quoted under the title Damages. 
 
 § 329. Definitions. 
 
 The Acts of Congress which authorize the granting of patents for designs 
 were plainly intended to give encouragement to the decorative arts. They 
 contemplate not so much utility as appearance, and that, not an abstract 
 impression or picture, but an aspect given to those objects mentioned in the 
 acts. It is a new and original design for a manufacture, whether of metal 
 or other material. — Gorham v. White, 81 U. S. 511; 20 L. Ed. 7-31. 
 
 Modified: Smith v. Whitman, 148 U. S. 674. 
 
 As the Acts of Congress embrace only designs applied or to be applied, 
 they must refer to finished products of invention rather than to the process 
 of finishing them, or to the agencies by which they are developed. — Gorham 
 V. White, 81 U. S. 511 ; 20 L. Ed. 731. 
 
 Modified: Smith v. Whitman, 148 U. S. 674. 
 
 We are in the habit of regarding a design as a thing of distinct and fixed 
 individuality of appearance — a representation, a picture, a delineation, 
 a device. A design of such a character, of course, addresses itself to the 
 senses and the taste, and produces pleasure or admiration in its contempla- 
 tion. But in the patent before us, the alleged invention is claimed to be some- 
 thing more than such a design. It is claimed to have an active power of 
 producing a physical effect upon the rays of light, so as to produce different 
 shades and colors according to the direction in which the various corrugated 
 lines are viewed — a sort of kaleidoscopic effect. It is possible that such a 
 peculiar effect, produced by such a particular design, impressed upon the 
 substance of india-rubber, may constitute a quality of excellence which will 
 give to the design a specific character and value and distinguish it from other 
 similar designs which have not such an effect. — New York v. New Jersey, 
 137 U. S. 445; 34 L. Ed. 741; 11 S. Ct. 193. 
 
 Design, in the view of the patent law, is that characteristic of a physical 
 substance which, by means of lines, images, configuration, and the like, 
 taken as a whole, makes an impression, through the eye, upon the mind of 
 the observer. The essence of a design resides, not in the elements individ- 
 ually, nor in their method of arrangement, but in the tout ensemble — in
 
 300 THE FIXED LAW OF PATENTS §§ 330-331 
 
 that indefinable whole that awakens some sensation in the observer's mind. 
 Impressions thus imparted may be complex or simple; in one a mingled 
 impression of gracefulness and strength, in another the impression of strength 
 alone. But whatever the impression, there is attached in the mind of the 
 observer to the object observed, a sense of uniqueness and character. — 
 Pelouze V. American, 102 Fed. 916; 43 C. C. A. 52. 
 
 § 330. Identity. 
 
 We are now prepared to inquire what is the true test of identity of design. 
 Plainly, it must be sameness of appearance, and mere difference of lines in 
 the drawing or sketch, a greater or smaller number of lines, or slight variances 
 in configuration, insufficient to change the effect upon the eye, will not destroy 
 the substantial identity. — Gorham v. White, 81 U. S. 511 ; 20 L. Ed. 731. 
 
 The details of the two designs, are, in several particulars, not the same, 
 but to this we would attach no importance if the general effect was sub- 
 stantially identical. On the other hand, their elementary features are, to a 
 very considerable extent, precisely alike, yet this, too, is immaterial, because 
 the impression of the whole upon the eye of even a casual observer is made 
 plainly different, not only by the partial diversity of their elements, but 
 also by the difference in arrangement and correlation of the constituents 
 which are common to both. — Monroe v. Anderson, 58 Fed. 398; 7 C. C. A. 
 272. 
 
 The suit was brought upon a patent, not for a mantel but for " a design 
 for a mantel." At best, the patented design and that which is alleged to 
 infringe, are not of a very high order, and the mantels to which they are 
 applied are quite commonplace in style and character. It is by no means 
 improbable that an ordinary purchaser would be wholly regardless of, and 
 absolutely inattentive to, such designs upon such articles, and it may 
 readily be supposed that such a purchaser might be misled by a statemeat 
 that the mantel having the alleged infringing design was that of the com- 
 plainant. But design is a distinct matter; and, as to that, accepting the 
 suggestion of learned counsel that nothing is entitled to more weight with the 
 court than " the testimony of its own eyesight " we can only say that each 
 of these judges who heard the argument of this case is, from observation of 
 the two designs, entirely satisfied that they are substantially different in 
 their effect upon the eye, and that his perception was not dependent upon 
 the fact that he saw the two designs side by side and heard counsel compare 
 and contrast them, but that their difference would be manifest to an ordinary 
 observer, giving the usual attention (if any) of a purchaser to that subject. 
 — Monroe v. Anderson, 58 Fed. 398; 7 C. C. A. 272. 
 
 It has been said that in matters of design patents, infringement must be 
 determined by the similarity of appearance evident to the eyes of an ordinary 
 observer, and that an ordinary observer is an intending purchaser of the 
 article in question, familiar with the various designs of the article sought to 
 be purchased, and who seeks to purchase them for the uses to which they are 
 geno'ally adapted. The eye of the court is also that of a judge competent 
 to pass upon the question of similarity, — Byram v. Friedberger, 100 Fed. 
 963; 41 CCA. 121. 
 
 § 331. Infringement. 
 
 We hold therefore, that if, in the eye of an ordinary observer, giving 
 such attention as a purchaser usually gives, two designs are substantially 
 the same, if the resemblance is such as to deceive such an observer,
 
 J 331 DESIGNS 301 
 
 inducing him to purchase one supposing it to be the other, the first one 
 patented is infringed by the other. — Gorham v. White, SI U. S. 511; 20 
 L. Ed. 731. 
 
 Modified: Smith v. Whitman, 148 U. S. 674. 
 
 We do not say that in determining whether two designs are substantially 
 the same, differences in the fines, the configuration, or the modes by which 
 the aspects they exhibit are not to be considered; but we think the controfiing 
 consideration is the resultant effect. — Gorham v. White, 81 U. S. 511; 20 
 L. Ed. 731. 
 
 Modified: Smith v. Whitman, 148 U. S. 674; McCrea v. Holdsworth, 6 Ch. Ap. 
 L. Rep. 418. 
 
 A design is to be tested as to its novelty and infringement as a whole. — 
 Dobson V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946. 
 
 In the absence of testimony to establish the identity of the act, the court 
 will upon the introduction of the admitted article, determine the question by 
 comparison. — Kibbe v. Jennings, 122 U. S. 640; 30 L. Ed. 861. 
 
 Following, Gorham v. White, 81 U. S. 511. 
 
 As none of the defendant's articles infringe the only specific design ex- 
 hibited in the patent and shown in the drawing, the decree is reversed. — 
 New York v. New Jersey, 53 Fed. 810; 4 C. C. A. 21. 
 
 Defendant's mat, therefore, is not an infringement of the " specific design 
 exhibited in the patent and shown in the drawing." If the change of shape 
 involved no change of design, because whoever was shown the square mat 
 and told to make it oblong, with the same design, would inevitably produce 
 an oblong mat of a single specific pattern. But that is not this case. Mani- 
 festly in changing from the square to the oblong, there must be a change of 
 pattern, a change which is not a mere duplication of the details of the original, 
 but a rearrangement of the principal lines of the figure, and such rearrange- 
 ment is not necessarily confined to a single pattern. — New York v. New 
 Jersey, 53 Fed. 810; 4 C. C. A. 21. 
 
 Gorham v. White, 14 Wall. 528. 
 
 The point to be determined by the criterion sanctioned is whether " the 
 designs are substantially the same; " that is, whether a purchaser giving the 
 usual attention to the subject-matter of the patent, — the design — would 
 not be deceived into supposing the two designs to be the same ; not whether 
 a purchaser not giving any attention to the design might be led to assume that 
 an article embodying the one design was the same article as another by or 
 upon which the other design had been portrayed. — Monroe v. Anderson, 58 
 Fed. 398; 7 C. C. A. 272. 
 
 Gorham v. Wliite, 14 Wall. 511. 
 
 A sameness of appearance which is due to a sameness to forms which were 
 common property does not go to establish infringement. — Soehner v. 
 Favorite, 84 Fed. 182; 28 C. C. A. 317. 
 
 The head of the defendant's design does not materially differ from that of 
 the patent, being distinguishable from it only by the absence of the ray-like 
 members, " e ": and we cannot suppose that the removal of these append- 
 ages was at all likely to be observed by an ordinary purchaser. — Scofield 
 V. Browne, 158 Fed. 305 : 85 C. C. A. 556. 
 
 Gorham v. White, 14 Wall. 511.
 
 302 THE FIXED LAW OF PATENTS § 332 
 
 When the question involving the infringement of a design patent is pre- 
 sented the court is especially entitled to have put before it exhibits to which 
 the testimony of experts may be referred, and by means of which it may 
 make its own comparison and deductions. — Gray v. Grinberg, 159 Fed. 
 138; 86 CCA. 328. 
 
 § 332. Invention. 
 
 Utility as an element of invention may be considered. — Smith v. Whit- 
 man, 148 U. S. 674; 37 L. Ed. 606; 13 S. Ct. 768. 
 
 Discriminating 'and limiting Gorham v. White, 81 U. S. 511. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Northrup v. Adams, 2 B. & A. 567; 
 Foster v. Crossin, 44 Fed. 62; Jennings v. Keble, 10 Fed. 669; Ripley v. Elson, 
 49 Fed. 927. 
 
 The true test of identity of design is sameness of appearance — in other 
 words sameness of effect upon the eye. — Smith v. Whitman, 148 U. S. 674; 
 37 L. Ed. 606; 13 S. Ct. 768. 
 
 Jennings v. Kibbe, 10 Fed. 669; Gorham v. White, 81 U. S. 511; Ripley v. 
 Elson, 49 Fed. 927. 
 
 The difference in the curve at the bottom is one which would suggest itself 
 to any workman, and does not involve that exercise of inventive genius 
 which is as necessary to support a design patent as a mechanical patent. — 
 Westinghouse v. Triumph, 97 Fed. 99; 38 C C. A. 65. 
 
 Smith V. Saddle Co., 148 U. S. 674; Northrup v. Adams, 2 Ban. & A. 567; 
 Fed. Cas. 10,328; Foster v. Crossin, 44 Fed. 62. 
 
 The exercise of the inventive faculty is just as essential to the validity of 
 a design patent as it is to the validity of a patent for any kind of a mechanical 
 device. — Myers v. Sternheim, 97 Fed. 625 ; 38 C C A. 345. 
 
 Smith V. Saddle, 148 U. S. 674; Hammond v. Agricultural Works, 7 Fed. 716. 
 
 To entitle an inventor to the benefit of the section in regard to design 
 patent, " there must be originality, and the exercise of the inventive faculty." 
 " Mere mechanical skill is insufficient. There must be something akin to 
 genius, — an effort of the brain as well as the hand." — Gary v. Neal, 98 
 Fed. 617; 39 C C. A. 189. 
 
 Smith V. Saddle Co. 148 U. S. 674. 
 
 Assembling old elements to form a design more convenient and useful with- 
 out actual invention does not constitute novelty. — American v. Newgold, 
 113 Fed. 877; 51 C C A. 501. 
 
 If there be a doubt as to whether the departures constituted invention, 
 it should be resolved in favor of the patent, not only by reason of the pre- 
 sumption arising from the grant, but also because the patented construction 
 was adopted and retained on account of the novelty of the design, not- 
 withstanding certain objections resulting from its peculiar conformation, 
 and, furthermore because of the evidence as to the much greater popularity 
 of the new design, because of its attractive appearance, and, finally, because 
 of the actual bodily imitation by defendants of the exact^ patented con- 
 struction, under circumstances which indicate an inequitable attempt 
 to appropriate the benefits shown to have resulted from the harmonious 
 arrangement and proportions of the patented design. — West v. Frank, 
 149 Fed. 423; 79 C C A. 359.
 
 §§ 333-334 DESIGNS 303 
 
 1 
 
 § 333" Mechanical. 
 
 Section 4922 of the Revised Statutes was not intended to embrace a patent 
 for such a design as is set forth in the design letters patent under considera- 
 tion. It was intended, in order that a design might be patentable, that it 
 should of itself, as an artistic configuration, present something new and use- 
 ful from an aesthetic point of view. Within the meaning of the act, there is 
 nothing artistic, ornamental, or decorative in the design of a horseshoe 
 calk; it is essentially a mechanical, and not an aesthetic, device. It is im- 
 possible to suppose that it should be bought or used because of its aesthetic 
 features. Its success as a calk would depend upon its useful, and not its 
 artistic, character. — Williams v. Kemmerer, 145 Fed. 928; 76 C. C. A. 466. 
 
 Rowe V. Blodgett, 103 Fed. 873; 112 Fed. 61. 
 
 § 334. Novelty. 
 
 A design is to be tested as to its novelty and infringement as a whole. 
 
 — Dobson V. Dornan, 118 U. S. 10; 30 L. Ed. 63; 6 S. Ct. 946. 
 
 In order to be novel the design must be the result of industry, effort, 
 genius or expense, and new or original as applied to articles of manufacture. 
 
 — Smith V. Whitman, 148 U. S. 674; 37 L. Ed. 606; 13 S. Ct. 768. 
 
 The mere adaptation of shape without producing any novel and general 
 effect, is not invention. — Paine v. Snowden, 50 Fed. 776; 1 C. C. A. 122. 
 Gorham v. White, 14 WaU. 511. 
 
 The design was for the grouping of certain Odd Fellows symbols in the 
 panel of a rug. The court held: The learned judge below said that if the 
 question of novelty and invention, under the terms of the statute, had been 
 raised for the first time in this suit, his judgment possibly would have been 
 different; and we strongly inchne to the opinion that, but for the prior ad- 
 judications upon the subject, a finding that this patent is not supported 
 by invention, within the meaning of the law, would have been correct. — 
 Stewart v. Smith, 58 Fed. 580; 7 C. C. A. 380. 
 
 The novelty of a design is to be tested, not by investigation of the means 
 employed for its creation, but by ocular comparison of the design itself 
 with prior designs which are alleged to be substantially the same, and when 
 tried by this test the novelty of the design covered by the patent in suit is 
 made quite apparent. — Braddock v. Macbeth, 64 Fed. 118; 12 C. C. A. 70. 
 
 To entitle a party to a patent for a design under this act there must be 
 originality and the exercise of the inventive faculty. This is so because the 
 statute so declares, and because it has been so decided by the Supreme Court. 
 In Smith v. Saddle Co. 148 U. S. 674, the court said: " The exercise of the 
 inventive or originative faculty is required, and a person cannot be permitted 
 to select an existing form, and simply put it to a new use, any more than he 
 can be permitted to take a patent for the mere double use of a machine. If, 
 however, the selection and adaptation of an existing form is more than the 
 exercise of the imitative faculty, and the result is in effect, a new creation, 
 the design may be patentable." 
 
 In the case at bar, what the plaintiff did, and all that he did, was to sub- 
 stitute for the platform which had pre\'iously been used on the rear end of 
 existing street cars, an open compartment precisely similar to the open 
 compartment which was in use at the front end of these cars. This was noth- 
 ing more than the exercise of the imitative faculty, and did not rise to the 
 dignity of invention. — Hammond v. Stockton, 70 Fed, 716; 17 C. C. A. 356.
 
 304 THE FIXED LAW OF PATENTS § 335 
 
 To entitle a person to a patent under section 4929 R. S., the design must 
 be new, useful, and original, in shape or configuration. It is not shown to 
 be either new or original, and such changes in outline as are visible to the 
 eye relate merely to details, and do not involve any invention. — Koenen v. 
 Drake, 101 Fed. 4G6; 41 C. C. A. 466. 
 
 § 335- Patentability. 
 
 It is the appearance itself which attracts attention and calls out favor 
 or dislike. It is the appearance itself, no matter by what agency caused, 
 that constitutes mainly, if not entirely, the contribution to the public which 
 the law deems worthy of recompense. The appearance may be the result 
 of peculiarity of configuration, or of ornament alone, or of both conjointly; 
 but in whatever way produced, it is the new thing or product, which the 
 patent law regards. To speak of the invention as a combination or process, 
 or to treat it as such, is to overlook its pecuUarities. — Gorham v. White, 
 81U. S. 511; 20L. Ed. 731. 
 
 Modified: Smith v. Whitman, 148 U. S. 674. 
 
 The thing invented or produced, for which a patent is given, is that which 
 gives a peculiar or distinctive appearance to the manufacture, or article 
 to which it may be applied, or to which it gives form. — Gorham v. White, 
 81 U. S. 511; 20 L. Ed. 731. 
 
 Modified: Smith v. Whitman, 148 U. S. 674. 
 
 If the patented design consisted in a transfer of an old form which had 
 existed upon something else to a watch case, or in the mere adaptation 
 by imitation of a pre-existing form to a watch-case, it would not have been 
 invention. If the adaptation " is more than the exercise of the imitative 
 faculty, and the result is in effect a new creation, the design may be pat- 
 entable." — Untermeyer V. Freund, 58 Fed. 205; 7 C. C. A. 183. 
 
 Smith V. Saddle Co. 148 U. S. 674. 
 
 The statute which protects inventors requires the production of a new and 
 pleasing design. The invention demanded consists in the conception and 
 production of a design which can be characterized. — Caldwell v. Powell, 
 73 Fed. 488; 19 C. C. A. 592. 
 
 N. Y. V. N. J. 137 U. S. 446. 
 
 A claim for the general design of a scroll as applied to ornamentation 
 of stoves is too broad to be sustained in such form. — Soehner v. Favorite, 
 84 Fed. 182; 28 C. C. A. 317. 
 
 When so placed (a washer for thill-couplings) it is as much out of sight as 
 was the horse-shoe calk in Rowe v. Blodgett, 112 Fed. 61, with which cause 
 the one at bar seems to be on all fours. It is another instance of the " lib- 
 eral " if not lax practice in issuing design patents which was therein referred 
 to. The washer, Hke the horse-shoe calk, is not intended for display, but 
 for an obscure use. There is no evidence that its form appeals in any way 
 to the eye, or serves to commend it to purchasers and users as a thing of 
 beauty. There is not a scintilla of evidence that the sale of a single washer 
 was ever induced by any attractiveness in its appearance. Functional 
 utility entitled the patentee to the mechanical patent already discussed, 
 but mere functional utility did not entitle him to a design patent for the 
 same article. — Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669. 
 
 There is nothing in the shape or construction of the basket of the patent 
 in suit which " appeals in any way to the eye, or serves to commend it to
 
 §5 336-337 DESIGNS 305 
 
 purchasers and users as a thing of beauty." It is not useful as a design. 
 " There must be 'originaUty and beauty; mere mechanical skill is not suffi- 
 cient.' " — Roberts v. Bennett, 136 Fed. 193; 69 C. C. A. 533. 
 
 Bradley v. Eccles, 126 Fed. 945; Rowe v. Blodgett, 103 Fed. 873; Bevin v. 
 Starr, 114 Fed. 362; Eaton v. Lewis, 115 Fed. 635, affd. 127 Fed. 1018. 
 
 If the plaintiff was entitled to any patent for the advantages claimed for 
 such a construction, they were covered by the prior mechanical patent. 
 " Functional utility entitled the patentee to the mechanical patent already 
 discussed, but mere functional utility did not entitle him to a design patent 
 for the same article." — Roberts v. Bennett, 136 Fed. 193; 69 C. C. A. 533. 
 
 Bradley v. Eccles, 126 Fed. 945; Royal v. Art, 121 Fed. 128. 
 
 § 336. Penalty. 
 
 The act of Feb. 4, 1887, which imposes a penalty for the infringement of 
 a design is not unconstitutional on the ground that a court of equity will not 
 enforce a penalty or forfeiture. — Untermeyer v. Freund, 58 Fed. 205 ; 7 
 C. C. A. 183. 
 
 Root V. Railway, 105 U. S. 189; Story Eq. Jus. 2,Sec.l319; Stephens v. Gladding, 
 15 How. 454; Stephens v. Cady, 2 Curt. 200. 
 
 The patent is for a single design. It is true that, in order to protect the 
 patentee from any form of infringement, the patent has three claims. There 
 was, however, only one border and sale. It was a single transaction. In no 
 view, then, that can be taken of the case, are the defendants to be subjected 
 to two penalties. — Gimbel v. Hogg, 97 Fed. 791 ; 38 C. C. A. 419. 
 
 In law and in fact, the defendants were simply purchasers from the manu- 
 facturer and sellers to the government. In making the sale, the defendants 
 acted in perfect good faith, in utter ignorance of any infringement of any 
 patent rights, and without any knowledge whatever that the manufacturer 
 had applied to the carpeting the complainant's design without license. We 
 are, then, of opinion that the defendants are not chargeable with any penaltv, 
 under the act of Feb. 4, 1887. — Gimbel v. Hogg, 97 Fed. 791 ; 38 C. C. A. 
 419. 
 
 By the plain terms of the statute, the penalty is incurred by the seller of 
 an article to which a patented design has been applied wdthout license, only 
 where he sells " knowing that the same has been so appUed." — Gimbel v. 
 Hogg, 97 Fed. 791 ; 38 C. C. A. 419. 
 
 Such knowledge is not to be imputed to the seller from the " notice to 
 the public " by the marking required of the patentee by section 4900, Rev. 
 St. It may be reasonable enough to hold such constructive notice sufficient 
 as against the manufacturer who applied the design; for, if he did so without 
 license, he must have known the fact. But the pubHc notice by marking, 
 under section 4900, gives no information whatever to a seller of an infringe- 
 ment committed by the manufacturer, and that section had no such purpose. 
 — Gimbel v. Hogg, 97 Fed. 791 ; 38 C. C. A. 419. 
 
 PirkI V. Smith, 42 Fed. 410; Dunlap v. Schofield, 152 U. S. 244; Smith V. 
 Stewart, 55 Fed. 481; Stewart v. Smith, 58 Fed. 580. 
 
 § 337. Miscellaneous. 
 
 A machine for producing a design may be patented, and a claim covering 
 the means for producing such design is not a design claim within the meaning 
 of the statute. — Clark v. Bonsfield, 77 U. S. 133; 19 L. Ed. 862.
 
 306 THE FIXED LAW OF PATENTS § 337 
 
 It would seem that an architectural design, such as an improvement in 
 the construction of jails, is not patentable. — Jacobs v. Baker, 74 U. S. 295; 
 19 L. Ed. 200. 
 
 It has a claim for an entire pattern, and then a separate claim for each 
 of the eighteen component parts making up the whole. The bill alleges in- 
 fringement by making and selUng of the " invention," and of carpets con- 
 taining the " invention." Even if the defendants can raise this point after 
 a decree pro confesso (see Thompson v. Wooster, 114 U. S. 104) the patent 
 must be held valid at least for the purposes of this case. — Dobson v. Hart- 
 ford, 114 U. S. 439; 29 L. Ed. 177; 5 S. Ct. 945. 
 
 Classification of designs. — Smith v. Whitman, 148 U. S. 674; 37 L. Ed. 
 606; 13 S. Ct. 768. 
 
 That marking patented is necessary to recovery of damages in the ab 
 sence of a specific notice, see Dunlap v. Schofield, 152 U. S. 244; 38 L. Ed. 
 426; 14 S. Ct. 576. 
 
 The patent contains no separate claim for the border, as in Dobson v. 
 Carpet Co., 114 U. S. 439, and the defendant's combination of his central 
 panel with the complainant's border, cannot be held to be an infringement 
 unless complainant first produced such combination and exhibited it in 
 his patent so clearly and fully that one skilled in the art would understand 
 that it was that specific combination which the patent claimed. As none 
 of the defendant's mats infringe the only specific design exhibited in the 
 patent and shown in the drawing the decree is reversed. — New York v. 
 New Jersey, 53 Fed. 810; 4 C. C. A. 21. 
 
 Form and shape are elements of a design. — Gaskill v. Myers, 81 Fed. 854; 
 26 C. C. A. 642. 
 
 Hammond v. Agricultural Works, 70 Fed. 716. 
 
 Note: This is both true and untrue. While form and shape are of the es- 
 sence of a design, form and shape are never in and of themselves the essence 
 of a design. 
 
 Whether a form which gives more increased beauty can be the subject 
 of a vahd design patent, quaere. — Soehner v. Favorite, 84 Fed. 182; 28 
 C. C. A. 317. 
 
 A design which, by its peculiar construction, would convey a false idea 
 of the utility of the article would be a species of deception which could hardly 
 be said to be an improvement in a useful art, which the patent laws are 
 designed to encourage. — Soehner v. Favorite, 84 Fed. 182; 28 C. C. A. 317. 
 
 We should think it very doubtful whether the word " useful," introduced 
 by revision of the patent laws into the statute, is to have the same meaning 
 that it has in the section providing for patents for useful inventions. The 
 whole purpose of Congress, as pointed out by Mr. Justice Strong, speaking for 
 the Supreme Court, in the case of Gorham Co. v. White, 14 Wall. 511. was to 
 give encouragement to the decorative arts. — Westinghouse v. Triumph, 97 
 Fed. 99; 38 C. C. A. 65. 
 
 The designers of articles of manufacture not otherwise entitled to receive 
 design patents cannot justify the issuance of such patents on any theory 
 that the design is a trademark. — Rowe v. Blodgett, 112 Fed. 61 ; 50 C. C. A 
 120.
 
 i 338 DESTRUCTION OF INFRINGING MACHINE 307 
 
 The practice of the Patent Office in issuing design patents seems not to 
 have been uniform. Prior to 1871 it was " not only hberal, but lax," until 
 in a carefully considered opinion, commissioner Leggett (Ex parte Parkin- 
 son, 1871 Dec. Com. Pat. 251) conformed it to a construction of the law 
 which substantially found approval in the cases above cited (Northrup v. 
 Adams, 2 Ban. & A. 567; Smith v. Saddle Co., 148 U. S. 679; Ex Parte 
 Parkinson, supra). In another case, in 1873 (In re Seaman, 4 O. G. 691), 
 the same commissioner indicated the test to be applied by examiners when 
 an article of manufacture is presented with the request for a design patent : 
 
 " Is its form, without reference to the function of the article, intended to 
 be ornamental, and is the article itself a thing which may, for any practical 
 purpose, have a merely ornamental configuration, and therefore have, in 
 that sense, sufficient utility to warrant the grant of a patent? " 
 
 It would seem from the patent in suit that this test is no longer applied, 
 and that the practice of the office has again become " not only liberal, but 
 lax." — Rowe v. Blodgett, 112 Fed. 61 ; 50 C. C. A. 120. 
 
 The drawing is about seven inches long and two inches wide and shows 
 alternate sections of close and open wea\'ing about three-quarters of an inch 
 wide, separated by longitudinal strands, those on the outside being of 
 greater width than the others. The outside sections have the open 
 weave, are a little over an inch in width and are subdivided by two 
 longitucUnal strands about five-sixteenths of an inch apart. The central 
 section shows three bands of close weaving and two of open weaving. No 
 one contends that the design as shown in the drawings could be appUed, 
 without change, to a bed-spring intended for actual use. A design patent 
 for wliich such an elastic construction is asserted can hardly be said to deal 
 fairly with the public. The public is entitled to know what it may and naay 
 not do and the patent in hand fails to give this information as explicitly 
 as it should. — Tompkins v. New York, 159 Fed. 133; 86 C. C. A. 323. 
 
 DESTRUCTION OF INFRINGING MACHINE. 
 An Obsolete Rule § 338 
 
 § 338. An Obsolete Rule. 
 
 That when the entire machine is an infringement it may be ordered de- 
 livered up to be destroyed. — Birdsell v. ShaUol, 112 U. S. 485; 28 L. Ed. 
 768; 5S. Ct. 244. 
 
 To the contrary, see American v. Kitsell, 35 Fed. 521. 
 
 Among the prayers of the bill was one that the infringing machines should 
 be delivered up to be destroyed. This was an unusual prayer, although, of 
 course, not an unwarranted one if the circumstances called for it. It was 
 only, however, by inadvertence that it was sanctioned here ; and application 
 ha\ing been made to reform the mandate so as to exclude this relief, it will 
 be recalled and corrected accordingly. — American v. Mills, 162 Fed. 147. 
 
 American v. KitseU, 35 Fed. 521; BirdseU v. Shaliol, 112 U. S. 485. 
 
 DISCLAIMER. 
 
 Purpose and Effect § 344 
 
 Miscellaneous Rules § 345 
 
 See — Abandonment § 1; Costs § 274; 
 
 Statutes § 339 
 Delav ? 340 
 Effect § 341 
 Failure to File § 342 
 Pending Suit § 343 
 
 Double Patenting § 357; Reissiie 
 882
 
 308 THE FIXED LAW OF PATENTS §§ 339-340 
 
 § 339- Statutes. 
 
 When judgment or decree is rendered for the plaintiff or complainant, 
 in any suit at law or in equity, for the infringement of a part of a patent, 
 in which it appears that the patentee, in his specification, claimed to be the 
 original and first inventor or discoverer of any material or substantial part 
 of the thing patented, of which he was not the original and first inventor, 
 no costs shall be recovered unless the proper disclaimer, as provided by the 
 patent laws, has been entered in the Patent Office before the suit was brought. 
 — R. S. 973. 
 
 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 discoverer, his patent shall 
 be valid for all that part which is truly and justly his own, provided the same 
 is a material or substantial part of the thing patented; and any such pat- 
 entee, his heirs or assigns, whether of the whole or any sectional interest 
 therein, may, on payment of the fee required by law, make disclaimer of 
 such parts of the thing patented as he shall not choose to claim or to hold 
 by virtue of the patent or assignment, stating therein the extent of his in- 
 terest in such patent. Such 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. — R. S. 4917. 
 
 Section 4922 is, substantially, a combination and repetition of sections 973 
 and 4917. 
 
 The effect of failure to disclaim as a bar to costs is considered also under the 
 title Costs. 
 
 § 340. Delay. 
 
 Considering that the question of the validity of the new claim in the 
 reissue is a question of law upon the face of the patent, and that its validity 
 has been sanctioned by the Commissioner of Patents in granting the reissue, 
 and upheld by the circuit court, there has been no unseasonable delay in 
 entering a disclaimer; for the plaintiffs were not bound to disclaim until 
 after a judgement of this court upon the question. — Gage v. Herring, 107 
 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. 
 
 O'Reilly v. Morse, 15 How. 62, 120; Seymour v. McCormick, 19 How. 96. 
 
 Upon seasonably recording in the Patent Office a disclaimer, the patentee 
 may maintain a suit upon the part which he is entitled to hold, although in 
 a suit brought before the disclaimer he cannot recover costs. — Gage v. 
 Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. 
 
 R. S. 4917, 4922; O'Reilly v. Morse, 15 How. 62, 120; Vance v. Campbell, 
 1 Black, 427.' 
 
 The complainant failed to file a disclaimer until after the case had been 
 once before the circuit court of appeals, and it was contended that this 
 disclaimer came too late to save complainant's rights. Held: But the 
 circuit court in that case, with such evidence before it, did not consider 
 disclaimer necessary. It was only when the decision of this court was
 
 § 341 DISCLAIMER 309 
 
 filed, that the owners of the patent were appraised of the necessity of dis- 
 claimer and they filed it within two months thereafter. They certainly 
 acted with reasonable promptness. — Thompson v. Bushnell, 96 Fed. 238; 
 37 C. C. A. 456. 
 
 § 341. Effect of. 
 
 Matters properly disclaimed cease to be a part of the invention; and 
 it follows that the construction of the patent must be the same as it would be 
 if such matters had never been included in the description of the invention 
 or the claim of the specification. — Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 
 34. 
 
 16 Stat, at L. 206; Seed t'. Higgins, 8 El. & Bl. 767; O'Reilly v. Morse, 15 How. 
 121; Taylor v. Archer, 8 Blatchf. 317. 
 
 We are aware of no principle which will permit a patent to be defeated for 
 want of novelty in respect to the subject-matter which has been eliminated 
 from it by disclaimer, — Schwarzwalder v. N. Y., 66 Fed. 152; 13 C. C. A. 
 380. 
 
 The office of a disclaimer is to enable the patentee to save himself 
 from the peril of the defense of want of novelty, blatters which have been 
 properly disclaimed cease to be a part of the invention. — Schwarzwalder 
 V. N. Y'., 66 Fed. 152; 13 C. C. A. 380. 
 
 Dunbar v. Meyers, 94 U. S. 194. 
 
 The literal effect of a disclaimer is to confine the claim to a method in 
 which no other elements are employed except such as those mentioned. It is 
 to be observed, however, that the part disclaimed is not part of the descrip- 
 tive matter, but a recital intended to enlarge the scope of the claim. The 
 disclaimer consequently operates only to expunge from the claim what other- 
 wise would, by force of the recital, be incorporated into it constructively.* 
 Obviously it was intended to obliterate the recital from the patent, and to 
 have no other effect. The patent, after the disclaimer, is to be read exactly 
 as though the recital had never been inserted. — Schwarzwalder v. N. Y., 66 
 Fed. 152; 13 C. C. A. 380. 
 
 While a disclaimer in the text of the specification, admitting known meth- 
 ods of performing a given function, precludes a broad claim for means for 
 performing that function, it does not preclude a claim for specific and novel 
 means for performing the same. — Hillborn v. Hale, 69 Fed. 958 ; 16 C. C. A. 
 569. 
 
 The filing of a disclaimer does not change the invention claimed in the 
 patent, but distinguishes what is new from what is old. — Albany v. Worth- 
 ington, 79 Fed. 966j 25 C. C. A. 258. 
 
 Chem. Wks. v. Lauer, Fed. Cas. 12,135. 
 
 That a disclaimer may operate to defeat a patent previously adjudicated 
 and held vaUd, see Brunswick v. Klumpp, 131 Fed. 255; 65 C. C. A. 447. 
 
 That a disclaimer may operate to raise a presumption that the invention 
 was not novel, or that the alleged infringement was not within the scope 
 of the patent after disclaimer, see Societe v. Lueders, 142 Fed. 753 ; 74 C. C. A. 
 15.
 
 310 THE FIXED LAW OF PATENTS §§ 342-343 
 
 § 342. Failure to File. 
 
 No disclaimer has yet been entered, but the delay is not unreasonable. 
 The objectionable claim was sanctioned by the office, held valid by a circuit 
 court, and diiTered upon here. Under such circumstances the patentee has 
 a right to insist upon it, and not disclaim until the highest court to which it 
 could be carried had pi-onounced its judg(!ment. The omission to disclaim 
 does not render the patent altogether void; and he is entitled to proceed in 
 this suit for an infringement of that part of his invention which is legally 
 claimed and described, but he cannot recover costs. — O'Reilly v. Morse, 
 15 How. 62; 14 L. Ed. 001. 
 
 The complainant having failed to file a disclaimer of the invalid claim of his 
 reissue, each party will bear his own costs in this court and one-half the ex- 
 pense of printing the record. — Yale v. Sargent, 117 U. S. 536; 29 L. Ed. 
 954; 6 S. Ct. 934. 
 
 Silsby V. Foote, 20 How. 378. 
 
 On the assumption that it was incumbent on him to disclaim, if his oniis- 
 sion to do so was the result of unreasonable neglect or delay, the complain- 
 ants were not entitled to recover anything, while, if there was no such neglect 
 or delay, they were entitled to recover damages but no costs. No disclaimer 
 was necessary to the recovery either of damages or of costs unless Williames 
 in those 3 claims or one or more of them, included something to which he 
 was not entitled. — McNeely v. Williames, 96 Fed. 978; 37 C. C. A. 641. 
 
 The effect of these provisions (R. S. sees. 973; 4922) is to save the claims 
 which are valid if they are definitely distinguishable from those parts of the 
 patent claimed without right, whether there has been disclaimer or not. 
 But if there has been no disclaimer entered in the Patent Office before suit 
 brought it is specifically provided that the patentee shall not recover costs. 
 — Jolinson V. Foos, 141 Fed. 73; 72 C. C. A. 105. 
 
 O'Reilly v. Morse, 15 How. 120; Seymour v. McCormick, 19 How. 97; Gage 
 V Herring, 107 U. S. 640; Metallic v. Brown, 110 Fed. 665; Fairbank v. Stickney, 
 123 Fed. 79; Kahn v. Starrels, 136 Fed. 597; Ide v. Trorlicht, 115 Fed. 137. 
 
 § 343. Pending Suit. 
 
 Under the act of IS37, disclaimers could be made as well after as before 
 the commencement of suit. It would, in such case, be the duty of the court 
 to see that the defendant was not injuriously surprised and to impose such 
 terms as right and justice might require. The question of unreasonable 
 delay would be open for the consideration of the court, and the complainant 
 could recover no ciosts. We see no reason for turning a party out of court 
 to renew the litigation after fiUng the disclaimer, thus subjecting both parties 
 to the delay and expense whi(!h must necessarily follow, and without any 
 benefit to either. — Smith v. Nichols, SS U. S. 112; 22 L. Ed. 566. 
 
 Tuck V. Bramhill, 6 Blatchf. 104; Silsby v. Foote, 14 How. 220; Aikm ?'. 
 Dolan. 3 Fish, 197; Taylor v. Archer; 8 Blatchf. 315; Myers v. Frame, 8 Blatchf. 
 446; Guyon v. Serrill, 1 Blatchf. 244; Hall v. Wiles, 2 Blatchf. 194. 
 
 Pending suits may proceed, but the disclaimer, when recorded, becomes 
 a part of the original specification and must he taken into account in con- 
 struing the patent, and in ascertaining the rights of the- parties to the suit, 
 unless it appears that the effect of the disclaimer is to enlarge the nature of 
 the invention, and prejudice the rights of the respondents. — Dunbar v. 
 Meyers, 94 U. S. 187; 24 L. Ed. 34,
 
 5 344 DISCLAIMER 311 
 
 Perry v. Skinner, 1 Web. P. C. 253; Ralston v. Smith, 9 C. B. (N. S.) 117; 
 Smith V. Nichols, 21 Wall. 117; Guyon v. Serill, 1 Blatchf. 245; Hall v. Wiles, 
 2 Blatchf. 198. 
 
 Had the purpose of the disclaimer been to reform or alter the description 
 of the invention, or convert the claim from one thing into something else, 
 it might have been objectionable, as patents can only be amended for mis- 
 takes of this kind by a reissue. But the disclaimer in this case appears to 
 have been made to obviate an ambiguity in the specification, and with no 
 idea of obtaining the benefit of a reissue. If the clauses had the effect of 
 broadening the patent the disclaimer removes the objection. If they did not, 
 the disclaimer could do no harm, and cannot be made the subject of criti- 
 cism. — Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 § 344. Purpose and Effect of. 
 
 The law which requires and permits disclaimer is not penal but remedial. 
 It is intended for the protection of the patentee as well as the public, and 
 ought not to receive a construction that would restrict its operation within 
 narrower limits than its words fairly import. — O'Reilly v. Morse, 15 How. 
 62; 14 L. Ed. 601. 
 
 Whether the patent is illegal in part because he claims more than he has 
 sufficiently described, or more than he invented, he must in either case 
 disclaim, in order to save the portion to which he is entitled ; and he is al- 
 lowed to do so when the error was committed by mistake. — O'Reilly v. 
 Morse, 15 How. 62; 14 L. Ed. 601. 
 
 The reasonable presumption is that the disclaimer was inserted in the 
 patent subsequently granted, because it had been previously invented by 
 another. — Ashcroft v. Boston, 97 U. S. 189; 24 L. Ed. 982. 
 
 It is a patentee who "has claimed more than that of which he was the 
 original or first inventor or discoverer," and only " such patentee" or his 
 assigns who can make a disclaimer; and the disclaimer can be a disclaimer 
 only " of such parts of the thing patented as he shall not choose to claim or 
 hold by virtue of the patent or assignment." A disclaimer can be made 
 only when something has been claimed of which the patentee was not the 
 original or first inventor and when it is intended to limit a claim in respect 
 to the thing so not originally or first invented. It is true that in so disclaim- 
 ing or limiting a claim descriptive matter on which the disclaimed claim 
 is based, may, as incidental, be erased in aid of or as auxiliary to the dis- 
 claimer. But the statute expressly limits a disclaimer to a rejection of some- 
 thing before claimed as new or as invented, when it was not new or invented 
 and which the patentee or his assignee no longer chooses to claim or hold. 
 It is true that this same end may be reached by a reissue, when the patentee 
 has claimed as his own invention more than he had a right to claim as new, 
 but, if a claim is not to be rejected or limited, but there is merely " a defective 
 or insufficient specification," that is, description, as distinguished from a 
 claim, the only mode of correcting it was and is by a reissue. — Union v. 
 U. S. 112 U. S. 624; 28 L. Ed. 828; 5 S. Ct. 475. 
 
 A disclaimer is usually and properly employed for the surrender of a 
 separate claim in a patent, or some other distinct and separate niatter, 
 which can be exscinded without mutilating or changing what is left 
 standing. Perhaps it may be used to limit a claim to a particular 
 class of objects, or even to change the form of a claim which is too
 
 312 THE FIXED LAW OF PATENTS §344 
 
 broad in its terms; but certainly it cannot bs used to change the 
 character of the invention. And if it requires an amended speci- 
 fication or supplemental description to make an altered claim intelligible 
 or relevant whilst it may possibly present a case for a surrender and reissue, 
 it is clearly not adapted to a disclaimer. A man cannot by merely filing 
 a paper drawn by his soUcitor, make to himself a new patent or one for a 
 different invention from that which he has described in his specification. 
 — Hailes v. Albany, 123 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 262. 
 
 The object of 4917 is to enable the patentee to disclaim what he has not 
 invented; and 4922 is to legalize and uphold suits brought on patents men- 
 tioned in 4917. — Hailes v. Albany, 123 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 262. 
 
 A disclaimer cannot be employed to amend or revise the grant. Such 
 change should be made by other proceedings. — CoUins v. Goes, 130 U. S. 56; 
 32 L. Ed. 858; 9 S. Ct. 514. 
 
 We think this section (4917) broad enough to cover disclaimers made to 
 avoid the effect of having included in the patent more devices than could 
 properly be made the subject of a single patent. The power to disclaim is a 
 beneficial one, and ought not to be denied except where it is resorted to for 
 a fraudulent and deceptive purpose. — Sessions v. Romadka, 145 U. S. 29; 
 36L. Ed. 609; 12 S. Ct. 799. 
 
 Tuck V. BramhiU, 6 Blatchf. 95; Hailes v. Albany, 123 U. S. 582; Reed v. 
 Cutter, 1 Story, 590; Wyeth v. Stone, 1 Story, 273; Gunson v. Sewell, 1 Blatchf. 244; 
 Hall V. Wiles, 2 Blatchf. 194; Smith v. Nichols, 88 U. S. 112; Dunbar v. Meyers, 
 91 U. S. 187. 
 
 Does not give any increased validity to a patent. — Grant v. Walter, 148 
 U. S. 547; 37 L. Ed. 552; 13 S. Ct. 699. 
 
 In the case under consideration the disclaimer was not of a claim but of 
 certain statements of the specification, which if retained might be construed 
 to have the effect of illegally broadening the second claim. We think there 
 is no force in the criticism that a disclaimer may not extend to a part of the 
 specification as well as to a distinct claim. — Carnegie v. Cambria, 185 U. S. 
 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 Hurlbut V. Schillinger, 130 U. S. 456; Schillinger v. Gunther, 17 Blatchf. 66; 
 Schwarzwalder v. N. Y. 66 Fed. 152. 
 
 Faure has filed a bill in equity for the repeal of the Brush patent, upon 
 the ground that he (Faure) was the prior inventor of the broad invention 
 described in his patent. The court found that he was not the inventor of 
 the subject of certain claims, and that upon filing his disclaimer, thus limiting 
 the first claim of his patent, the accumulator company was entitled to a 
 decree. The complainant in that case, being the defendant here, filed such 
 a disclaimer. After the disclaimer, this bill was dismissed upon Faure's 
 motion. Inasmuch as the defendant, being the owner of the Faure patent, 
 has, as the result of a direct issue on the subject of priority, disclaimed the 
 right of Faure, in this country to the invention, except as limited, a renewal 
 of a discussion of the question of priority is useless. — Electric v. Brush, 52 
 Fed. 130; 2 C. C. A. 682. 
 
 But, in differentiating his process from both of these, the patentee had 
 defined it so clearly, so specifically, so exactly, that there can be no room for 
 doubt as to what the process was which he actually did give to the world 
 in exchange for the monopoly to practise it, whatever doubt there may be
 
 § 345 DISCLAIMER 313 
 
 as to what he meant to give or the patent office meant to take. — Jackson v, 
 Birmingham, 79 Fed. 801 ; 25 C. C. A. 196. 
 
 That where the limitations or requirements of a disclaimer point to an 
 invention which would require an amended specification, or a supplemental 
 description, a disclaimer is not the proper method of correcting a patent, see 
 National v. Stecher, 81 Fed. 395; 26 C. C. A. 448. 
 
 Hailes v. Stove Co. 123 U. S. 582. 
 
 In considering the scope and effect to be given a disclaimer the same rules 
 are to be observed as in construing any other written instrument, and so as 
 to carry out the intention of the person executing it, as indicated by its lan- 
 guage when construed with reference to the proceedings of wliich it forms 
 a part. It cannot be read independently of its relation to the original speci- 
 fications, of which it becomes a part when recorded. — Graham v. Earl, 92 
 Fed. 155; 34 C. C. A. 267. 
 
 In view of the fact that the four varieties of this class of saws were well- 
 known in the art, and their differences clearly recognized, as the evidence 
 shows, no amended specification or supplemental description is required to 
 make the new claim intelligible and a disclaimer of the circular and back 
 saws, leaves the patent in force as to the other varieties of the class. — Thomp- 
 son V. Bushnell, 96 Fed. 238; 37 C. C. A. 456. 
 
 They do not disclaim anything. Their avowed purpose is " to limit the 
 scope of the letters patent to the mixing of molten metal preparatory to 
 further treatment." Tliis we find to be the limit of the patent as originally 
 granted. The disclaimers, therefore, do not comply with the statutory re- 
 quirements, that the patentee shall give up some material and sub- 
 stantial part of the thing patented of which he was not the original inventor. 
 — Cambria v. Carnegie, 96 Fed. 850; 37 C. C. A. 593. Reversed, 185 U. S. 
 403. 
 
 If the patent, when construed upon what stands " within its four corners," 
 claims more than the actual invention, the patentee must disclaim the excess 
 in order to save that to which he is really entitled. — Lamb v. Lamb, 120 
 Fed. 267; 56 C. C. A. 247. 
 
 § 345. Miscellaneous Rules. 
 
 After a case has been heard and decided upon its merits, the plaintiff 
 could not file disclaimer in court or introduce new evidence upon that or 
 any other subject except at a rehearing granted bv the court upon terms. — 
 Roemer v. Neumann, 132 U. S. 103; 33 L. Ed. 277^; 10 S. Ct. 12. 
 
 After the decision of the circuit court had been announced, a new solicitor 
 for the complainant was substituted, who thought that his client was en- 
 titled to the benefit of a disclaimer, and applied to the circuit court for a 
 re-hearing after it should have been filed. This motion was denied. The 
 proposed disclaimer, which has not been filed, is contained in the record. It 
 is not properly in the case, for, as the allowance of the motion for a re-hearing 
 on condition that the disclaimer should be filed was a matter of discretion, its 
 rejection is not a subject of appeal. — National v. Stecher, 81 Fed. 395; 26 
 C. C. A. 448. 
 
 Roemer v. Bemheim, 132 U. S. 103.
 
 314 THE FIXED LAW OF PATENTS §§346-347 
 
 DISCOVERY. 
 
 Statutory Origin § 346 I General Statement and Definition 
 
 ' § 347 
 
 § 346. Statutory Origin. 
 
 The constitutional provision (Art. I, Sec. 8) employs the term " discov- 
 eries," and that term has always been employed in Sec. 4886, thus: 
 
 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 * * * n^^y * * * obtain a patent therefor. 
 
 The term is also used elsewhere in the statutes, but these are the significant 
 instances. 
 
 § 347. General Statement and Definition. 
 
 From a practical point of view, it has little significance. No line of dis- 
 tinction has ever been drawn between invention and discovery. It is be- 
 lieved that a nice psychological distinction exists between the act of dis- 
 covery and the act of invention ; but since it is not the mental act, but the 
 disclosure of that act in material form, which constitutes a patentable dis- 
 covery or invention, such a refinement becomes wholly immaterial. Some- 
 times an effort has been made to make " discovery " synonymous with 
 "pioneer " or " generic " invention, as in the quotations below; but that 
 distinction does not hold in all cases. Many very simple and unimportant 
 improvements have been stumbled upon, and in that way " discovered," 
 without the ordinary laborious task of " puzzling out " or " working out '" 
 an invention ; but such discovery of an invention does not necessarily make 
 it a " pioneer " or " generic." 
 
 The subject of discovery as constituting patentable invention is fully 
 considered under the title Invention. 
 
 Such inventions partake of the nature of discoveries, either found out by 
 experiment or the result of a happy thought, which, when once expressed, 
 is plain to all intelligent persons, who could point out at once many devices 
 for making it effectual. Anyone can perceive the difference of such a case 
 from the invention of a labor saving machine, which is a mere combination 
 of certain mechanical devices to produce a desired manufacture in a cheaper 
 or better manner. — Burr v. Duryee, 68 U. S. 531 ; 17 L. Ed. 750. 
 
 McClurg V. Kingsland, 7 How. 202. 
 
 In doing this (applying the undulatory theory of sound to practice) both 
 discovery and invention, in the popular sense of those terms, were involved; 
 discovery in finding the art, and invention in devising means for making it 
 useful. For such discoveries and such inventions the law has given the dis- 
 coverer and the inventor the ri^ht to a patent as discoverer for the useful 
 art, process, method of doing a thing he had found ; and as inventor for the 
 means he had devised to make his discovery one of actual value. Other 
 inventors may compete with him for ways of giving effect to the discovery, 
 but the pew art he has found will belong to him and those claiming under 
 him during the life of his patent. If another discovers a different art or 
 method of doing the same thing, reduces it to practical use, and gets a patent 
 for his discovery, the new discovery will be the property of the new discov- 
 erer, and thereafter the two will be permitted to operate each in his own 
 way without interference by the other. The only question between them 
 will be whether the second discoverv is in fact different from the first. — 
 Telephone Cases, 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778.
 
 § 348 
 
 DIVISIONAL PATENTING 
 
 315 
 
 DIVISIONAL PATENTING. 
 
 {See § 52) 
 
 Statute and General Rule § 348 
 
 Co-Pending Applications § 349 
 
 Dates of Issue § 350 
 
 Distinguished from Double Patenting 
 
 §351 
 
 Extending Monopoly § 352 
 
 Generic and Specific Inventions § 353 
 
 Identity § 354 
 
 Second Patent Void § 355 
 
 See — Abandonment § 9; Antici'pa- 
 
 tion § 70; Reissue § 869 
 
 § 348. Statute and General Rule. 
 
 The only statutory authority for divisional patenting is that relating to 
 reissues. 
 
 * * * The Commissioner may, in his discretion, cause several patents to be 
 issued for distinct and separate parts of the thing patented, upon demand 
 of the applicant, and upon payment of the required fee for a reissue of each 
 of such reissued letters patent. * * * — R. S. 4916. 
 
 Of course it is well settled that double patenting is not permissible ; and 
 since the decision of U. S. ex rel. Steinmetz v. Allen, 192 U. S. 543, (infra) it 
 is clear that arbitrary requirement, such as separate patenting of machine 
 and product, and machine and process, is in violation of the statute. Further 
 than that, no general rule exists. In the nature of things, no general rule 
 can be framed to meet all cases. The " genus and species " rule which has 
 been a more or less popular doctrine in the Patent Office in recent years 
 is one of those theories possessing much abstract beauty, but little practi- 
 cal utility. It is believed that, on the one hand, some discretion must be 
 left to the Patent Office (Bennett v. Fowler, infra), and that, on the other, 
 some latitude must be left to the applicant (Thomson-Houston v. Elmira, 
 infra). A striking example of clerical technicality is shown in the case of 
 Benjamin v. Dale, quoted below; but errors of this kind are far more rare 
 than the errors of applicants in splitting up inventions and in double patent- 
 ing, as will be seen from the cases under Double Patenting. 
 
 Two valid patents for the same invention cannot be granted either to the 
 same or to a different party. — Miller v. Eagle, 151 U. S. 186; 38 L. Ed. 121 ; 
 14 S. Ct. 310. 
 
 Suffolk V. Hayden,-70 U. S. 315; James v. Campbell 104 U. S. 382; Hosier v. 
 Mosler, 127 U. S. 355; Underwood v. Gerber, 149 U. S. 224; Odiorne v. Gerber, 2 
 Mason, 28. 
 
 It may be that if the improvements set forth in both specifications had 
 been incorporated in one patent, the patentee taking care to protect himself 
 as to all his improvements by proper and several claims, it would have been 
 sufficient. It is difficult, perhaps impossible, to lay down any general rule 
 by wliich to determine when a given invention or improvement shall be 
 embraced in one, two or more patents. Some discretion must necessarily 
 be left to the head of the Patent Office. It is often a nice and perplexing 
 question. — Bennett v. Fowler, 75 U. S. 445; 19 L. Ed. 431. 
 
 Where the_ inventions were one and the same, the patent office was in 
 error in dividing the invention, and as it adjudged that plaintiff was the prior 
 inventor, he was the one entitled to the patent. — DuBois v. Kirk, 158 U. S. 
 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 Statement: The application was for process and apparatus; division was 
 required under rule 41 of the office; applicant appealed to examiner-in- 
 chief; the primary examiner refused to answer, and transmit the record;
 
 316 THE FIXED LAW OF PATENTS § 349 
 
 applicant petitioned the Commissioner and petition was denied. Mandamus 
 was then brought to compel the Commissioner to require the primary ex- 
 aminer to forward an appeal; this was dismissed by Supreme Court D. C. 
 on writ of error. 
 
 Held: It was the duty of the primary examiner to accord a hearing, or, 
 refusing to do so, to grant an appeal. It was the duty of the Commissioner 
 to compel an appeal. Held also: That rule 41 as amended Feb. 1, 1900, 
 providing, . 
 
 " Claims for a machine and its product must be presented m separate 
 applications. 
 
 " Claims for a machine and the process in the performance of which the 
 machine is used must be presented in separate applications," was bad and 
 in violation of 4886 R. S. — Steinmetz v. Allen, 192 U. S. 543; 48 L. Ed. 555; 
 24 S. Ct. 416. 
 
 While two or more inventions residing in the same combination or struc- 
 ture may be covered by a corresponding number of claims in a single patent, 
 the law does not require them all to be claimed in the same patent, and the 
 invention may, at the option of the patentee, be secured by different patents. 
 It is quite immaterial that both inventions originate at the same time and 
 form a single conception. — Thomson-Houston v. Elmira, 71 Fed. 396; 18 
 C. C. A. 145. 
 
 Cochrane v. Deener, 94 U. S. 780; Miller v. Mfg. Co., 151 U. S. 198. 
 
 This case is a striking example of the unfortunate result of too close ad- 
 herence to rule. Benjamin came to the Patent Office with a meritorious 
 invention — a simple one which was quite sufficiently described in a brief 
 specification. The specification and the drawings showed his cluster- 
 unit, by itself and also made practically a commercial article by the use of a 
 cover and switch; varieties of cover with and without bushing being shown. 
 He asked for seven claims. The logical way would have been to include 
 the genus and its varieties in the same patent and a half dozen claims would 
 have covered every possible combination which he was entitled to hold. — 
 Benjamin v. Dale, 158 Fed. 617; 85 C C. A. 439. 
 
 By the time the Patent Office got through with him, Benjamin was the 
 holder of four separate patents granted upon divisional applications split 
 off from his original one; the four patents together containing 98 claims. 
 It does not seem just that the patentee, who was powerless to obtain any 
 modification of the rule for dividing applications, should be made to suffer 
 from such misdirected energy. There seems sufficient authority to warrant 
 a construction, which will hold that these two patents, based on a single 
 original application and issued on the same day are to be treated as a single 
 one. — Benjamin v. Dale, 158 Fed. 617; 85 C. C. A. 439. 
 
 Note: Every lawyer who has prosecuted patent applications in certain 
 divisions of the Patent Office will welcome this holding. Wliile the great 
 majority of the examiners exercise their departmental functions in a con- 
 servative and considerate manner, there are some who suffer from the " mis- 
 directed energy," as the court savs, and particularly along those lines where 
 the applicant is the least able to counteract such activity by appeal or other- 
 
 § 349. Co-Pending Applications. 
 
 It is true that under well settled rules, inasmuch as the two patents were 
 pending in the patent office at the same time, and both of them were granted, 
 there is a prima facie presumption that each was properly granted. Never-
 
 § 349 DIVISIONAL PATENTING 317 
 
 theless, it is clear to us that both patents are for the same thing, so far as any- 
 inventive quaUty is concerned, and that only one of them can stand. — 
 Brooks V. Sacks, 81 Fed. 403; 26 C. C. A. 456. 
 Boyd V. Tool Co., 158 U. S. 260. 
 
 Even where each of several applications which subsequently ripen into , 
 patents to the same inventor discloses all the inventions claimed in all the 
 applications, and they are all pending at the same time, no one of the appli- 
 cations or patents can be ussd to anticipate any of the claims of the others 
 which it does not itself claim and secure. — Anderson v. Collins, 122 Fed. 
 451; 58 C. C. A. 669. 
 
 Ide V. Trorlicht, 115 Fed. 137; Walk. Pat. sec. 180; Westinghouse v. Dayton, 
 106 Fed. 724; Suffolk v. Hayden, 3 Wall. 315; Graham v. McCormick, 11 Fed. 
 859; Graham v. Mfg. Co., 11 Fed. 138. 
 
 When the patent first granted is distinctly and only for an improvement 
 on another invention which is already the subject of a prior apphcation 
 then pending, and on which a later patent is granted, the patent for the im- 
 provement in no wise interferes with the other apphcation or the patent 
 issued thereon. — Cleveland v. Detroit, 131 Fed. 853; 68 C. C. A. 233. 
 
 Dayton v. Westinghouse, 118 Fed. 573; Miller v. Eagle, 151 U. S. 186; Thom- 
 Bon-Houston v. Ohio, 80 Fed. 712; Palmer v. Lozier, 90 Fed. 734. 
 
 The patentee filed three applications successively and at separate times. 
 The claim of the patent in suit was, in substance, included in the first ap- 
 plication, and the construction was disclosed in all three applications. The 
 claim in suit materiahzed in the third application. Held: Under these cir- 
 cumstances, we think the third application should be regarded as an amend- 
 ment to the first, and both should be treated as a single continumg applica- 
 tion. However this may be, it is apparent that during the whole period from 
 the filing of the first application to the granting of the patent in suit, the 
 applicant was insisting upon his right to have a patent for the invention 
 specified in the claim in controversy, and that he never intended to relinquish 
 or abandon it. It is well settled that an inventor by describing an invention 
 in a patent granted to him does not preclude himself from patenting it 
 subsequently. His omission to claim what he describes may operate as a 
 disclaimer or an abandonment of the matter claimed; but it has no such 
 effect when it appears that the matter thus described but not claimed was 
 the subject of a pending apphcation in the Patent Office by him for another 
 patent. — Kinnear v. Wilson, 142 Fed. 970; 74 C. C. A. 232. 
 
 Thomson-Houston v. Elmira, 71 Fed. 396; Suffolk v. Hayden, 3 WalJ. 315; 
 Barbed Wire Case, 143 U. S. 275. 
 
 The first application was sufficiently broad to have carried the claims of 
 the second application. Six months after the first application was filed, 
 another apphcation was filed eventuating in the patent in suit. The first 
 application also went to patent. Held: The specifications in that applica- 
 tion for 564,586 (the first application) were full enough to wariant the makmg 
 of the claims here in controversy. At any time the application might have 
 been amended bv adding such claims, and in our opinion it is immaterial 
 that, instead of "thus amending it, he took the broader claims on another 
 application, filed while the first was pending. The second -may fairly be 
 considered a continuation of the first, and thus Berliner's apphcation ante- 
 dates the public use, and the facts will not sustain the contention that he 
 abandoned the invention here in suit. — Victor v. American, 145 Fed. 350; 
 76 C. C. A. 180.
 
 318 THE FIXED LAW OF PATENTS §350 
 
 § 350. Dates of Issue. 
 
 We do not understand this general doctrine to be denied, but it is said that 
 if, by some chance, the apphcation for the fundamental patent is delayed 
 in its course through the patent office until a patent on the evolved improve- 
 ment has issued, then the patent on the fundamental invention is void. In 
 cases where the delay in the issuing of the patent for the main invention 
 cannot be charged to the laches or fraud of the patentee, such a rule would be 
 a hard one ; and unless it is required by the express words of the statute, or by 
 the express holding of the Supreme Court, we should be inclined, if possible, 
 to avoid declaring it to exist. The contention of counsel for defendant in 
 this behalf instead of having the support of the authority of the Supreme 
 Court, is in the teeth of two decisions of that tribunal. — Thomson-Houston 
 V. Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Suffolk V. Hayden, 3 Wall. 315; Barb. Wire Pat., 143 U. S. 280. 
 
 (General rule by Judge Taft.) 
 
 We cannot yield to the argument based on such a distinction, because we 
 cannot accept its minor premise, to wit, that the later granting of the patent 
 for the main invention extends the monopoly of the earlier improvement 
 patent. The patent for the improvement expires in 17 years. After that 
 any one may use the improvement without infringing the patent issued upon 
 it. If he uses the improvement without a license to use the main invention he 
 is liable for the infringement, not of the patent for the improvement, but 
 of the patent for the main invention; and, in estimating the damages for the 
 same, the value of the main invention, and not that of the improvement, 
 would be the basis for estimating the damages. 
 
 It can make no difference in considering this question whether the patent 
 for the improvement issues to the patentee of the main invention or to 
 another. The right of the pubUc to use the improvement when the patent 
 on it expires is exactly the same, whether the patentees of the two inventions 
 are the same or not, because in each case the improvement can only be 
 used with the license of the patentee of the main invention. If the patentee 
 of the improvement is a stranger to the main invention, it is manifest that 
 he can derive no benefit from the limitation upon the use of his invention 
 after his patent expires, because of the patent on the main invention. Why, 
 then, does he derive an advantage if he happens to own the main patent? 
 The only advantage conferred by the issue of the patent for the main in- 
 vention is the legitimate monopoly for the statutory period of that invention, 
 and of no other. Did the personahty of the owner of two different patents 
 affect the validity of either, then the anomalous result would follow that 
 the owner of one patent would avoid it by acquiring ownership of another. 
 According to the argument of counsel, the patentees of the earlier improve- 
 ment patent and of the later main patent being the same person, the main 
 patent is void. Let us suppose that they were different persons, but that, 
 by mesne assignments, the two patents became the property of one person; 
 the effect upon the pubUc use of the improvement patent is exactly the same 
 as if the now owner had been the inventor and patentee of both. Does the 
 unity of title avoid the main patent, which was vaUd before? It must 
 do so if the argument of counsel for defendant in this behalf is to be 
 followed, for the effect of the unity of title is "to extend the monopoly " 
 of the earlier improvement patent in the sense in which counsel uses that 
 phrase. To our minds, this conclusion is reductio ad absurdum. The fact 
 that a patent for an improvement may expire before the patent for the main 
 invention is the result of several circumstances, — one that a patent may 
 be taken out for an improvement on a patentable invention, another that 
 there is no limitation by statute upon the time within which a patent may 
 issue upon an apphcation after it is filed, provided the applicant is not guilty
 
 § 351 DIVISIONAL PATENTING 319 
 
 of violating the two years' restriction imposed by the statute, and a third 
 that the course of an appUcation for a generic or broad invention may legiti- 
 mately take longer in its course through the patent office than a comparatively 
 unimportant improvement on that invention. — Thomson-Houston v. 
 Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Where each of several apphcations which subsequently ripen into patents 
 to the same inventor, describes an entire machine and the inventions clainied 
 in all of the applications, but no one of the applications claims any invention 
 claimed in any of the others, and they are all pending at the same time, 
 the respective dates of the apphcations and of the patents, and the dates 
 when the applications were filed are immaterial, and the apphcations and 
 the patents cannot be used to anticipate each other. — Ide v. Trorhcht, 115 
 Fed. 137; 53 C. C. A. 341. 
 
 Walk. Pat., 180; Westinghouse v. Dayton, 106 Fed. 724; Suffolk v. Hayden, 
 3 Wall. 315; Graham v. McCormick, 11 Fed. 859; Graham v. Mfg. Co., 11 Fed. 
 141. 
 
 At anytime the appUcation (first filed) might have been amended by adding 
 such claims, and in our opinion it is immaterial that, instead of thus amend- 
 ing it, he took the broader claims on another application filed while the first 
 was pending. The second may fairly be considered a continuation of the 
 first, and thus Berhner's application (the first filed, the second did not) 
 antedates the public use, and the facts will not sustain the contention that 
 he abandoned his invention here in suit. — Victor v. American, 145 Fed. 
 350; 76 C. C. A. 180. 
 
 The circuit court held that " it is very doubtful whether the second patent 
 is not to be regarded as invahd because anticipated by the first patent. As 
 I understand the rule the patent numbered first takes precedence of the 
 other." This is a correct statement of the general rule. But where the 
 patentee has had an application pending for the allowance of the later 
 numbered patent at the time when the earher numbered patent was issued, 
 and especially when it was through no fault of his that his original application 
 for a single patent was split up and a pluraUty of patents issued, an exception 
 is made to the enforcement of this rule. — Benjamin v. Dale, 158 Fed. 617; 
 85 C. C. A. 439. 
 
 Underwood v. Gerber, 149 V. S. 224; Writing Machine v. Elliott, 106 Fed. 507; 
 Willcox V. Machine Co., 93 Fed. 206; Crown v. Standard, 136 Fed. 841; Electrical 
 V. Brush, 52 Fed. 137; Thomson-Houston v. Elmira, 71 Fed. 404; Independent 
 V. Jeffrey, 76 Fed. 989; Badische v. Klipstein, 125 Fed. 554. 
 
 § 351. Distinguished from Double Patenting. 
 
 We have no disposition to depart from the rules in respect to the identity 
 of patents and the method of determining it, here adverted to, which we 
 deem sound and reasonable ; but it would be a misapplication of them, and 
 contrary to their spirit and purpose, to say that independent inventions 
 may not be the proper subjects of independent patents, even though they 
 may relate to the same subject-matter, and one may dominate the other 
 in the same field. — Dayton v. Westinghouse, 118 Fed. 562; 55 C. C. A. 390. 
 
 Miller v. Mfg. Co.. 151 U. S. 186; Palmer v. Lozier, 90 Fed. 732; Thomson- 
 Houston V. Ohio, SO Fed. 712; Allington v. Globe, 89 Fed. 865; Thomson- 
 Houston V. Jeffrey, 101 Fed. 121; Thomson-Houston v. Hoosick, 82 Fed. 461; 
 Industrial v. Wilcox, 112 Fed. 535.
 
 320 THE FIXED LAW OF PATENTS §352-353 
 
 § 352. Extending Monopoly. 
 
 Having stated that he had made the specific mechanism of the automatic 
 shunting device the subject of an application for another patent, the appli- 
 cant proceeds to say, " I, therefore, Hmit myself in this application to the 
 general or broad claims upon the automatic shunting device." The present 
 case is not one where the invention contemplates more than one congeries 
 of parts which, separately, constitute a distinct organization. It seems a 
 necessary inference that the apphcant for this patent sought to gather in 
 and monopolize all means which might be employed for the organization of an 
 automatic shunting de\nce, other than such that he had chosen to represent 
 by his actual invention. This he could not do. — Western v. Williams-Abbott, 
 108 Fed. 952; 48 C. C. A. 159. 
 
 The truth is that the kernel of the invention was taken out of this and made 
 the subject of another application. Having disclaimed it, the patentee 
 cannot now claim that invention to be within the scope of the patent here 
 in suit. — Western v. WilUams-Abbott, 108 Fed. 952; 48 C. C. A. 159. 
 
 Thomas v. Spring, 77 Fed. 420. 
 
 The feature which gives validity to the patent in suit was expressly carved 
 out of No. 554,874 and reserved for patenting in No. 580,281. The specifi- 
 cation expressly says so. The patent is thus clearly within the rule of Thomson- 
 Houston V. Elmira, 71 Fed. 396. — Hillard v. Fisher, 159 Fed. 439; 86 C. C. A. 
 469. 
 
 § 353- Generic and Specific Inventions. 
 
 The rule rests upon the broad and obvious ground that, if the second 
 patent is for an invention, that was necessary to the use of the invention 
 first patented, it cannot be sustained. Undoubtedly, as pointed out in 
 Miller v. Mfg. Co., 151 U. S. 186, if the second patent is for a distinct and 
 separate invention, or, to put the matter in another way, has not been made 
 integral with another invention already patented, so as to be fairly necessary 
 to its use, it should be sustained if the other requisite conditions exist. — 
 Palmer v. Lozier, 90 Fed. 732; 33 C. C. A. 255. 
 
 Lock V. Hosier, 127 U. S. 354; Plummer v. Sargent, 120 U. S. 442; Ohio v. 
 Thomson-Houston, 80 Fed. 712. 
 
 The conception of a mechanism capable merely of producing motion in a 
 pre-determined form, and the conception of this mechanism combined with 
 other elements, in a machine producing work theretofore done only by hand, 
 are distinct. Had the " movement " been in the prior art, we think that 
 Palmer's claims to the protection by letters patent of his quilting machine 
 would be well founded. As he has produced not only a quilting machine, 
 but a part of that machine which may be used in other machines, we see no 
 reason why, by properly seeking protection for all that he has invented, 
 he should be deprived of the protection of letters patent for that which 
 he regards as his chief invention. — Palmer v. Brown, 92 Fed. 925 ; 35 C. C. A. 
 86. 
 
 Suffolk V. Hayden, 3 Wall. 315. 
 
 By the general rule of patent law, a patent for the specific device would 
 cover all those equivalents, the range of which would be more or less broad 
 according to the scope of the invention. Such equivalents represent, in 
 legal contemplation, the same invention. One cannot divide an integral 
 invention, or have two patents for the same thing. — Western v. Williams- 
 Abbott, 108 Fed. 952; 48 C. C. A. 159.
 
 §§354-355 DIVISIONAL PATENTING 321 
 
 Miller v. Mfg. Co., 151 U. S. 186; Palmer v. Lozier, 90 Fed. 732; Fassett v. 
 Mfg. Co., 62 Fed. 404. 
 
 Since, therefore, the invention of the specific means covered by these 
 claims for the special means and the generic invention were for independent 
 inventions, and neither had been given to the public, it was competent for the 
 inventor to take out a patent for each ; and we do not perceive that in such 
 case it would be material that the taking out of the one patent was prior 
 to that of the other. — Dayton v. Westinghouse, 118 Fed. 562; 55 C. C. A. 
 390. 
 
 No valid reason exists why the patentee of an invention may not enjoy 
 the privilege of a stranger in thereafter obtaining a patent for an independent 
 invention made by him, although it relate to the matter of his former patent, 
 and was described but not claimed, therein, provided he has not dedicated 
 such independent invention to the pubhc. — Dayton v. Westinghouse, 118 
 Fed. 562; 55 C. C. A. 390. 
 
 Thomson-Houston v. Ohio, 80 Fed. 712. 
 
 § 354. Identity. 
 
 The presumption is that Jensen invented something new, or he would 
 not have secured the second patent. Where two patents apparently described 
 and claimed the same article, the question of identity is open for examination, 
 with the presumption in favor of their diversity. — Norton v. Jensen, 90 
 Fed. 415; 33 C. C. A. 141. 
 
 Rob. Pat., 896. 
 
 Are the two patents for the same invention? Looking first to the letters 
 patent themselves, and comparing their claims we are unable to say that the 
 combination claimed in the earlier is identical with that claimed in the later, 
 since the later specifically claims elements not enumerated in the earlier. 
 As the claims are not coextensive, the fact that the given element is common 
 to both may be of little consequence. The test of identity afforded by a 
 comparison of the claims of the two patents, however, is not conclusive. 
 We must be satisfied further that there are substantial differences, not merely 
 varying descriptions of one invention, or descriptions of a single invention in 
 different applications to use. — Palmer v. Brown, 92 Fed. 925; 35 C. C. A. 86. 
 
 Miller v. Mfg. Co., 151 U. S. 186; Thomson-Houston v. Elmira, 71 Fed. 396; 
 Simonds v. Hathorn, 90 Fed. 201. 
 
 That where a substantial difference exists, in the two methods of dealing 
 with the subject matter, it is not a case of double patenting, see Municipal 
 V. National, 117 Fed. 284; 46 C. C. A. 270. 
 
 § 355- Second Patent Void. 
 
 It seems to me his second patent must have been taken out as a matter 
 only of greater caution, through fear that, by some possible interpretation 
 of the claims of the first every method of using the electric currents would 
 not be covered. To my mind, this was unnecessary; and unless the patents 
 are to be limited to details, the claims of the first patent cover every form of 
 current particularized in either. I think, therefore, that under Leggett v. 
 Oil Co., 149 U. S. 287 and more particularly and clearly under Miller v. 
 Mfg. Co., 151 U. S. 186, the second patent is void. (Putnam dissenting.) — 
 Gamewell v. Municipal, 61 Fed. 948; 10 C. C. A. 184.
 
 322 THE FIXED LAW OF PATENTS §356 
 
 One cannot lawfully have two patents for one invention. When once the 
 invention has been used, there is the consideration of a grant, its value for 
 that purpose is spent, and there is nothing in it on which a second grant can be 
 supported. And this rule holds good though the scope of the patents may be 
 different. One cannot extract an essential element of his invention from a 
 former patent, without which the former patent would not have been granted 
 and make it the subject of a subsequent patent. — Palmer v. Lozier, 90 Fed. 
 732; 33 C. C. A. 255. 
 
 Miller v. Mfg. Co., 151 U. S. 186. 
 
 That where two patents have been taken out on the same general invention 
 and it appears that the combination of the first patent would be inoperative 
 without including the combination claimed in the second patent, the second 
 patent is void, see Industrial v. Wilcox, 112 Fed. 535; 50 C. C. A. 387. 
 
 MiUer v. Mfg. Co., 151 U. S. 186. 
 
 DOUBLE PATENTING. 
 
 General Rules § 356 Unitary Device § 360 
 
 Disclaimer in Later Patent § 357 (see 
 
 § 339) 
 
 Extending the Monopoly § 358 
 
 Seniority and Priority § 359 (see § 
 
 808) 
 
 Miscellaneous Rules § 361 
 See — Abandonment § 9; Anticipa- 
 tion § 70; Defenses § 320; Improve- 
 ment § 439; Invention § 617 
 
 § 3S6. General Rules. 
 
 If two patents be granted for the same invention the latter is void. — 
 Suffolk V. Hayden, 70 U. S. 315; 18 L. Ed. 76. 
 
 ■ It is hardly necessary to remark that the patentee could not include in a 
 subsequent patent any invention embraced or described in a prior patent to 
 himself, any more than he could an invention embraced or described in a 
 prior patent to a third person. Indeed, not so well; because he might get 
 a patent for an invention before patented to a third person in this country 
 if he could show that he was the first and original inventor, and if he should 
 have an interference declared. — James v. Campbell, 104 U. S. 356 ; 26 L. Ed. 
 786. 
 
 A man cannot have two separate patents for the same invention. The 
 later patent is void. — McCreary v. Pennsylvania, 141 U. S. 459 ; 35 L. Ed. 
 817; 12 S. Ct. 40. 
 
 A later apphcation covering the same invention as a former application 
 would be void. — Washburn v. Beat Em AU, 143 U. S. 275; 36 L. Ed. 154; 
 12 S. Ct. 443. 
 
 Suffolk V. Hayden, 70 U. S. 315. 
 
 Two valid patents for the same invention cannot be granted either to 
 the same or to a different party. — Miller v. Eagle, 151 U. S. 186; 38 L. Ed. 
 121 ; 14 S. Ct 310. 
 
 Suffolk V. Hayden, 70 U. S. 315; James v. Campbell, 104 U. S. 382; Hosier v. 
 Mosler, 127 U. S. 355; Underwood v. Gerber, 149 U. S. 224; Odiorne v. Ames- 
 bury, 2 Mason, 28. 
 
 When a patentee secures two patents for the same invention, the later 
 patent is void. — Fassett v. Ewart, 62 Fed. 404; 10 C. C. A. 441. 
 Miller v. Mfg. Co., 151 U. S. 186.
 
 §§357-358 DOUBLE PATENTING 323 
 
 The mere fact that a subsequent patent embraces broader claims than those 
 of the prior patent, which might have been made in the prior patent, does not 
 take it outside the rule of Miller v. Mfg. Co. that a subsequent patent for the 
 same invention is void. — Fassett v. Ewart, 62 Fed. 404; 10 C. C. A. 441. 
 
 A subsequent patent, especially to the same patentee for the same in- 
 vention, even embracing broader claims is void. — Russell •;;. Kern, 69 Fed. 
 94; 16 C. C. A. 154. 
 
 Miller v. Mfg. Co., 151 U. S. 186; Oval v. Sandy Creek, 69 Fed. 285; Heald v. 
 Rice, 104 U. S. 737. 
 
 The rule in Miller v. Mfg. Co., 151 U. S. 198 construed and explained at 
 length. — Thomson-Houston v. Elmira, 71 Fed. 396; 18 C. C. A. 145. 
 
 Suffolk V. Hayden, 3 Wall. 315; Barbed Wire Case, 143 U. S. 275; Accumulator 
 t. Brush, 52 Fed. 130. 
 
 The improvement described in claim 1 of the second patent, having been 
 distinctly claimed in a previous patent, is not patentable, unless the last 
 patentee was the earUer inventor. — Morrin v. Lawler, 99 Fed. 977; 40 
 C. C. A. 204. 
 
 James v. Campbell, 104 U. S. 356; Machine Co. v. Hedden, 148 U. S. 490; 
 Mathews v. Flower, 25 Fed. 830. 
 
 § 357« Disclaimer in Later Patent. 
 
 The switching devices having been fully described, the matter of disclaimer 
 inserted in the later patent is of no more value in determining its scope and 
 interpretation as to the claims in which the switches are an element, than is 
 the matter of disclaimer inserted in the earUer patent as to the claims in 
 which the contact de\dce is an element. — Thomson-Houston v. Hoosick, 
 82 Fed. 461 ; 27 C. C. A. 419. 
 
 That the settlement of priorities on interference, where the patentee has 
 a plurality of applications, relating to the same general subject matter, 
 does not entitle him to claim the counts awarded him on the interference to 
 be amended into either apphcation, regardless of the specification and the 
 particular species of the apphcation, see Nelson v. Farmer, 95 Fed. 145; 37 
 C. C. A. 32. 
 
 The complainant relies upon the disclaimer of the earlier patent : " I do 
 not here claim any of the features also shown and claimed in my apphcation 
 and serial Nos. 157,771," etc. Though reference is here made to the apph- 
 cation for the patent in suit, it is evident that a patentee cannot thus with- 
 draw the invention which actually is embodied in the structure claimed. 
 He cannot patent the structure, and by disclaimer withdraw the invention 
 which makes the structure patentable. — Otis v. Portland, 127 Fed. 557 ; 
 62 C. C. A. 339. 
 
 Rob. Pat. sec. 465; Miller v. Eagle, 151 U. S. 186; Palmer v. Lozier, 90 Fed. 
 745. 
 
 § 358. Extending the Monopoly. 
 
 When one inventor makes a generic invention and also subordinate, 
 specific inventions, and presents the whole series in a set of contemporaneous 
 applications, the patentee must not be enabled, by an ingenious use of general 
 terms, to enlarge the boundaries of each invention, to extend each into the 
 borders of another, and obtain a series of overlapping patents. — Elec. 
 Accum. Co. V. Brush 52 Fed. 130; 2 C. C. A. 682.
 
 324 THE FIXED LAW OF PATENTS § 359 
 
 Now, after this lavish issue of patents involving the same subject matter, 
 and to the same patentees, could the monopoly be still further broadened 
 and prolonged by the grant of a later patent? We have no hesitation in 
 responding negatively. Such an extension of exclusive privileges would be 
 a sheer abuse of the patent laws. — Reynolds v. Standard, 68 Fed. 483 ; 15 
 C. C. A. 516. 
 
 Following, Miller v. Eagle, 151 U. S. 186. 
 
 He made a machine which was a perfect embodiment of his generic idea, 
 and which he thought a better mechanism. He applied for a patent on this 
 machine, knowing it to be a full embodiment of his generic idea, and erro- 
 neously thinking it better as a practical mechanism. He did not patent an 
 improvement upon his old mechanism. Surely, under such circumstances, 
 he cannot now invalidate or limit his prior patent by showing that all he 
 had claimed in his first patent had previously been invented by himself. — 
 Otis V. Portland, 127 Fed. 557; 62 C. C. A. 339. 
 
 The patentee cannot subsequently start afresh and say: " I have now an- 
 other machine, which is exactly like the old one in the use of the generic 
 idea. I desire a patent upon it, but I do not claim the feature in which the 
 machine of my new application differs from the old, but I claim what is. 
 exactly the same as the old. I claim that machine again, and all others 
 containing the same invention." Yet this is substantially the case before 
 us. — Otis V. Portland, 127 Fed. 557; 62 C. C. A. 339. 
 
 It is insisted that though patent No. 757,762 was applied for more than 
 two years after patent No. 736,999, and was allowed almost eight months 
 afterwards, it constitutes the generic patent — No. 736,999 being for a 
 specific invention only. This is not a case in which a patentee, having first 
 made application for a patent for a generic invention, has subsequently 
 applied for patents for specific improvements. This is a case in which a 
 patentee, possessed of an alleged generic idea, elected to first apply for a 
 patent for a specific embodiment embracing the essential feature of the 
 generic idea, and later specifying such essential feature in another specific 
 embodiment, claims that the generic idea growing out of such essential 
 feature, belongs to the later, and not to the earlier, patent. To allow this, 
 it seems to us, would be to make the second patent overlap the first, a result 
 that involves the patentee in this dilemma, either that his second patent is 
 not generic in the respect named, or that it is a double patenting. — Morse 
 Chain v. Link Belt, 164 Fed. 331 ; C. C. A. 
 
 § 359. Seniority and Priority. 
 
 As between two patents for the same invention priority of date in 
 fihng does not control. — Birmingham v. Gates, 78 Fed. 350; 24 C. C. A. 132. 
 Miller v. Mfg. Co., 151 U. S. 186. 
 
 Where two patents are issued on the same day by the Patent Office, and 
 there is no other evidence of seniority between them than such as appears 
 from their serial numbers, the earlier in number must be regarded the 
 senior and the earlier in publication. — Crown v. Standard, 136 Fed. 841 ; 
 69 C. C. A. 200. 
 
 If the invention of the later patent is patented by the earlier patent, the 
 earUer must, of course, invalidate the later, for there cannot be two vaUd 
 patents for the same invention, and the later patent is therefore void. — 
 Crown V. Standard, 136 Fed. 841; 69 C. C. A. 200.
 
 §§ 360-361 DOUBLE PATENTING 325 
 
 § 360. Unitary Device. 
 
 That where two patents from the same inventor disclose and cover the 
 same general invention, and each covers separate and minor inventions, the 
 inventions claimed being inseparably involved in the same patents, the later 
 patent is void, see Thomson-Houston v. Hoosick, 82 Fed. 461 ; 27 C. C. A. 419. 
 
 Miller v. Mfg. Co., 151 U. S. 198. 
 
 The device patented in the first patent is the same as that in the second. 
 The same elements are claimed in combination in the first as in the second. 
 A difference in statement of their functions cannot and does not make them 
 different claims or different combinations. — Thomson-Houston ■;;. Jeffery, 
 101 Fed. 121; 41 C. C. A. 247. 
 
 Thomson-Houston v. Hoosick, 82 Fed. 461. 
 
 It is identical with the essential feature of the patent in suit and it comes 
 within the rule that forbids the issuance of a second patent to a patentee for 
 an alleged invention, the essential characteristic of which has been already 
 patented to the same patentee. — Newark v. Ryan, 102 Fed. 693; 42 C. C. A. 
 594. 
 
 The matter sought to be covered by the later patent is inseparably in- 
 volved in the matter embraced in the earlier patent, and, therefore, the 
 claims in controversy are void. — Thomson-Houston v. Western, 158 Fed. 
 813; 86 C. C. A. 73. 
 
 Miller v. Mfg. Co., 151 U. S. 198. 
 
 § 361. Miscellaneous Rules. 
 
 The defendants insist that as 337,298 is the earher patent, and is for the 
 same invention as 337,299, the latter patent is void. This conclusion would 
 be true if the premises were true. The appUcation was filed on the same day, 
 the patents were issued on the same day, and are owned by the same person. 
 The testimony shows that it can never be ascertained which patent actually 
 first received the final signature which rendered it a complete and final deed; 
 the mere fact that one has an earlier number signifies merely that the patent 
 office followed Brush's alphabetical order; so that a judicial ascertain- 
 ment of the fact of priority is impossible, and there are no known pre- 
 sumptions which can be resorted to upon which to base a finding. The owner 
 of both patents has elected to regard 337,299 as the one upon which it will 
 rest its title to a monopoly, and we are of opinion that it had such power of 
 choice. What would be the condition of separate owners of two separate 
 and contemporaneous patents for the same inventions? is a question which 
 has not yet arisen but it is obviously improper that 337,298 should be left in a 
 condition where it can be assigned or made the subject of sale. It has been 
 suggested that a disclaimer should be filed, but the sections to the statute 
 in regard to disclaimer, were not intended for, and do not seem applicable 
 to, a case of this sort in which the patentee was the actual and first inventor 
 of the whole of the described and patentable thing which is specified in the 
 patent. It, therefore, seems proper that a final decree shouldbe framed in 
 accordance with the circumstances of the case, and should, in connection 
 with the finding of the vaUdity of the specified claims of 337,299, adjudge 
 337,298 to be inoperative, and prohibit its assignment for sale. — Eiec. 
 Accum. Co. V. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 The owner of two conflicting patents is not bound under R. S. 4918, to 
 move to cancel the senior patent before he can maintain suit upon the other 
 patent. — Western Elec. Co. v. Sperry, 59 Fed. 295; 8 C. C. A. 129. 
 
 Disapproving, Roll Paper Co. v. Knapp, 44 Fed. 609.
 
 326 THE FIXED LAW OF PATENTS §362 
 
 It is contended that the invention described and claimed in the earher 
 patent is for one form of the alleged invention described in the later patent, 
 and covered by the first of those claims thereof, and that no one could use 
 the invention of the earlier patent without infringing these later claims. 
 The question there raised is a serious one, but we do not deem it necessary 
 to consider it. — Westinghouse v. Edison, 63 Fed. 588; 11 C. C. A. 342. 
 
 Miller v. Mfg. Co., 151 U. S. 186. 
 
 The first two claims contain no patentable improvement upon the form 
 specifically described in the claims of its predecessor, and are void. — West- 
 inghouse V. N. Y., 63 Fed. 962; 11 C. C. A. 528. 
 
 At the bar the United States rested the point of issuance of a subsequent 
 patent for the same invention. Miller v. Mfg. Co., 151 U. S. 186. The prin- 
 ciple of this decision is evident and was stated as early as 1865 in Suffolk v. 
 Hayden, 3 Wall. 315; and appears from the record that it was recognized 
 by the patent office before Miller v. Mfg. Co. was decided. We may remark 
 that the facts in the case at bar on their face are not like those of Miller v. 
 Mfg. Co. as here the two patents claimed to interfere were not issued to the 
 same applicant; and the acquirement, after it issued by the Am. Bell Tel. 
 Co. of the Berliner patent of Nov. 2, 1880 would not necessarily estop the 
 assignee. — Am. Bell. Tel. Co. v. U. S. 68 Fed. 542; 15 C. C. A. 569. 
 
 To avoid the objection of double patenting, it is not enough to show that 
 the prior patent claims a specific machine, and that the later patent contains 
 broader claims, which embrace both the prior specific machine and other 
 machines as well. Two patents may be regarded as for the same invention, 
 though one claims only a special machine, and the other claims broadly a 
 genus which includes the former. — Otis v. Portland, 127 Fed. 557 ; 62 C. C. A. 
 339. 
 
 Miller v. Eagle, 151 U. S. 186; Rob. Pat. sees. 464, 465. 
 
 The question whether two patents are for the safne invention is to be 
 determined from a comparison of the documents themselves, no extrinsic 
 evidence being necessary to enable the court to ascertain their meaning and 
 true conclusion. — Thomson-Houston v. Western, 158 Fed. 813 ; 86 C C. A. 
 73. 
 
 The change in phraseology between the claims of the two patents import 
 nothing of substance into the claims of the later patent which, in different 
 language, describe the same combinations covered by the claims of the earlier 
 patent. — Thomson-Houston v. Western, 158 Fed. 813; 86 C. C. A. 73. 
 
 DRAWINGS. 
 
 Statutory Provisions § 362 I Rules § 363 
 
 General Statement and General ' See — Claims § 192 
 
 § 362. Statutory Provisions. 
 
 * * * A copy of the specification and drawings shall be annexed to the 
 patent and be a part thereof. ' — R. S. 4884. 
 
 When the nature of the case admits of drawings, the applicant shall fur- 
 nish one copy signed bv the inventor or his attorney in fact, and attested 
 by two witnesses, which shall be filed in the Patent Office; and a copy of
 
 §§ 363-364 EMPLOYER AND EMPLOYEE 327 
 
 the drawing, to be furnished by the Patent Office, shall be attached to the 
 patent as a part of the specification. — R. S. 4889. 
 
 Sec. 4916, which provides for reissues, has the following in regard to draw- 
 ings in reissue cases: 
 
 * * * nor in case of a machine patent shall the model or drawings be 
 amended, except each by the other; but where there is neither model nor 
 drawing, amendments may be made upon proof satisfactory to the Com- 
 missioner * * * 
 
 § 363. General Statement and General Rules. 
 
 Since the drawings form a part of the specification, special rules relating 
 thereto will be found under Specification. 
 
 Where the drawings merely show an alternative construction and both 
 covered by same claims, the difference is not material. — Schreiber v. Grimm, 
 72 Fed. 671 ; 19 C. C. A. 67. 
 
 BusseU V. Stevens, 137 U. S. 423; Wells v. Curtis, 66 Fed. 318. 
 
 A drawing is not to be regarded as a working plan, unless it is so stated in 
 the specification. — Elgin v. Creamery, 80 Fed. 293; 25 C. C. A. 426. 
 Caverly v. Deere, 66 Fed. 305. 
 
 The object of the drawings filed in the patent office is attained if they 
 clearly exhibit the principles involved, and, in a case like this, rigid adherence 
 to the dimensions thus exhibited is not required or expected, and if an in- 
 telligent mechanic would so proportion the dimensions as to secure practical 
 results, inutility is not demonstrated by experiments with material identical 
 in form and proportion of parts with the drawings in the patent. — Crown 
 V. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 The drawings are not required to be working plans. They must be read in 
 connection with the description and claims, and any inferences arising from 
 omissions or inconsistencies in the drawings must yield to a legally sufficient 
 specification. — Western v. American, 131 Fed. 75; 65 C. C. A. 313. 
 
 That an obvious error in a drawing, which would not mislead any person 
 skilled in the art, is insufficient to defeat a patent, see Edison v. Novelty, 
 167 Fed. 977; C. C. A. 
 
 EMPLOYER AND EMPLOYEE. 
 
 General Statement § 364 
 
 Contract — ■ Future Inventions § 365 
 
 (see § 430) 
 
 License — Implied § 366 (see § 749) 
 
 Rights of 
 
 Employee § 367 
 
 Employer § 368 
 Miscellaneous Rulings § 369 
 See — Assignment § 149; Government 
 § 429; License § 749; Licensor and 
 Licensee § 765 
 
 § 364. General Statement. 
 
 No statutory provision exists except that relating to government em- 
 ployees. Those provisions and the special rulings as to employees of the gov- 
 ernment will be found under the title Government. Questions of title and 
 rights as between employers and employees will also be found under .Asst'^n- 
 ment and License. •
 
 328 THE FIXED LAW OF PATENTS §§ 365-366 
 
 § 365. Contract — Future Inventions. 
 
 Complainant and defendant contracted that in consideration of the em- 
 ployment of defendant and wages paid him, defendant would give complain- 
 ant the exclusive use of any improvements he might make upon their partic- 
 ular machines while in their employ or after. Held: such argument to be 
 neither unconscionable, unreasonable nor contrary to public policy. — Bon- 
 sack V. Hulse, 65 Fed. 864; 13 C. C. A. 180. 
 
 Registering Co. v. Sampson, L. R. 19 Eq. 465; 1 Sedg. Dam. 455; Horner v. 
 Graves, 7 Bing. 735; Ammunition v. Nordenfelt, 1 Ch. 630; Match v. Rosber, 106 
 N. Y. 473; Morse v. Morse, 103 Mass. 73. 
 
 We now pass to the defence that the contract was not enforceable in equity 
 upon the theory of lack of consideration and lack of mutuality. This con- 
 tract, however, was not without consideration. It was not only by its own 
 express terms in consideration of the employment of the defendant, but this 
 contract was signed and delivered before the employment actually com- 
 menced, and before the defendant was permitted to enter the complainant's 
 factory. The hiring, the engagement to pay wages and the introduction of 
 the defendant into the complainant's estabhshment and to its methods and 
 processes, constituted a valid consideration for his agreement to assign his 
 inventions made during the term of employment. — Mississippi v. Franzen, 
 143 Fed. 501 ; 74 C. C. A. 135. 
 
 Bonsack v. Hulse, 65 Fed. 864; Thibodeau v. Hildreth, 124 Fed. 892; Rob. 
 Pat. sec. 414; Green v. Richards, 23 N. J. Eq. 32, 35; Grove v. Hodge. 55 Pa. 
 504, 516. . 
 
 § 366. License — Implied. 
 
 For equitable rights of employer, see Hapgood v. Hewitt, 119 U. S. 226; 
 SOL. Ed. 369; 7 S. Ct. 193. 
 
 Distinguishing: McClurg v. Kingsland, 42 U. S. 202; Continental v. Em- 
 pire, 8 Blatchf. 295; Whiting v. Graves 3 B. &. A. 222; Wilkins v. Spafford, 
 3 B. & A. 274. 
 
 An employee or shop license growing out of the employment of the in- 
 ventor, confers an unassignable right only. — Hapgood v. Hewitt, 119 U. S. 
 226; 30 L. Ed. 369; 7 S. Ct. 193. 
 
 Troy V. Corning, 55 U. S. 193; Oliver v. Rumford, 109 U. S. 75. 
 
 Where the employee invents in the hne of his employment with the tools and 
 at the expense of his employer, the fact that his wages are not increased 
 on account of such services as was the case in McClurg v. Kingsland, 42 U. S. 
 202, makes no vital difference. — Solomons v. U. S. 137 U. S. 342 ; 34 L. Ed. 
 667; 11 S. Ct. 88. 
 
 When employee allows his invention to be constructed and used by his 
 employer before patent he cannot claim royalty or right of injunction there- 
 after. — Dable v. Flint, 137 U. S. 41 ; 34 L. Ed. 618; 11 S. Ct. 8. 
 
 Wade V. Metcalf, 129 U. S. 202. 
 
 Where employee makes an invention in the shops and with the tools of 
 employer, the employer gains an implied license, and such implied license 
 may be succeeded to by a corporation as successor in business, if such course 
 is acquiesced in by the inventor. — Lane v. Locke, 150 U. S. 193; 37 L. Ed. 
 1049; 14 S. Ct. 78. 
 
 McClurg V. Kingsland, 42 U. S. 202; Solomons v. U. S. 137 U. S. 342.
 
 § 367 EMPLOYER AND EMPLOYEE 329 
 
 When an employee made and introduced hds invention in employer's fur- 
 naces and told his employer he could use the same so long as he remained in 
 defendant's employ, such facts gave defendant an implied license, at least 
 during the period of employment of plaintiff. — Keyes v. Eureka, 158 U. S. 
 150; 39 L. Ed. 920; 15 S. Ct. 772. 
 
 The fact that the invention was made and the drawings prepared outside 
 the hours and the shops of the employer, so long as the invention was reduced 
 to practice and made in the employer's shops by the employee and with his 
 consent, does not secure him the right to damages for infringement by his 
 employer. — Gill v. U. S. 160 U. S. 426; 40 L. Ed. 480; 16 S. Ct. 322. 
 
 An employee paid by salary or wages, who devises an important method 
 of doing his work, using the property or labor of his employer to put his 
 invention into practical form, and assenting to the use of such improvements 
 by his employer, cannot, by taking out a patent upon such invention, re- 
 cover a royalty or other compensation for such use. — Gill v. U. S. 160 U. S. 
 426; 40 L. Ed. 480; 16 S. Ct. 322. 
 
 Pennock v. Dialogue, 27 U. S. 1; Grant v. Raymond, 31 U. S. 218; McClurg v. 
 Kingsland, 42 U. S. 202; Solomons v. U. S. 137 U. S. 342; Lane v. Locke, 150 
 U. S. 193; McAleer v. U. S. 150 U. S. 424; Keyes v. Eureka, 158 U. S. 150. 
 
 There was some evidence to show that the original patterns were destroyed 
 by fii'e before the machines sold by appellant were made and it is insisted that 
 the scope of the license should be limited by the life of the identical patterns. 
 The duration and scope of a license must depend upon the nature of the in- 
 vention and the circumstances out of which an imphed license is presumed, 
 and both must at last depend upon the intention of the parties. — Withing- 
 ton V. Kinney, 68 Fed. 500; 15 C. C. A. 531. 
 
 Rob. Pat. sees. 809-811; Montross i'. Mabie, 30 Fed. 4. 
 
 Complainant was employed as an expert machinist to devise and con- 
 struct an improved machine and to direct the making of patterns for the 
 same for machine to be made and sold. Later, complainant obtained a patent, 
 and after ten years brought suit. Held: Upon this state of facts, we con- 
 clude that the appellee must be presumed to have granted to appellant's 
 licensor a personal license to make and sell machines embodying the im- 
 provements covered by his patent. — Withington v. Kinney, 68 Fed. 500; 
 15 CCA. 531. 
 
 McCIurg V. Kingsland, 1 How. 202; Solomons v. U. S. 137 U. S. 342; Lane v. 
 Locke, 150 U. S. 193; Hapgood v. Hewitt, 119 U. S. 226. 
 
 The case is, therefore, of an inventor, who was a workman in the employ 
 of another, manufactures for him, in his shop, and with his materials, and 
 upon weekly wages, machines which the employer uses as a part of his tools, 
 without knowledge of anj'- objection thereto, and for which the inventor 
 during the terms of his employment, obtains a patent and thereafter seeks 
 to restrain the employer from the use of the particular machine or machines 
 which had been thus made in the employer's shop, under the supervision 
 of the employee, and apparently as a part of his ordinary mechanical work. 
 On the authority of Gill v. U. S., 160 U. S. 426, the employee-patentee was 
 estopped. — Blauvelt v. Interior, 80 Fed. 906; 26 C C A. 243. 
 
 § 367. Rights of — Employee. 
 
 Persons employed, as much as employers, are entitled to their own in- 
 dependent inventions, and if the suggestions communicated constitute the
 
 330 THE FIXED LAW OF PATENTS § 368 
 
 whole substance of the improvement the rule is otherwise, and the patent, 
 if granted to the employer, is invalid because the real invention or discovery 
 belongs to the person who made the suggestion. — Union v. Vandeusen, 90 
 U. S. 530; 23 L. Ed. 128. 
 Agawam v. Jordan, 7 Wall. 602. 
 
 When a person has discovered a new and useful principle in a machine 
 manufacture or composition of matter, he may employ other persons to 
 assist in carrying out that principle, and if they, in the course of experiments 
 arising from that employment, make discoveries ancillary to the plan and 
 preconceived design of the employer, such suggested improvements are in 
 general to be regarded as the property of the party who discovered the origi- 
 nal principle, and they may be embodied in his patent as part of his inven- 
 tion. — Union V. Vandeusen, 90 U. S. 530; 23 L. Ed. 128. 
 
 As to rights of a person employed to invent, see Hapgood v. Hewitt, 118 
 U. S. 226; 30 L. Ed. 369; 7 S. Ct. 193. 
 
 McClurg V. Kingsland, 42 U. S. 202; Continental v. Empire, 8 Blatchf. 295; 
 Whiting V. Graves, 3 B. & A. 222; Wilkins v. Spafford, 3 B. & A. 274. 
 
 In the absence of evidence of an agreement that the employer should have 
 any interest in any patentable improvement which the employee might make 
 during the period of his employment, it would seem that the title to the in- 
 vention made or to any patent subsequently obtained by him, would be 
 unaffected by the fact of his service and in the use of his employer's shop, 
 materials and the service of his employees while devising and perfecting his 
 invention. — Withington v. Kinney, 68 Fed. 500; 15 C. C. A. 531. 
 
 Hapgood V. Hewitt, 119 U. S. 226. 
 
 § 368. Rights of — Employer. 
 
 The inventor, while in the employ of the defendant made his invention 
 and perfected the same with the tools and while under pay of defendant, and 
 in his shops. Defendant increased the inventor's wages by reason of such 
 invention. The invention was put in practice by plaintiff in defendant's 
 shops and used without any agreement or license. Subsequently the in- 
 ventor quit from another cause and this suit was brought. Held: That such 
 employment and conduct gave the employer a shop right to said invention. 
 — McClurg V. Kingsland, 1 How. 202; 11 L. Ed. 102. 
 
 Note: This leading case has generally been construed too broadly. The 
 court did not hold in express terms that the mere employment or the 
 extra pay constituted the license, independent of the subsequent conduct. 
 This case is good for what it holds, but it by no means establishes the 
 relations of employer and employee definitely. 
 
 Persons employed, as much as employers, are entitled to their own inde- 
 pendent inventions, but where the employer has conceived the plan of an 
 invention and is engaged in experiments to perfect it, no suggestion from 
 an employee, not amounting to a new method or arrangement, is sufficient 
 to deprive the employer of the exclusive property in the perfected improve- 
 ment. But where the suggestions go to make up a complete and perfect 
 machine, embracing the substance of all that is embodied in the patent 
 subsequently issued to the party to whom the suggestions were made, the 
 patent is invalid, because the real invention or discovery belonged to an- 
 other. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 
 
 Pitts V. Hall, 2 Blatchf. 234; Allen v. Rawson, 1 Man. G. & S. 574; Alden v. 
 Dewey, 1 Story, 336; Minters Pat. 1 Web. P. C. 132; Curt. Pat. 99; Reed v. 
 Cutter, 1 Story, 599.
 
 §369 EMPLOYER AND EMPLOYEE 331 
 
 No one is entitled to a patent for that which he did not invent unless he 
 can show a legal title to the same from the inventor or by operation of law; 
 but when a person has discovered an improved principle in a machine, manu- 
 facture or composition of matter, and employs other persons to assist him in 
 carrying out that principle, and they in the course of experiments arising 
 from that employment make valuable discoveries ancillary to the plan and 
 preconceived design of the employer, such suggested improvements are in 
 general to be regarded as the property of the party who discovered the 
 original improved principle, and may be embodied in his patent as a part 
 of his invention. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 
 
 A manufacturing corporation which has employed a skilled workman, 
 for a stated compensation, to take charge of its works, and to devote his 
 time and services to devising and making improvements in articles there 
 manufactured, isnot entitled to a conveyance of patents obtained for inventions 
 made by him while so employed, in the absence of express agreement to that 
 effect. — Dalzell v. Dueber, 149 U. S. 315; 37 L. Ed. 749; 13 S. Ct. 886. 
 
 Hapgood V. Hewitt, 119 U. S. 226. 
 
 That an agreement by an employee to keep forever secret for the benefit 
 of his employer any invention or discovery he may make during the term of 
 his emplovment, is not unconscionable, see Thibodeau v. Hildreth, 124 Fed. 
 892; 60 C. C. A. 78. 
 
 We do not think that defendant is estopped, by reason of the relation 
 of the parties and his own conduct, to deny such equitable title in complain- 
 ant. Both must rest upon the same basis of fact and law. Whether the 
 complainant would have been justified in claiming what is called a shop right 
 or a right to a license, irrevocable or otherwise, is not the question raised by 
 its bill. The claim is for the whole and exclusive title, and the demand for a 
 legal assignment of the same. — Pressed Steel v. Hansen, 137 Fed. 403; 71 
 C. C. A. 207. 
 
 § 369. Miscellaneous Rulings. 
 
 Suggestions from another, made during the progress of experiments, 
 in order that they may be sufficient to defeat a patent subsequently issued, 
 must have embraced the plan of the improvement and must have furnished 
 such information to whom the communication was made that it would have 
 enabled an ordinary mechanic, without the exercise of any ingenuity and 
 special skill on his part to construct and put the improvement in successful 
 operation. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 177. 
 
 This evidence brings the case clearly within the terms of the decision of 
 McClurg V. Kingsland, 1 How. 202, where it was declared that if a person 
 employed in the manufactory of another, while receixdng wages, makes 
 experiments at the expense and in the manufactory of the employer has his 
 wages increased in consequence of the useful result of the experiments, 
 raakes the article invented, and permits his employer to use it, no compensa- 
 tion for its use being paid or demanded, and then obtains a patent for it, 
 the patent is invalid and void. 
 
 And as the employer could defend himself on the ground of public use, 
 so could a third person. 
 
 And the fact that the employer just before apphcation purchased an in-
 
 332 THE FIXED LAW OF PATENTS §370 
 
 terest in the patent to be granted does not avoid the fact of public use by 
 tini. — Worley v. Loker, 104 U. S. 340; 26 L. Ed. 821. 
 
 Pardy was a mechanic and patent solicitor. Hooker employed him to get 
 up a machine and gave Pardy his own ideas as to how the desired result 
 could be accompHshed. The agreement was that -Hooker was to pay all 
 cost of the work and pay Pardy for his services, and was to own and control 
 the patent that should be issued covering the machine. Hooker paid all the 
 cost of the machines and paid Pardy in full. We are of opinion that such 
 suit (for infringement) cannot be sustained, in view of the distinct agreement 
 between Hooker and Pardy. We are of the opinion, however, that the court 
 below was, in view of the evidence, in error in adjudging Pardy was not the 
 inventor of the machine patented. Hooker knew, or must be held to have 
 known, that such patent could not have been issued except upon the oath 
 that Pardy was the inventor. Hooker did not himself apply for such patent, 
 and there is nothing to indicate that he ever contemplated doing so. It is 
 true, as has been said, that he gave Pardy his own ideas and employed him 
 to get up such a machine as he (Hooker) desired, but the accomplishment 
 of the desired end was evidently left to Pardy. The court should not have 
 adjudged the patent to be void, or that Pardy was not the inventor. — Pardy 
 V. Hooker, 148 Fed. 631; 78 C. C. A. 403. 
 
 EQUITY. 
 
 The Statutes § 370 
 
 Jurisdiction § 371 
 
 Miscellaneous § 372 
 
 See — Actions § 24; Damages § 282; 
 
 Decrees § 301; Defenses § 306; In- 
 
 junction § 533; Interferences § 582; 
 Interfering Patents § 586; Jurisdic- 
 tion §§ 717-20; Pleading and Prac- 
 tice § 788; Profits § 825 
 
 § 370. The Statutes. 
 
 General jurisdiction of courts of equity in patent causes is given under 
 629 R. S. The specific powers of courts of equity in such actions is found 
 in 4921 R. S., from which is quoted: 
 
 The several courts vested with jurisdiction of cases arising under the patent 
 laws shall have power to grant injunctions according to the course and prin- 
 ciples of courts of equity, to prevent the violation of any right secured by 
 patent, on such terms as the court may deem reasonable ; and upon a decree 
 being rendered in any such case for an infringement, the complainant shall 
 be entitled to recover, in addition to the profits to be accounted for by the 
 defendant, the damages the complainant has sustained thereby; and the 
 court shall assess the same or cause the same to be assessed under its direc- 
 tion. And the court shall have the same power to increase such damages, 
 in its discretion, as is given to increase the damages found by verdicts in 
 actions in the nature of actions of trespass upon the case. 
 
 That said courts (U. S. district courts), when sitting in equity for the trial 
 of patent causes, may empanel a jury of not less than five and not more than 
 twelve persons, subject to such general rules in the premises as may, from 
 time to time, be made by the Supreme Court, and submit to them such 
 questions of fact arising in such cause as such circuit court shall deem ex- 
 pedient. . 
 
 And the verdict of such jury shall be treated and proceeded upon m the 
 same manner and with the same effect as in the case of issues sent from 
 chancery to a court of law^ and returned with such findings.
 
 5 371 EQUITY 333 
 
 Further consideration of this subject will be found under Jurisdiction, 
 especially under §§ 717-720. 
 
 § 371. Jurisdiction. 
 
 A bill in equity for a naked account of profits and damages against an 
 infringer cannot be sustained; that such relief ordinarily is incidental to 
 some other equity, the right to enforce which secures to the patentee his 
 standing in court ; that the most general ground for equitable interposition 
 is, to recover to the patentee the enjoyment of his specific right by injunc- 
 tion, against a continuance of the infringement, but that grounds of equitable 
 relief may arise other than by way of injunction as when the title of the 
 complainant is equitable merely, or equitable interposition is necessary on 
 account of the impediments which prevent a resort to remedies purely legal; 
 and such an equity may arise out of and inhere in the nature of the account 
 itself, springing from special and peculiar circumstances M'hich disable the 
 patentee from a recovery at law altogether, or render his remedy in a legal 
 tribunal difficult, inadequate and incomplete; and as such cases cannot 
 be defined more exactly, each must rest upon its own peculiar circumstances, 
 as furnishing a clear and satisfactory exception from the general rule. — 
 Root V. Ry. 105 U. S. 189; 26 L. Ed. 975. 
 
 It is the fundamental characteristic and limit of the jurisdiction in equity 
 that it cannot give relief where there is a plain and adequate and complete 
 remedy at law; and hence it has no original, independent and inherent 
 power to afford redress for breaches of contract or torts by awarding dam- 
 ages ; for to do that was the very office of proceedings at law. When, how- 
 ever, relief was sought which equity alone could give, as by way of injunction 
 to prevent a continuance of the wrong, in order to avoid multiplicity of 
 suits and to do complete justice, the court assumed jurisdiction to award 
 compensation for the past injury, not, however, by assessing damages, 
 which was the peculiar office of a jury, but requiring an account of profits, 
 on the ground that if any had been made, it was equitable to require the 
 wrong doer to refund them, as it would be inequitable that he should make 
 a profit out of his own wrong. — Root v. Ry., 105 U. S. 189; 26 L. Ed. 975. 
 
 It is impossible, we think, to maintain that the Act of 1870 was meant 
 to obliterate the distinctions between the two jurisdictions, or even to con- 
 fuse the boundaries between them. It is the settled doctrine of this court 
 that this distinction of jurisdiction between law and equity, is constitutional to 
 which the 7th Amendment forbids any infringement of the right of trial by jury, 
 as fixed by the common law. And the doctrine applies to patent cases as 
 well as to others. — Root v. Ry. 105 U. S. 189 ; 26 L. Ed. 975. 
 
 A court of equity is to decide on the law and fact (LeGuen v. Gouveneur, 1 
 Johns. Cas. 500) and an appeal in equity is an appeal upon the law and fact 
 involved in the case (Adams, Eq., 375) and that, " in absence of any re- 
 strictive clauses, every appellate tribunal is clothed with all the powers of 
 the tribunal appealed from, and is bound to exercise them upon the same 
 principles," (Briggs Petition, 29 N. H. 553) and " ordinarily, from the nature 
 of judgments, the decision of an appellate tribunal must have as great 
 force, at least, as the judgment of the inferior tribunal upon the same matter 
 would have if no appeal had been taken." (Blake v. Oxford, 64 N. H. 302.) 
 — Richmond r. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 For general discussion of equity jurisdiction see Crown v. Aluminum, 108 
 Fed. 845; 48 C. C. A. 72.
 
 334 THE FIXED LAW OF PATENTS §§ 372-373 
 
 Hoe V. Knapp, 27 Fed. 204; New York v. HoUingsworth, 56 Fed. 224; Packard 
 V Lacine; 70 Fed. 66; Germain v. Wilgus, 67 Fed. 598; Root v. Railway, 105 
 U. S. 189;' Shaw v. Cooper, 7 Pet. 292; Walk. Pat. sec. 106. 
 
 § 372. Miscellaneous . 
 
 We are aware of no rule which converts a court of equity into an instru- 
 ment for the punishment of simple torts. — Livingston v. Woodworth, 15 
 How. 546; 14 L. Ed. 809. 
 
 A court of equity will not interfere to enjoin even a pending suit at law, 
 much less the bringing of one, in the future, when the theory of the bill is 
 that there is a perfect defense to each suit. — Hapgood v. Hewitt, 119 U. S. 
 226; 30 L. Ed. 369; 7 S. Ct. 193. 
 
 Grand v. Winegar, 82 U. S. 373; 1 High Injunctions, sees. 89-93 & cases. 
 
 A court of equity will not grant a decree on another ground, where the 
 bill charges actual fraud as the ground of rehef, and the fraud is not proven. 
 — Dashiell v. Grosvenor, 66 Fed. 334; 13 C. C. A. 593. 
 
 The evidence also shows that Tremaine & Pain had constructed the ap- 
 paratus, and put it in use in the hall of the Aeolian Company in New York 
 on an organ of the Ferrand & Votey Organ Company built for the Aeolian 
 Company, as early as 1895, and it was there publicly used and exhibited 
 in actual use for playing the organ for at least two years. This was suffi- 
 cient to enable appellees to maintain this action without showing that it 
 had been in constant use ever since. — Los Angeles v. Aeolian, 143 Fed. 880; 
 75 C. C. A. 88. 
 
 Pittsv. Wemple, 1 Biss. 87; Stitt r. Easton, 22 Fed. 649; Masseth v. Johnston, 
 59 Fed. 613. 
 
 iVo^e; This rule (Hawley, J., Gilbert and Morrow, J. J., concurring) is, to 
 say the least startling, if the opinion is correctly reported. It will be noted 
 that the patent sued on is that to Tremaine & Pain, and that the use shown 
 by the evidence was that of the complainant and its predecessor in business 
 of the device of the patent in suit. 
 
 EQUIVALENTS. 
 
 General Statement and Definitions § 
 
 373 
 
 Combinations § 374 
 
 Generic Inventions § 375 
 
 Improvements § 376 {see § 430) 
 
 Known Elements § 377 
 
 Range § 378 
 Identity § 379 
 Miscellaneous Rulings § 380 
 See — Claims § 194; Infringement 
 §§ 468, 499, 528; Process § 816; Speci- 
 fication § 909 
 
 § 373- General Statement and Definitions. 
 
 The Patent Statute does not use the word equivalent. The doctrine has 
 been long and slow in development; and since, in every case, the question 
 is likely to be quite as much a question of fact as of law, the rules which have 
 been established should be regarded rather as rules of evidence than as fixed 
 rules. The subject of equivalents also arises under Claims — Construction, 
 and under Infringement — Combinations — Identity. 
 
 The term equivalent, when speaking of machines, has a certain definite 
 meaning, but when used with regard to chemical action of such fluids as 
 can be discovered only by experiment, it only means equally good. — Tyler 
 V. Boston, 74 U. S. 327; 19 L. Ed. 93.
 
 § 373 EQUIVALENTS 335 
 
 Devices in one machine may be called by the same name as those con- 
 tained in another, and yet they may be quite unlike in the sense of the patent 
 law, in a case where those in one of the machines perform different functions 
 from those in the other. In determining about similarities and differences, 
 courts of justice are not governed merely by the names of things; but they 
 look at the machines and their devices in the light of what they do or what 
 office or function they perform, and how they perform it, and find that a thing 
 is substantially the same as another, if it performs substantially the same 
 function or office in substantially the same way to obtain substantially the 
 same result, and that devices are substantially different when they perform 
 different duties in a substantially different way, or produce a substantially 
 different result. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Cahoon v. Ring, 1 Cliff. 620. 
 
 Equivalents may be claimed by a patentee of an invention consisting of a 
 combination of old elements or ingredients, as well as of any other valid 
 patented improvement, provided the arrangement of parts comprising the 
 invention is new, and will produce a new and useful result. Such a patentee 
 may doubtless invoke the doctrine of equivalents as against an infringer of 
 the patent; but the term " equivalent " as applied to such an invention, 
 is special in its signification, and somewhat different from what is meant 
 when the term is applied to an invention consisting of a new device or an 
 entirely new machine. — Imhauser v. Buerk, 101 U. S. 647; 25 L. Ed. 945. 
 
 In this sense the mechanical devices used by the defendant are known 
 substitutes or equivalents employed in complainant's machine to effect the 
 same result; and this is the proper meaning of the term " known equivalent," 
 in reference to a pioneer machine such as that of complainant. Otherwise, a dif- 
 ference in the particular devices used to accomplish a particular result in such a 
 machine would always enable a defendant to escape the charge of infringe- 
 ment, provided such devices were new with the defendant in such a machine, 
 because, as no machine for accomplishing the result existed before that of 
 the plaintiff, the particular device alleged to avoid infringement could not 
 have existed or been known in such a machine prior to the plaintiff's inven- 
 tion. — Morley i\ Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 An equivalent, in the law of patents, is defined to be " any act or substance 
 which is known in the arts as a proper substitute for some other art or sub- 
 stance, employed already as an element in an invention, whose substitution 
 for that other act or substance does not in any manner vary the 
 idea of means. It possesses three characteristics: (1) It must be 
 capable of performing the same office in the invention as the act 
 or substance whose place it supplies; (2) it must relate to the form of em- 
 bodiment alone, and not affect in any degree the idea of means; (3) it must 
 have been known in the arts, at the date of the patent, as endowed with this 
 capability." — Duff. Mfg. Co. v. Forgie, 59 Fed. 772; 8 C. C. A. 261. 
 
 1 Rob. Pat. sec. 247. 
 
 One who claims and secures a patent for a new machine thereby neces- 
 sarily claims and secures a patent for every mechanical equivalent for the 
 device, because, within the meaning of the patent law, every mechanical 
 equivalent of a device is the same thing as the device itself. A device which 
 is constructed on the same principle, which has the same mode of operation, 
 and which accomplishes the same result as another by the same means, or by 
 equivalent mechanical means, is the same device, and a claim in a patent 
 for one such device claims and secures the other. — Lourie v. Lenhart, 130 
 Fed. 122; 64 C. C. A. 456. 
 
 Machine Co. v. Murphy, 97 U. S. 120.
 
 336 THE FIXED LAW OF PATENTS §374 
 
 An equivalent is defined as a thing which performs the same function, 
 and performs that function in substantially the same manner, as the thing 
 of which it is alleged to be an equivalent. But in the application of rules 
 on the subject we must have in view the patent alleged to be infringed. If 
 it is for a primary invention — one which performs a function never per- 
 formed by an earlier invention — the patentee will have the right to treat as 
 infringers those who make or use machines operating on the same principle 
 and performing the same functions by analogous or equivalent combinations, 
 even though the infringing machine may be an imjDrovement of the original. 
 But if the invention is a secondary invention, that is, one which performs a 
 function previously performed by earlier inventions, but which performs 
 that function in a substantially different way from any which preceded it; 
 an improvement on a known machine by a mere change of form or a new 
 combination of parts, the patentee cannot treat another as an infringer 
 who has improved the original machine by the use of a different form or 
 combination performing the same functions. The first inventor of improve- 
 ments cannot invoke the doctrine of equivalents and suppress all other 
 improvements. — Central v. Coughlin, 141 Fed. 91 ; 72 C. C. A. 93. 
 
 A mechanical equivalent which may be substituted for an omitted mechan- 
 ical element in a combination claim is one that performs the same function 
 by applying the same course to the same object through the same means 
 and mode of application. — Hardison v. Brinkman, 156 Fed. 962; 87 C. C. A. 
 
 § 374. Combinations. 
 
 A combination is substantially different from that patented when the sub- 
 stitute for the ingredient left out to perform the same function was not known 
 as a proper substitute therefor when the invention was patented. — Seymour 
 V. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Old ingredients known at the date of the letters patent granted for an 
 invention, consisting of a combination of old ingredients, if also known at 
 that date as a proper substitute for one or more of the ingredients of the in- 
 vention secured by the letters patent, are the equivalents of the correspond- 
 ing ingredients of the patented combination. Such old ingredients so known 
 at the date of the letters patent granted, are the equivalents of the ingre- 
 dients of the patented combination, and no others, and it may be added that 
 that and that only, is what is meant by the rule that inventors of a new com- 
 bination of old ingredients are as much entitled to claim equivalents as any 
 other class of inventors. — Gill v. Wells, 89 U. S. 1 ; 22 L. Ed. 699. 
 
 Gould V. Rees, 15 Wall. 194. 
 
 A party who merel}'^ substitutes another old ingredient for one of the 
 ingredients of a combination is an infringer, if the substitute performs the 
 same function as the ingredient for which it was substituted, and was well 
 known at the date of the patent as a proper substitute for the omitted ingre- 
 dient ; but the rule is otherwise if the ingredient substituted was a new one or 
 performed substantially a different function, or was not known at the date 
 of the plaintiff's patent as a proper substitute for the one omitted, as in 
 that event he does not infringe. — Gill v. Wells, 89 U. S. 1 ; 22 L. Ed. 699. 
 
 Roberts v. Harnden, 2 Cliff. 504. 
 
 By an equivalent in such a case is meant that the ingredient substituted 
 for the one withdrawn performs the same function as the other, and that it 
 was well known at the date of the patent securing the invention as a proper
 
 § 374 EQUIVALENTS 337 
 
 substitute for the one omitted in the patented combination. — Gill v. Wells, 
 89 U. S. 1 ; 22 L. Ed. 699. 
 Gould V. Rees, 15 Wall. 194. 
 
 A patent for a novel combination may invoke the doctrine of equivalents. 
 — Norton v. Jensen, 9 Fed. 859; 1 C. C. A. 452. 
 
 Imhauser v. Buerk, 101 U. S. 655; Norton v. Can Co. 45 Fed. 638; Carter v. 
 Baker, 1 Sawy. 516; Seymour t;. Osborne, 11 Wall. 516; Machine Co. v. Murphy, 
 97 U. S. 125; Wicke v. Ostrum, 103 U. S. 469. 
 
 We do not say what the result might be if the patentee makes his descrip- 
 tion of the elements of his combination broad enough to include in each or 
 any of them any kind of mechanism adapted to produce the same result 
 as a step in the operation. — Wells v. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Phoenix v. Spiegel, 133 U. S. 360. 
 
 " Mechanical equivalents " as the phrase is to be understood in this con- 
 nection, are such devices as were known pre\'iously, and which, in the partic- 
 ular combinations of devices specified as constituting the patented invention, 
 can be adapted to perform the functions of those specified devices for which 
 they are employed as substitutes without changing the inventor's idea of 
 means. In other words, without introducing an original idea, producing, 
 as the result of it, an improvement which is itself a patentable invention. — 
 Jensen v. Norton, 67 Fed. 236; 14 C C. A. 383. 
 
 Rob. Pat. 248, 253, 254. 
 
 And here it may be remarked in applying the doctrine of equivalents, 
 a distinction is made between inventions of specific devices and inventions 
 of combinations. In a simple invention the range of equivalents is much 
 wider than in a combination. In the former a change which would be held 
 to be a substitution of equivalents may in the latter be considered to be an 
 introduction of a new idea of means. Therefore it is said, with reference to 
 such elements in any combination as constitute its subordinate means, no 
 other element can be equivalent unless they are equivalent inventions ; 
 that is, unless they not merely perform the same functions, but perform them 
 by applying the same force to the same object through the same mode of 
 application. It is only when an invention is broad and primary in its char- 
 acter, and the mechanical functions performed by the machine are, as a 
 whole, entirely new that the courts are disposed to make the range of equiv- 
 alents correspondingly broad. — Erie v. American, 70 Fed. 58; 16 C. C. A. 
 632. 
 
 1 Rob. Pat. 254; Wells v. Curtis, 66 Fed. 318; MiUer v. Mfg. Co. 151 U. S. 207. 
 
 The doctrine of mechanical equivalents is governed by the same rules and 
 has the same application when the infringement of a patent for a combina- 
 tion is in question as when the issue is over an infringement of a patent for 
 anv other invention. — National v. Interchangeable, 106 Fed. 693 ; 45 C. C. A. 
 544. 
 
 Schroeder v. Brammer, 98 Fed. 880: Imhauser v. Buerk, 101 U. S. 647; Gris- 
 wold V. Harker, 62 Fed. 389; Thomson v. Bank, 53 Fed. 250; Seymour v. Os- 
 borne, 11 Wall. 516; Gould v. Rees, 15 Wall. 187; Fav v. Cordesman, 109 U. S. 
 408; Water-Meter Co. v. Desper, 101 U. S. 332; Gage r. Herring. 107 U. S. 640; 
 Machine Co. v. Murphv, 97 U. S. 120; National v. American, 53 Fed. 367; Belding 
 V. Challenge, 152 U. S. 100. 
 
 The doctrine of mechanical equivalents is governed by the same rules 
 and has the same application when the infringement of a patent for a com-
 
 338 THE FIXED LAW OF PATENTS § 375 
 
 bination is in question as when the issue is over the infringement of a patent 
 for any other invention. — Brammer v. Schroeder, 106 Fed. 918; 46 C. C. A. 
 41. 
 
 Imhauser v. Buerk, 101 U. S. 647; Griswold v. Harker, 62 Fed. 389; Thomson 
 V. Bank, 53 Fed. 250; Seymour v. Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 
 187; Fay v. Cordesman, 109 U. S. 408; Water-Meter Co. v. Desper, 101 U. S. 332; 
 Gage V. Herring, 107 U. S. 640; Machine Co. v. Murphy, 97 U. S. 120; National v. 
 American, 53 Fed. 367; Balding v. Challenge, 152 U. S. 100. 
 
 The learned judge who decided the case below had no doubt " that the 
 defendant's straps and buckles are an equivalent of the complainant's cords 
 and hooks," and in this we agree with him; but he held that the complain- 
 ants were not entitled to invoke the doctrine of equivalency, and this ruling 
 we think was erroneous. By the changes in phraseology which were made 
 pending the application, nothing can fairly be said to have surrendered 
 or disallowed that which the third claim as finally approved plainly indicated. 
 That claim, as broadly expressed, is for " lacing devices; " and it is not to 
 be implied that either the Patent Office on the one side or the apphcant on 
 the other contemplated any Hmitation of it which would admit of its evasion 
 by means so palpably colorable as the substitution of straps for cords and 
 buckles for hooks. In no case is a patentee to be denied protection commen- 
 surate with the scope of his actual and distinctly described and claimed in- 
 vention by excluding him from the benefit of the doctrine of equivalents. 
 That doctrine should have been appHed; for it is plainly obvious that the 
 departures made by the defendant are merely formal, " and of such character 
 as to suggest that they are studied evasions of those described in the claim 
 in issue." — Lepper v. Randall, 113 Fed. 627; 51 C. C. A. 337. 
 
 Hillbom V. Mfg. Co., 69 Fed. 958; Societe v. Rehfuss, 75 Fed. 657; Bundy v. 
 Detroit, 94 Fed. 524; Boston v. Bemis, 80 Fed. 287. 
 
 The range of equivalents covered by the patent corresponds with the 
 character of the invention, and includes all forms which embody the sub- 
 stance of the invention, and by like mechanical co-operation effect sub- 
 stantially the same result. — Dowagiac v. Brennan, 127 Fed. 143; 62 C. C. A. 
 257. 
 
 In a combination patent for an improvement in the arrangement or adapt- 
 ation of old elements, the inventor is not entitled to a broad interpretation 
 of the doctrine of mechanical equivalents, so as to cover a device not specif- 
 ically included in his claims and specifications. — Hardison v. Brinkman, 
 156 Fed. 962; 87 C. C. A. 8. 
 
 Miller v. Eagle, 151 U. S. 186. 
 
 § 375' Generic Inventions. 
 
 If the patentee be the original inventor of a device or machine, he will have 
 the right to treat as infringers all who make devices operating on the same 
 principle, and performing the same functions by analogous means or equiva- 
 lent combinations, even though the infringing machine may be an improve- 
 ment of the original and patentable as such. — McCormick v. Talcott, 61 
 U. S. 402; 15 L. Ed. 930. 
 
 The combination of the first claim of the patent being new, and, conse- 
 quently never having been applied in such a combination, the complainant 
 is entitled to the doctrine of equivalents as applied to the combination. — ■ 
 aough V. Gilbert, 106 U. S. 166; 27 L. Ed. 138; 1 S. Ct. 198.
 
 § 375 EQUIVALENTS 339 
 
 If the state of the art was such as to entitle the patentee to a broad claim 
 for any device for performing the function by such or similar means, the de- 
 fendants would infringe. — Newton v. Furst, 119 U. S. 373; 30 L. Ed. 442; 
 7 S. Ct. 369. 
 
 Where an invention is one of a primary character, and the mechanical 
 functions performed by the machine are, as a whole, entirely new, all sub- 
 sequent machines which employ substantially the same means to accomplish 
 the same result are infringements, although the subsequent machine may 
 contain improvements in the separate mechanisms which go to make up 
 the machine. — Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 
 299. 
 
 McCormick v. Talcott, 61 U. S. 402; Chicago v. Sayles, 97 U. S. 554; Clough v. 
 Barker, 106 U. S. 166; Duff v. Sterling, 107 U. S. 636; Consolidated v. Crosby, 113 
 U. S. 157; Tilghman v. Proctor, 102 U. S. 707; Nelson v. Hartford, 1 Web. P. C. 
 295. 
 
 Where an inventor has combined for the first time one organization of 
 mechanism for performing all the several steps of an entire machine process, 
 his invention is infringed by another employing three sets of mechanism 
 in combination, provided each mechanism individually considered is a 
 proper equivalent for the corresponding mechanism of the former patent, 
 and the fact that the mechanism is more simple makes no difference. — Mor- 
 ley V. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 In the case of a pioneer patent, where the specification has described or 
 indicated an alternative construction, the claims will be construed to in- 
 clude such alternative construction. — Morley v. Lancaster, 129 U. S. 263; 
 32 L. Ed. 715; 9 S. Ct. 299. 
 
 It is well settled that a greater degree of liberality and a wider range of 
 equivalents are permitted where the patent is of a pioneer character than 
 when the invention is simply an improvement, may be the last and success- 
 ful step, in the art theretofore partially developed by other inventors in 
 the same field. — Cimiotti v. American, 198 U. S. 399; 49 L. Ed. 1100; 25 S. 
 Ct. 697. 
 
 Westinghouse v. Boyden, 170 U. S. 537; Singer v. Cramer, 192 U. S. 265. 
 
 General application of doctrine and full discussion of the cases in Reece 
 V. Globe, 61 Fed. 958; 10 C. C. A. 194. 
 
 Morley v. Lancaster, 129 U. S. 263; Mfg. Co. v. Adams, 151 IT. S. 139; Miller v. 
 Mfg. Co. 151 U. S. 186; Union v. U. S. Il2 U. S. 624; Brooks v. Fisk. 15 How. 
 212; Klein v. Russell, 19 Wall. 4.33; Vulcanite v. Davis, 102 U. S. 222; Bene v. 
 Jeantet, 129 U. S. 683; Gordon v. Warder, 150 U. S. 47; Keystone v. Phoenix, 
 95 U. S. 274; Fay v. Cordesman, 109 U. S. 408; Mfg. Co. v. Sargent, 117 U. S. 373; 
 Drvfoos V. Wiese, 124 U. S. 32; Burns v. Meyer, 100 U. S. 671; Huber v. Mfg. 
 Co' 148 U. S. 270; Brown v. Mfg. Co. 57 Fed. 731; Winans v. Denmead, 15 
 How. 330; Sewall v. Jones, 91 U. S. 171; Eddy v. DeniriS, 95 U. S. 560; Werner v. 
 King, 96 U. S. 218; Electric v. LaRue, 139 U. S. 601; Hoyt v. Home, 145 U. S. 
 302; Lehigh v. Mellon, 104 IT. S. 112. 
 
 The question of infringement is controlled by the principles restatecf in 
 Machine Co. v. Lancaster, 129 U. S. 263, and confirmed in subsequent and 
 recent cases (Miller v. Mfg. Co. 151 U. S. 186) and which makes these actual 
 differences, which would be important in a subordinate patent, unessential 
 when a patent for a pioneer invention is under examination. If such differences 
 should be regarded by courts as essential, when the claims do not make
 
 340 THE FIXED LAW OF PATENTS 5 375 
 
 the specific devices essential, patents for pioneer inventions would ordinarily 
 have but little value. — Westinghouse v. N. Y. 63 Fed. 962; 11 C. C. A. 528. 
 
 If the invention had been of a time recorder, as a new thing containing 
 these parts, the claims might cover all modes of so bringing the impression 
 platen into operation, but as it was, they can cover only substantially these 
 means. — Bundy v. Columbian, 64 Fed. 851 ; 12 C. C. A. 442. 
 
 In view of prior inventions he cannot be deemed a " pioneer in the art," 
 and therefore cannot invoke the doctrine of equivalents, as the courts apply 
 that doctrine to primary inventions, so as to include all forms of devices 
 which operate to perform the same functions or accomplish the same result. 
 — Wells V. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Miller V. Mfg. Co. 151 U. S. 186. 
 
 Whether he specifically claims in his patent the benefit of equivalents 
 or not, the law allows them to him according to the nature of his patent. 
 If it is a mere improvement on a successful machine, a mere tributary in- 
 vention, or a device the novelty of which is confined by the past art to the 
 particular form shown, the range of equivalents is narrowly restricted. If 
 it is a pioneer patent with a new result, the range is very wide, and is not 
 restricted by the failure of the patentee to describe and claim combinations 
 of equivalents. Nothing will restrict the pioneer patentee's rights in this 
 regard save the use of language in his specifications and claims which permits no 
 other reasonable construction than one attributing to the patentee a positive 
 intention to hmit the scope of his invention in some particular to the exact 
 form of the device he shows, and a consequent willingness to abandon to the 
 public any other form, should it be adopted and prove useful. — McCor- 
 mick V. Aultman, 69 Fed. 371 ; 16 C. C. A. 259. 
 
 Distinguishing, Keystone v. Phoenix, 95 U. S. 274; Brown v. Mfg. Co. 
 57 Fed. 731. 
 
 Winans v. Denmead, 15 How. 330; Vulcanite v. Davis, 102 U. S. 222; Reece v. 
 Globe, 61 Fed. 958; Mfg. Co. v. Adams, 151 U. S. 139; Miller v. Mfg. Co. 151 
 U. S. 186. 
 
 Claim 1 of the patent in suit is a very broad one, and, as we held it vahd, 
 it would seem that no method of making the connection between the actu- 
 ating jacks and the crank shaft, by means well known in the arts at the date 
 of the patent, would evade it. — Bresnahan v. Tripp, 72 Fed. 920; 10 C. C. A. 
 237. 
 
 The pioneer inventor is entitled to a generic claim, under which will be 
 included every species included within the genus. In addition to such generic 
 claim, he may include in the same application, specific claims for one or 
 more of the species. — Von Schmidt v. Bowers, 80 Fed. 121 ; 25 C. C. A. 323. 
 
 Machine Co. v. Lancaster. 129 V. S. 263; Clough v. Barker, 106 V. S. 166; 
 Clough V. Mfg. Co. 106 U. S. 178; Rob. Pat. sec. 535; Hammerschlev v. Scamoni, 
 7 Fed. 584; Telephone v. Spencer, 8 Fed. 509; Machine Co. v. Teague, 15 Fed. 
 390; Mfe:. Co. v. Buffalo, 20 Fed. 126; Brush v. Electric, 52 Fed. 945; Ex parte 
 Nagle, 1870 Com. Dec. 137; Ex parte Rowland, 12 O. G. 889. 
 
 An original inventor, a pioneer in the art, he who evolves the original 
 idea and brings it to some successful, useful, and tangible result, is, by the law 
 of patents, entitled to a broad and liberal construction of his claim ; whereas 
 an improver is onlv entitled, and justly so, to what he claims and nothing 
 more. — Norton v.Jensen, 90 Fed. 415; 33 C. C. A. 141. 
 
 Note: The first half of this statement is good law; the latter half is not.
 
 § 376 EQUIVALENTS 341 
 
 The right of an improver to equivalents is commensurate with the extent 
 of his invention. 
 
 The McCarty patent, being found at the head of a class, though in a well 
 developed art, is entitled to a liberal range of equivalency. — Lamson v. 
 Hillman, 123 Fed. 416; 59 C. C. A. 510. 
 
 Consolidated v. Crosby, 113 U. S. 157; Morley v. Lancaster, 129 U. S. 263; 
 National v. Interchangeable, 106 Fed. 693; Crown v. Aluminum, 108 Fed. 845. 
 
 § 376. Improvements. 
 
 An inventor is not entitled, where his invention covers a particular ma- 
 chine for performing a given function, to claim equivalency in any machine 
 which performs the same function. — Dryfoos v. Wiese, 124 U. S. 32; 31 
 L.Ed. 362; 8 S. Ct. 354. 
 
 Where the margin of invention is very narrow, the doctrine of equivalents 
 cannot be invoked to make out infringement. — Doze v. Smith, 69 Fed. 1002; 
 16 C. C. A. 581. 
 
 A patent to the original inventor of a machine or construction, which first 
 performs a useful function, protects him against all machines and construc- 
 tions that perform the same function by equivalent mechanical devices. But 
 a patent to one who has simply made a slight improvement on devices that 
 perform the same function before as after the improvement is protected 
 against those only which use the very improvement he describes and claims, 
 or mere colorable evasions of it. — Murphy v. Excelsior, 76 Fed. 965; 22 
 C. C. A. 658. 
 
 McCormick v. Talcott, 20 How. 402; Stirrat v. Mfg. Co. 61 Fed. 980. 
 
 A mere improvement of a narrow character upon well-known devices for 
 accomplishing the same purpose is not entitled to a liberal application of 
 the doctrine of equivalents. — Muller v. Lodge, 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Miller V. Mfg. Co. 151 U. S. 186; Wright v. Yuengling, 155 U. S. 47. 
 
 A broad claim, such as is now insisted upon, would make his claim void 
 for anticipation. In view of the history of devices intended to perform the 
 same function, his patent can only be saved by confining him to the specific 
 form he has described and claimed. — Jeffrey v. Independent, 83 Fed. 191 ; 
 27 C. C. A. 512. 
 
 Knapp V. Morss, 150 U. S. 221; Miller v. Mfg. Co. 151 U. S. 186; Wells v. 
 Curtis, 66 Fed. 318; Ney v. Mfg. Co. 69 Fed. 405. 
 
 This invention is in no sense one of a primary character, and complainant 
 upon this ground is not entitled to that range of equivalents accorded to such 
 an invention. — St. Louis v. National, 87 Fed. 885; 31 C. C. A. 265. 
 
 McCormick v. Talcott. 20 How. 402; Miller v. Mfg. Co. 151 U. S. 207; Bragg v. 
 Fitch, 121 U. S. 478; Wells v. Curtis, 66 Fed. 318. 
 
 If his invention is one which has marked a decided step in the art, and has 
 proven of value to the public, he will be entitled to the benefit of the 
 rule of equivalents, though not in so liberal a degree as if his invention 
 was of a primary character. — Bundy v. Detroit, 94 Fed. 524 ; 36 C. C. A. 
 375. 
 
 Miller v. Mfg. Co. 151 U. S. 186. 
 
 A patent to the original inventor of a machine which first performs a 
 useful function protects him against all mechanisms that perform the same
 
 342 THE FIXED LAW OF PATENTS §377 
 
 function by equivalent mechanical devices, but a patent to one who simply 
 made a slight improvement on a device that performed the same function 
 before as after the improvement is protected only against those who use the 
 very improvement that he describes and claims, or mere colorable evasions 
 of it. — M'Bride v. Kingman, 97 Fed. 217; 38 C. C. A. 123. 
 
 Stirrat v. Mfg. Co., 61 Fed. 980; Murphy v. Excelsior, 76 Fed. 965; Adams v. 
 Lindell, 77 Fed. 432. 
 
 He is not entitled to a monopoly of analogous means found in the old art. 
 Subsequent improvers are equally free to accomplish the same general results 
 by different means, if not purely colorable changes. The range of equiva- 
 lents allowed to the combination must be so narrowed as to include nothing 
 which is not substantially identical with the means employed. -^ Noonan v. 
 Chester, 99 Fed. 90; 39 C. C. A. 426. 
 
 Knapp V. Morss, 150 U. S. 221; Wright v. Clinton, 67 Fed. 790; Wells v. Curtis, 
 66 Fed. 318. 
 
 The form he describes and claims is not of the essence of his invention, and 
 the law allows a patentee any form which is the equivalent of that claim, 
 unless he has expressly limited himself to the one claim he describes, or unless 
 it is necessary to limit him to the specific form in order to save his patent 
 from anticipation. Hoyt was not a pioneer. But his invention is purely 
 a meritorious one. In such case he is not cut off from a reasonable range of 
 equivalents measured by the advance he has made over older machines. — 
 McSherry v. Dowagiac, 101 Fed. 716; 41 C. C. A. 627. 
 
 Bundy v. Detroit, 94 Fed. 524; Penfield v. Chambers, 92 Fed. 639; McCormick 
 V. Aultman, 69 Fed. 371; Muller v. Tool Co. 77 Fed. 621. 
 
 That in the case of a narrow improvement, an attempt to invoke the doc- 
 trine of equivalents to make out infringement may result in defeating the 
 claim of the patent, see Hobbs v. Gooding, 111 Fed. 403; 49 C. C. A. 414. 
 
 Hoyt, it is true, was not a pioneer; but his invention being meritorious, 
 he is not cut off from a reasonable range of equivalents, measured by the 
 advance he has made over older machines. — Dowagiac v. Minnesota, 118 
 Fed. 136; 55 C. C. A. 86. 
 
 Bundy v. Detroit, 94 Fed. 524; McSherry v. Dowagiac, 101 Fed. 716; Penfield 
 V. Chambers, 92 Fed. 639; McCormick v. Aultman, 69 Fed. 371; Muller v. Tool 
 Co. 77 Fed. 621. 
 
 The appellant's invention being obviously not a pioneer, but only an im- 
 provement upon the prior art, its claims cannot be given a liberal interpre- 
 tation ; but there is yet a right to a reasonable range of equivalents, measured 
 by the character and extent of the improvement, and infringement cannot 
 be avoided by mere colorable modifications of some of the elements, not es- 
 sentially varying its principle or mode of operation. — Heekin v. Baker, 
 138 Fed. 63; '70 C. C. A. 559. 
 
 National v. Interchangeable, 106 Fed. 693; Dowagiac v. Minnesota, 118 Fed. 
 136; Standard v. Caster, 113 Fed. 162. 
 
 § 377. Known Elements. 
 
 Repeated decisions of this court have settled the rule in such cases that 
 if the ingredient substituted by the defendant for the one left out in the 
 defendant's machine was a newly discovered one, or even an old one perform- 
 ing some new function, and was not known at the date of the plaintiff's patent 
 as a proper substitute for the ingredient left out, the charge of infringement 
 cannot be maintained. — Gill v. Wells, 89 U.S.I; 22 L. Ed. 699.
 
 I 378 EQUIVALENTS 343 
 
 Seymour .. Osborne, 11 Wall. 555; Vance v. CampbeU, 1 Black, 428; Prouty 
 V. Ruggles, 16 Pet. 341. 
 
 One Doint which may be considered in determining equivalents is the age 
 of the fwo devices, or whether the alleged infringement was known and m 
 force at the t' me of the granting of complainants' patent; the presumption 
 beingtn such c"se that it'was used as an equivalent only to avoid the charge 
 of infringement, and not as an improvement. - Jones v. Hunger, 49 Fed. 
 
 ^^ReLSy^ii. Matthtsson, 2 Fish. P. C. 629; O'Reilly .. Morse, 15 How. 123; 
 Robertson v. Blake, 94 U. S. 732. 
 
 Other constructions may now appear to be equivalents but they were not 
 known to be such the appellee's patent was issued and the patentee 
 
 d^dnot mention them as such in his specifications. Jhedoctrme^o^ equiva- 
 lents, therefore, does not aid the appellee. - Brown v. fetilwell, 5/ 1 ed. /dl , 
 6 r C A 528 
 
 Fed 202 oTley r Walkins, 36 Fed. 323; Burns .. Meyer, 100 U. S. 671; Klem 
 V. Russell, 19 Wall. 433. 
 
 The means by which this or any other result or function is accomplished 
 mJy be many and various, and, if those several means are not mechanical 
 SvaLSs, each of them is patentable. - Boyden .. Westinghouse, /O 
 Fed. 816; 17 C C. A. 430. 
 
 A patent covers only known equivalents. - Magic v. Economy, 97 Fed. 
 87; 38 C. C. A. 56. 
 
 An attempt is made to escape from this conclusion under the rule that, if 
 threlemeJ ubstituted for the one withdrawn has been discovered since 
 the S of the patent, it cannot be said to be its mechanical equivalent. 
 Gould ^ Rees 15 Wall. 187. But it is too plain for argument or serious 
 Consideration hat there was neither discovery nor invention in perceiving 
 aTapptying to the device of complainant the fact that an infusibe metal 
 tecured^y wax or other fusible material was the mechanical equivalent of 
 S ormed the same function and worked the same result as the f usible p ug 
 Twhke and could be effectually used as its substitute The shot and the 
 wax ^4e not, therefore, newly discovered elements, but constituted a mere 
 mechanLarsubstitute for the element which White described and claimed. 
 — Kinloch V. Western, 113 Fed. 652; 51 C. C. A. 369. 
 
 § 378. Range of. • , j + 
 
 A patentee, entitled to invoke the doctrine of equivalents is entitled so to 
 do whether he has claimed such in his specification or not. — Goodyear v. 
 Davis, 102 U. S. 222; 26 L. Ed. 149. 
 
 Depends upon the extent and nature of the invention. — Miller v. Eagle, 
 151 U S. 186; 38 L. Ed. 121; 14 S. Ct. 310. 
 Morley v. Lancaster, 129 IT. S. 263. 
 
 It is manifest, therefore, that it was not meant to decide ^^^^ ^nl^ PJf^^^^ 
 patents are entitled to invoke the doctrine of equivalents but that it was 
 decided that the range of equivalents depends upon and varies with the
 
 344 THE FIXED LAW OF PATENTS § 378 
 
 degree of invention. — Continental v. Eastern, 210 U. S. 405; 51 L. Ed. 922; 
 28 S. Ct. 748. 
 
 Cimiotti v. American, 198 U. S. 399; Kokomo v. Kitselman, 189 U. S. 8; 
 Miller v. Eagle, 158 U. S. 186; Ives v. Hamilton, 92 U. S. 426; Hoyt v. Home, 145 
 U. S. 302; Deering v. Winona, 155 U. S. 286; Walk. Pat. sec. 362; Rob. Pat. sec. 
 258. 
 
 The range of equivalents depends upon the extent and nature of the in- 
 vention. If the invention is broad or primary in its character, the range of 
 equivalents will be correspondingly broad, under the liberal construction 
 which the courts give to such inventions. — Roemer v. Peddie, 78 Fed. 117; 
 24 C. C. A. 39. 
 
 Machine Co. v. Lancaster, 129 U. S. 263; Miller v. Mfg. Co. 151 U. S. 207. 
 
 We have discussed this general question so fully in Long v. Mfg. Co. 75 
 Fed. 835, and Reece v. Globe, 61 Fed. 958 (an extreme case in one way) 
 and in Ball v. Ball, 58 Fed. 818 (an extreme case the other way) that we do 
 not deem it necessary to go over it here. The case at bar lies between the 
 two cases last cited; and it clearly is not shut out from the expression of the 
 Supreme Court cited by us in Reece v. Globe at page 962, that " the range 
 of equivalents depends upon the extent and nature of the invention." — 
 Boston V. Bemis, 80 Fed. 287 ; 25 C. C. A. 420. 
 
 While it is clear that a patentee is ordinarily entitled to all the uses and 
 all the advantages which his invention developes so far as the new application 
 does not involve additional invention, yet a function not known when the 
 patent issues, and afterwards developed, cannot ordinarily be used to broaden 
 the construction of a claim. — Heap v. Tremont, 82 Fed. 449 ; 27 C. C. A. 
 316. 
 
 Reece Globe, 61 Fed. 958; Wright v. Clinton, 67 Fed. 790; Long v. Mfg. Co. 
 75 Fed. 835; Boston v. Bemis, 80 Fed. 287. 
 
 The range of equivalents depends upon the extent and nature of the in- 
 vention. — Beach v. Hobbs, 92 Fed. 146; 34 C. C. A. 248. 
 Miller V. Mfg. Co. 151 U. S. 186. 
 
 The more meritorious the invention, the greater the step in the art, the 
 less the suggestion of the improvement in the prior art, the more liberal are 
 the courts in applying in favor of the patentee the doctrine of equivalents. 
 The narrower the line between the faculty exercised in inventing a device 
 and mechanical skill, the stricter are the courts in rejecting the claim of 
 equivalents by the patentee in respect to alleged infringements. — Penfield 
 V. Chambers, 92 Fed. 630; 34 C. C. A. 579. 
 
 A patentee who is the original inventor of a device or machine — a pioneer 
 in the art — is entitled to a broad and liberal construction of his claims ; but 
 an inventor who only claims to be an improver, is only entitled to what he 
 claims, and nothing more. — Overweight v. Improved, 94 Fed. 155 ; 36 
 C. C. A. 125. 
 
 McCormick v. Talcott, 20 How. 402; Norton v. Jensen, 90 Fed. 415. 
 
 Note: The last clause of the above statement of the general rule attempted to 
 be stated, is unqualifiedly bad law. It is not the law, and never has been 
 the law, that an improver is entitled only to exactly what he claims. The 
 rule is and always has been, that an improver is entitled to a range of 
 equivalency commensurate with the extent of his invention.
 
 § 378 EQUIVALENTS 345 
 
 This court, following the supreme court, has pointed out in a number of 
 cases that, the more meritorious the patent, the more liberal will the court be 
 in applying the doctrine of equivalents to cover devices adopted for the 
 purpose of appropriating all that is good in a patent without rendering the 
 tribute which the patent law was intended to secure, for a temporary period, 
 to those who by their ingenuity have made possible real progress in the in- 
 dustrial arts. — King v. Hubbard, 97 Fed. 795; 38 C. C. A. 423. 
 
 Bundy v. Detroit, 94 Fed. 524; McCormick v. Aultman, 69 Fed. 371; Wells v. 
 Curtis, 66 Fed. 318; Miller v. Mfg. Co. 151 U. S. 186. 
 
 One who merely makes and secures a patent for a slight improvement on 
 an old device or combination, which performs the same function before as 
 after the improvement, is protected against those only who use the very 
 device or improvement he describes or mere colorable evasions thereof. In 
 other words, the term " mechanical equivalent," when applied to the inter- 
 pretation of a pioneer patent, has a broad and generous signification, while 
 its meaning is very narrow and limited when it conditions the construction 
 of a patent for a slight and almost immaterial improvement. — National v. 
 Interchangeable, 106 Fed. 693 ; 45 C C. A. 544. 
 
 Adams v. Lindell Co., 77 Fed. 432; Stirrat v. Mfg. Co.. 61 Fed. 980; McCormick 
 V. Talcott, 20 How. 402; R. R. Co. v. Sayles, 97 U. S. 554; Brill v. Car Co., 90 Fed. 
 666. 
 
 The doctrine of mechanical equivalents conditions the construction of 
 all these patents, and in determining questions concerning them the breadth 
 of the signification of the term is proportioned in each case to the character 
 of the advance or invention evidenced by the patent under consideration, 
 and is so interpreted by the courts as to protect the inventor against piracy 
 and the public against unauthorized monopoly. — National v. Interchange- 
 able, 106 Fed. 693; 45 C. C. A. 544. 
 
 Schroeder v. Brammer, 98 Fed. 880; McSherry v. Dowagiac, 101 Fed. 716; 
 Bundy v. Detroit, 94 Fed. 524; Miller v. Mfg. Co., 151 U. S. 186; Penfield v. 
 Chambers. 92 Fed. 639; McCormick v. Aultman, 69 Fed. 371; Muller v. Tool Co., 
 77 Fed. 621. 
 
 As we have several times had occasion to say, and what is indeed well 
 established patent law, the term " equivalent " has a variable meaning, 
 and is measured by the character of the invention to which it is applied. — 
 Rich ?;.*Baldwin, 133 Fed.- 920; 66 C. C. A. 464. 
 
 McCormick v. Aultman. 69 Fed. 371; Penfield v. Chambers, 92 Fed. 630; Mc- 
 Sherry V. Dowagiac, 101 Fed. 716. 
 
 The term " mechanical equivalent " has a broad and generous significa- 
 tion in the interpretation of a pioneer patent, a very narrow and restricted 
 one in the construction of a patent for a slight improvement, and, in the 
 interpretation of patents for the great mass of inventions between these 
 extremes, its meaning is always proportioned to the character of the ad- 
 vance or invention under consideration. — Mallon v. Gregg, 137 Fed. 68; 
 69 C. C. A. 48. 
 
 National v. Interchangeable, 106 Fed. 693. 
 
 In a combination device consisting of congeries of well-known mechanical 
 appliances, no liberality of construction is accorded to it to create a monopoly; 
 but is limited to the descriptive elements in the combination as expressed 
 in the specifications; and no great liberality of the doctrine of mechanical 
 equivalents can be indulged in in its favor. As the applicant for such com- 
 bination of old devices chooses his own expressions in presenting it, and
 
 346 THE FIXED LAW OF PATENTS §§ 379-380 
 
 is required to enumerate the elements of his claim, he is limited to the com- 
 bined apparatus as specified. And no one is an infringer of a combination 
 claim unless he uses the elements thereof, and in substantially the same 
 mode of co-operation. — Portland v. Hermann, 160 Fed. 91; 87 C. C. A. 247. 
 Cimiotti v. American, 198 U. S. 399. 
 
 General rule restated without change and cases cited in Union v. Diamond, 
 162 Fed. 148; 89 C. C. A. 172. 
 
 That where the improvement is a narrow' one, it is not entitled to a range 
 of equivalents of any extent, and to save the patent where the alleged in- 
 fringement is not an identical act, it must be held not infringed, see Hendey 
 V. Prentice, 162 Fed. 481 ; 89 C. C. A. 401. 
 
 U. S. Hog V. North, 158 Fed. 818. 
 
 We are dealing, not with a great invention, but with a meritorious one 
 which has made a distinct advance in the art in question. We think the 
 claim should be given an interpretation liberal enough to protect the inventor 
 from the use of machines which differ only in nonessential changes which 
 any skilled mechanic would know enough to make. — Benbow-Brammer v. 
 Straus, 166 Fed. 114; C. C. A. 
 
 § 379. Identity. 
 
 The ends attained being the same, the question is whether the means 
 employed are identical or equivalent. — Ives v. Hamilton, 92 U. S. 426; 
 23 L. Ed. 494. 
 
 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 substantially 
 the same result, they are the same, even though they differ in name, form 
 or shape. — Union v. Murphy, 97 U. S. 120; 24 L. Ed. 935. 
 
 Curt. Pat. sec. 310. 
 
 Though some of the corresponding parts of the machinery are not the 
 same, and, separately considered, could not be regarded as identical or con- 
 flicting, yet, having the same purpose in the combination, and effecting that 
 purpose in substantially the same manner, they are equivalents of each other 
 in that regard. — National v. American, 53 Fed. 367; 3 C. C. A. 559. 
 
 Cochrane v. Deener, 94 U. S. 780. 
 
 While the patentee is entitled to the unknown beneficial uses to which 
 his invention may be put, he cannot prevent the use of ingredients in the 
 combination which may accomplish the previously unknown result, but not 
 equivalents of the patented ingredient in the performance of the function 
 which is specified and described in the claim. — Johns Mfg. Co. v. Robertson, 
 77 Fed. 985; 23C. C A.601. 
 
 Roberts v. Ryer, 91 U. S. 150; Wells v. Jacques, 5 O. G. 364; Rowell v. Lindsay, 
 113 U. S. 97. 
 
 § 380. Miscellaneous Rulings. 
 
 Every device which is used to produce the same effect is not the equivalent 
 for another. — Burr v. Duryee, 68 U. S. 531 ; 17 L. Ed. 750. 
 McCormick v. Talcott, 20 How. 405.
 
 I 380 EQUIVALENTS 347 
 
 It is true the patent cannot be extended beyond the claim. That 
 bounds the patentee's right. But the claim in this case covers the whole 
 process invented, and the complainants seek no enlargement of the process. 
 Certainly the claim of the process ought not to be regarded as excluding all 
 other substances than the one mentioned. As already noticed, the specifica- 
 tion avows the object of the invention. The subject to be treated is fibrous 
 materials of a vegetable nature. And it may well be doubted, in view of 
 this general declaration of the object, whether there is anything that limits 
 the scope of the invention to a process of treating straw and other like ma- 
 terials. — American v. Fiber, 90 U. S. 566; 23 L. Ed. 31. 
 
 In machines, when a broken hne serves the same purpose as a curved line 
 the one is the equivalent of the other. — Ives v. Hamilton, 92 U. S. 426 ; 23 L, 
 Ed. 494. 
 
 The use of a pressure bar in the place of a pressure roll, and the use of 
 springs in the place of weights to produce the pressure are equivalents. — 
 Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939. 
 
 But the lever or its equivalent as a mechanical instrument is made an 
 essential element, and dispensing with the lever and using instead the human 
 hand is not the use of an equivalent, although in the plaintiff's machine the 
 hand is applied to move the lever. — Brown v. Davis, 116 U. S. 237; 29 
 L. Ed. 659; 6 S. Ct. 379. 
 
 Water v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640; Fay v. Cordes- 
 man, 109 U. S. 408; Sargent v. HaU, 114 U. S. 63. 
 
 As that used by the defendants differs from that described in the patent, 
 just as that employed by the prior patentee does, the process of the defend- 
 ants cannot be construed as an infringement without at the same time de- 
 claring that used by the prior patentee to be an anticipation. — Plummer v. 
 Sargent, 120 U. S. 442; 30 L. Ed. 737; 7 S. Ct. 640. 
 
 This result being different from that in the plaintiff's device, the mecha- 
 nism is different and is not an equivalent of Button's. The fourth claim of 
 the patent, if valid, cannot be construed so as to cover the defendant's 
 apparatus. — Grier v. Wilt, 120 U. S. 412; 30 L. Ed. 712; 7 S. Ct. 718. 
 
 Where the claims covered specifically cylinders with chambers or depres- 
 sions, they cannot be construed to cover plain cylinders. — Hendy v. Golden, 
 127 U. S. 370; 32 L. Ed. 207; 8 S. Ct. 1275. 
 
 Fay V. Cordesman, 109 U. S. 408; Sargent v. HaU, 114 U. S. 63; Shepard v. 
 Carrigan, 116 U. S. 593; White i;. Dunbar, 119 U. S. 47; Crawford v. Heysinger, 
 123 U. S. 589. 
 
 There is no invention in substituting one valve or spring of a familiar shape 
 for another. — Westinghouse v. Boyden, 170 U. S. 537; 42 L. Ed. 1136; 
 18 S. Ct. 707. 
 
 Imhauser v. Buerk, 101 U. S. 647. 
 
 Generally, a patentee, no matter what the character of his patent may be, 
 can claim mechanical equivalents known to exist at the time of the applica- 
 tion, whether he claims them or not in his application. — Hunt Bros. v. 
 Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 Walk. Pat. sec. 250; Goodyear v. Davis, 102 U. S. 230; Tatum v. Gregory, 41 
 Fed. 142.
 
 348 THE FIXED LAW OF PATENTS § 380 
 
 The substitution of a weight to perform the same function as a spring, 
 is an equivalent mechanism. — American v. Weston, 59 Fed. 147; 8 C. C. A. 
 56. 
 
 There can be no question that a spring rocker is a perfectly familiar way 
 of obtaining a tipping or oscillating motion, as well as a pivot or hinge, and 
 that one is a well known equivalent of the other. — M'Kay v. Dizer, 61 Fed. 
 102; 9 C. C. A. 382. 
 
 We think these claims and specifications (especially in view of the state 
 of the art) constitute a fair disclaimer and dedication to the public of all 
 right on the part of the patentee to protection against any such device as 
 that used by the appellee. — Stirratt v. Excelsior, 61 Fed. 980; 10 C. C. A. 
 
 216. 
 
 Keystone v Phoenix, 95 U. S 274; Miller v. Brass Co., 104 U. S. 350; McClain 
 V. Ortmayer, 141 U. S. 414; Dobson v. Cubley, 149 U. S. 117; Heine v. Smith, 
 43 Fed. 786; Maddock v. Coxon, 45 Fed. 578. 
 
 If the complainant were entitled to have his first claim construed broadly, 
 clearly the defendant's device would be an infringement. But the com- 
 plainant's invention being limited, as we have seen, by the prior state of the 
 art, if not by the express words of his application, to the use of a single 
 easting, the conclusion necessarily follows that the defendant has not in- 
 fringed' this claim of the patent. — Vulcan v. Smith, 62 Fed. 444; 10 C. C. A. 
 493. 
 
 Roemer v. Peddie, 132 U. S. 313; Snow v. RaUway, 121 U. S. 617; Hoff v. 
 Mfg. Co. 139 U. S. 326; Derby v. Thompson, 146 U. S. 476. 
 
 Means must necessarily be shown in the specification, but the identical 
 means or the special devices were not, in the language of Machine Co. v. 
 Lancaster, 129 U. S. 263, " necessary constituents " of the invention either 
 in the specification or in the claim. — Westinghouse v. N. Y. 63 Fed. 962; 
 11 C. C. A. 528. 
 
 The distinction suggested by the circuit court between inventions (em- 
 ploying cranks and levers visible to the senses and those employing com- 
 pressed air, which operates by modes not visible to the senses, — as to which 
 latter devices the circuit court held that, " in judging of an infringement we 
 are to direct our attention rather to functional equivalents than to mechan- 
 ical equivalents," — we do not think well taken, even in favor of pioneer 
 inventions. The Supreme Court in its ruling in the great leading case of 
 O'Reilly v. Morse, 15 How. 62, which was one in which the far more subtle 
 agency of electricity was under consideration, neither made nor intimated 
 such a distinction. — Boyden v. Westinghouse, 70 Fed. 816; 17 C. C. A. 430. 
 
 That where the specification contains, in a basic patent, a complete de- 
 scription of a species, it is sufficient to include the genus to which it belongs, 
 or the genera which might properly be included with it. — American v. 
 Rowland, 80 Fed. 395; 25 C. C. A. 500. 
 
 Incandescent Lamp Pat. 159 U. S. 465; Read v. Schultze-Berge, 78 Fed. 493; 
 Pearl v. Ocean, Fed. Cas. 10876; Rob. Pat. sec. 517. 
 
 It is very usual for patentees to assert that Machine Co. v. Lancaster 
 has a very general application. On the other hand, it was exceptionable, 
 and the invention in suit there is easily distinguished from the great mass of 
 patented combinations. Its underlying idea was novel. As was said by 
 the Supreme Court at page 273, the mechanical function parformed by the
 
 § 380 EQUIVALENTS 349 
 
 machine covered by the patent, was as a whole entirely new. In the present 
 suit however, the entirely new function is found in the device of Woodward s 
 earlier patent, and the patent now in issue shows nothing except a method 
 of making the new function more useful. In this particular the case is 
 essentially unlike the conditions of the hypothesis stated in V.Q.v. Burdan, 
 156 U. S. 552, as it is entirely plain that the device described in the claim 
 in issue would infringe the device of Woodward's entire patent, although an 
 improvement on it. — Boston v. Woodward, 82 Fed. 97 ; 27 C. C. A. 69. 
 Machine Co. v. Lancaster, 129 U. S. 263. 
 
 The defendant's rotary machine has the same anvil die, and its cutters 
 are arranged to operate in relation thereto in exactly the same way as on 
 the reciprocating machine. They must be classed in the same category. 
 — Diamond v. Goldie, 84 Fed. 972; 28 C C. A. 589. 
 
 Oval V. Mfg. Co. 60 Fed. 285. 
 
 While we give full weight to the decision of the Supreme Court in West- 
 in-^house v. Boyden, 170 U. S. 537, and recognize that it is an abuse o^ the 
 term " equivalent " to employ it to cover every combination of devices in 
 a machine which is used to accomplish the same result, we are of the opinion 
 that in that case the Supreme Court left unqualified the previous ruhngs such 
 as recognized in the case of Imhauser v. Buerk, 101 U. S. 647. — Beach v. 
 Hobbs, 92 Fed. 146; 34 C. C. A. 248. 
 
 Note: I think it is a misapprehension of the holding in the Westinghouse 
 case, to regard it as limiting the proper use of equivalents, since the question 
 in that case turned upon the patentability of a mechanical process; and that 
 the discussion of equivalency was largely collateral thereto. 
 
 In our opinion, neither the words " substantially as described " in the 
 claims nor the proceedings in the patent office in which the patentee ac- 
 quiesced in the decision that these words must be inserted after the w-ord 
 " mechanism," in the claims, prohibit the patentee from invoking the doc- 
 trine of known equivalents with respect to alleged infringers. — Beach v. 
 Hobbs, 92 Fed. 146; 34 C. C. A. 248. 
 
 The meritoriousness of an improvement depends, first, upon the extent to 
 which the former art taught or suggested the step taken; and, second, upon 
 the advance made in the usefulness of the machine as improved. — Bundy 
 V. Detroit, 94 Fed. 524; 36 C. C. A. 375. 
 
 McCormick v. Aultman, 69 Fed. 371. 
 
 For concrete illustrations of what are and what are not mechanical equiva- 
 lents, see Brown v. King, 107 Fed. 498 ; 46 C. C. A. 432. 
 
 McKay v. Dizer, 61 Fed. 102; Steams v. Russell, 85 Fed. 218; Foster v. Moore, 
 Fed. Cas. 4978; Schreiber v. Grimm, 72 Fed. 671. 
 
 The mere use of known equivalents for some of the elements of prior 
 structures; the substitution for one material of another known to possess 
 the same qualities, though not to the same degree; the mere carrying tor- 
 ward or more extended application of the original idea, involving a change 
 in form, proportions, or degree, and resulting in doing the same work in 
 the same way and by substantially the same means — is not patentable 
 even though better results are secured; and this is the case, although what 
 preceded rests alone in public knowledge and use, and not upon a patent. 
 — Sloan V. Portland, 139 Fed. 23; 71 C. C. A. 460.
 
 350 THE FIXED LAW OF PATENTS §381 
 
 Market v. Rowley, 155 U. S. 621; Wright v. Yuengling, 155 U. S. 47; Adams v. 
 Stampin<- 141 U. S. 539; Burt v. Evory, 133 U. S. 349; Brown v. D. C, 130 U. S. 
 87- Crouch v. Roemer, 103 U. S. 797; Roberts v. Ryer, 91 U. S. 150; Smith v. 
 Nichols, 21 Wall. 115; Hicks v. Kelsey, 18 Wall. 670; National v. Interchangeable. 
 106 Fed. 693; National v. Lithographic, 81 Fed. 395. 
 
 Note: This statement of Judge Hook, Eighth Circuit, like most general 
 statements of the kind, is open to material criticism. While such general 
 propositions are sound, the specific modifications essential to equity render 
 sweeping statements more or less dangerous. 
 
 Jordan in his specifications took pains to say that he had adopted the 
 squeezing device, which he preferred, but that the device might be varied 
 by those skilled in the art without departing from the principle of his in- 
 vention. The Eldridge patent proves that this is true. An examination 
 of the two patents carries the conviction that Eklridge has appropriated 
 Jordan's inventive idea. It is the whole purpose of the doctrine of equiva- 
 lency to protect the inventor against piracy and secure to him the benefit 
 of that which he has invented. — American v. Hickmott, 142 Fed. 141; 
 73 C. C. A. 359. 
 
 Where three separate elements, each performing an individual function, 
 are supplanted by a single element which itself performs the functions of 
 all three, it is quite clear that the three-fold capacity of the single element 
 is not the equivalent of the three single elements. — Lambert v. Lidgerwood, 
 154 Fed. 372; 83 C. C. A. 350. 
 
 Assuming that there was an invention at all, under the prior decisions of 
 this court, it was of that class as to which there is barely any room for equiv- 
 alents. — U. S. V. North, 158 Fed. 818; 86 C. C. A. 78. 
 
 Ford V. Bancroft, 98 Fed. 309. Bradford v. Belknap, 105 Fed. 63. Distinguish- 
 ing Reece v. Globe, 61 Fed. 958. 
 
 ESTOPPEL. 
 
 Corporations § 381 
 
 Evidence of § 382 
 
 Interference Adjudication § 383 (see 
 
 §580) 
 
 Licensor or Former Owner § 384 
 
 Owner of Patent or Licensee § 385 
 
 Privity § 386 
 
 Miscellaneous § 387 
 
 See — Abandonment § 21; Adjudica- 
 
 tion § 33; Amevdment § 52: Assign- 
 ment § 149: AttorneTjs § 178; De- 
 fenses § 315; Disclaimer § 339; 
 Employer and Employee § 366; 
 Infringement §§ 509-13; Laches § 
 726; License § 754; Licensor and 
 Licensee § 765; Pleading and Practice 
 § 788; Res Judicata § 893 
 
 § 381. Corporations. 
 
 The T.H.Co. consohdated with the Edison General. Formerly the T. H, 
 Co was in co-operation with the Sawder Man Co. and was bound by various 
 contracts involving the Sawyer Man lamp patents. This was held not to be 
 an estoppel. — Edison Electric v. Sawyer-]\Ian, 53 Fed. 592; 3 C. C. A. 605. 
 
 It has been suggested, but manifestly cannot be true, that merely because 
 he is a stockholder in the cabinet company, the appellant may not deny the 
 validity of a patent owned by the company. — Antisdel v, Chicago, 89 l^ed. 
 308; 32 C. C. A. 216. 
 
 The old company held a mere license from the owmer of the patent. The 
 managing directors, in the absence of the owner of the patent, clearly gave 
 the representatives of the new company to understand that the patent m
 
 §§ 382-384 ESTOPPEL 351 
 
 question was an asset of the old company. Held: Representations made by 
 the managing directors and principal owners of the old company, even though 
 they were more explicit than they are proved to have been, in his absence or 
 without his certain specific knowledge, could not create an estoppel in favor 
 of the new company as against him. — Standard v. Arrott, 135 Fed. 750; 
 68 C. C. A. 388. 
 
 § 382. Evidence of. 
 
 It may be that questions were there involved and decided concerning other 
 claims of the patents and other parts of steam engines in steam pumps. 
 We do not know, and estoppels must be asserted. — Union v. Battle Creek, 
 104 Fed. 337; 43 C. C. A. 560. 
 
 Where an estoppel is relied on, the facts upon which it is based must be 
 proved with particularity and precision, and nothing can be supplied by 
 inference or intendment. — Standard v. Arrott, 135 Fed. 750; 68 C. C. A. 
 388 
 
 § 383. Interference Adjudication. 
 
 In the absence of proof that defendant was in privity with the applicant 
 whose patent was voided on interference with the patent in suit, the de- 
 fendant is not estopped to deny the validity of the patent in suit. — McCarty 
 V. Lehigh, 160 U. S. 110; 40 L. Ed. 358; 16 S. Ct. 240. 
 
 Russell V. Place, 94 U. S. 606. 
 
 We do not think that petitioner was estopped from insisting upon his 
 application by proceeding with the interference. It would be pressing mere 
 order of procedure and the convenience of the Patent Office too far to give 
 them such result under the circumstances. — Steinmetz v. Allen, 192 U. S. 
 543 ; 48 L. Ed. 555 ; 24 S. Ct. 416. 
 
 So far as respects the Howe patent, and the machines made and used by 
 the defendant thereunder, it is clear that the decisions of the patent office 
 in favor of Howe have been acquiesced in by the complainant for such length 
 of time as to work an abandonment of any claim to the invention therein 
 involved. — Fassett v. Ewart, 62 Fed. 404; 10 C. C. A. 441. 
 
 Gandy v. Marble, 122 U. S. 432. 
 
 § 384. Licensor or Former Owner. 
 
 One of the respondents below was the original patentee, and the title of 
 complainants is derived under assignments from him for a pecuniary con- 
 sideration, valuable in law, although said to be small. Consequently an 
 estoppel operates against' him. The precise nature of this estoppel does not 
 seem to have been always clearly apprehended. It is, in effect, that, when 
 one has parted with a thing for a valuable consideration, he shall not, so 
 long as he retains the consideration, set up his own fraud, falsehood, error 
 or mistake to impair the value of what he has thus parted with. As applied 
 to the specifications of a patent, the vendor patentee is as much barred from 
 setting up that his allegations therein were merely erroneous as that they were 
 wilfully false. — Babcock v. Clarkson, 63 Fed. 607; 11 C. C. A. 351. 
 
 Sturm V. Baker, 150 U. S. 312; Brant v. Iron Co. 93 U. S. 326; Cropper v 
 Smith, 26 Ch. Div. 700; L. R. 10 App. Cas. 249; Hall v. Conder, 2 C. B. N. S. 22; 
 Chambers v. Crichley, 33 Beav. 374; Brazee v. Schofield, 124 U. S. 495' Ball v 
 Ball, 58 Fed. 818; Clark v. Adie, L. R. 2 App. Cas. 423; Trotman v. Wood, 16 
 B. N. S. 479; Crosthwaite v. Steele, 6 R. P. C. 190; Ashworth v. Roberts, 9 
 R. P. C. 309.
 
 352 THE FIXED LAW OF PATENTS § 385 
 
 In a suit for infringement, brought against the assignor of a patent by 
 his assignee, the assignor is estopped from denying the vaUdity of his patent. 
 We cannot say that the patent has been anticipated by prior structures, or 
 that it is void for want of novelty or utiUty. — Martin v. Martin, 67 Fed. 786; 
 14 C. C. A. 642. 
 
 Babcock v. Clarkson, 63 Fed. 607 — 58 Fed. 581; Ball v. Ball, 58 Fed. 818; 
 Foulks V. Kamp, 3 Fed. 898; Onderdonk v. Fanning, 4 Fed. 148; Purifier v. 
 Guilder, 9 Fed. 155; Curran v. Burdsall, 20 Fed. 835; Underwood v. Warren, 21 
 Fed 573- Parker f. McKee, 24 Fed. 808; American f. Larraway, 28 Fed. 141; 
 Corbin v. Yale, 58 Fed. 563; Chambers v. Crichley, 33 Beav. 374; Hocking v. 
 Hocking, 4 Web. Pat. Cas. 434; Walton v. Lavator, 29 L. J. C. P. 275. 
 
 Estoppel was claimed through patents not in suit. Held: Non constat that 
 patents which had not been brought to our attention, and not the one in 
 suit, furnish the basis of this alleged estoppel, if such an estoppel can be 
 maintained. — Martin v. Martin, 67 Fed. 786; 14 C. C. A. 642. 
 
 Being a mere subordinate, he cannot be enjoined, under the circumstances 
 of this case, unless his principles are also subject to injunction. Under the 
 rule in Belnap v. Schild, 161 U. S. 10, he cannot be holden to account for 
 profits; so there is no ground for equitable jurisdiction against him severed 
 from the person who employed him. While a person occupying a subor- 
 dinate position, may be in privity with his principal, in the sense in which 
 that word may properly be used in this connection, the reverse is not or- 
 dinarily true. — Boston v. Woodward, 82 Fed. 97 ; 27 C. C. A. 69. 
 
 The plaintiff contends that the defendant having granted the license to 
 them, for a valuable consideration, is estopped from denying that the patent 
 is valid, and we are of opinion that he is right in this. In a case recently de- 
 cided by this court, it was held that the patentee, after having transferred 
 his interest in the patent, was precluded from denying the validity thereof 
 to the same extent, and to the same extent only, that a third person would 
 be, subject to the limitations, however, that he could not allege the total 
 invalidity of the patent. The result being that he is still left at liberty to 
 show that, assuming the patent to be valid, it is nevertheless subject to the 
 limitations imposed thereon by the prior art. — Smith v. Ridgley, 103 Fed. 
 875; 43C. C. A. 365. 
 
 Noonan v. Athletic, 99 Fed. 90; Mfg. Co. v. Scharling, 100 Fed. 87. 
 
 The contention that the defendants are estopped from questioning their 
 (the patent's) validity because of Ratican's relation to them is untenable. 
 Whatever his original part interest in them or his personal conduct with 
 respect to them might have upon his present interests, as to which we 
 express no opinion, the rights of others are now involved in this case, and 
 their relation to Ratican is not so clearly shown as to warrant making any 
 orders affecting their rights on the assumption of identity with him. — St. 
 Louis V. Sanitary, 161 Fed. 725; 88 C. C. A. 585. 
 
 § 385. Owner of Patent or Licensee. 
 
 The argument is that the United States ought not to be estopped, as 
 a licensee, to deny the validity of the patent because it is not a vendor, but 
 simply a user, of the patented article, and therefore has not enjoyed the 
 advantage of a practical monopolv, as a seller might have enjoyed it even if 
 the patent turned out to be bad. This distinction between sale and use, 
 even for a non-competitive purpose, does not impress us. So far as the practi- 
 cal advantage secured is matter for consideration, whether a thing made
 
 §385 
 
 ESTOPPEL 353 
 
 under a patent supposed to be valid is used or sold, it equally may be assumed 
 that the thing would not have been used or sold but for the license from the 
 patentee. — U. S. v. Harvey, 196 U. S. 310; 49 L. Ed. 492; 25 S. Ct. 240. 
 
 The validity of a patent cannot be disputed by one who undertakes to 
 justify under a license. — Piatt v. Fire Extinguisher, 59 Fed. 897 ; 8 C. C. A. 
 357. 
 
 Kinsman v. Parkhurst, 18 How. 289; Brown v. Lapham, 27 Fed. 77. 
 
 The fact that for a time the defendant was a licensee of the patent in 
 suit, cannot, of course, estop the defendant from disputing its validity in 
 a suit for infringements charged to have taken place after the license was 
 withdrawn. Such a fact, in a doubtful case, might have considerable evi- 
 dential force as an admission of the validity of the patent by the licensee. — 
 Dueber v. Robbins, 75 Fed. 17; 21 C C. A. 198. 
 
 The attempt to show by the testimony of the patentee that the patent 
 embraced something which he did not invent, and to restrict the patent to 
 his understanding of the scope of the invention, was unwarranted and im- 
 proper. Even if he had been a party to the suit, he could not have been 
 bound by a mistaken judgment which he might have been urged 
 to declare of the scope or character of the patent, and, as against 
 the assignee of his title, his testimonv in that particular was wholly incom- 
 petent. — Elgin V. Creamery, 80 Fed. 293; 25 C. C. A. 426. 
 
 The question here is whether one who has been under a contract of agency, 
 determinable at will, to sell a patented article, if he discovers or concludes 
 that the patent is valid, may openly repudiate the agency, and, when sued 
 for subsequent acts of infringement, may plead the invalidity of the patent 
 as a defense. We know of no authority, and believe there is no sound reason, 
 to the contrary. — Antisdel v. Chicago, 89 Fed. 308; 32 C. C. A. 216. 
 
 The defendants had held a license to the patented machines and had 
 marked the machines patented under the patent in suit. The hcense had 
 expired and the rights of defendants had ceased. Held: On questions of 
 utility and invention, facts of this class are sometimes persuasive as matters 
 of evidence but, as the respondents never did use complainant's specific 
 form of feeder, to give these facts any substantial effect in supplementing 
 complainant's case, would be merely reasoning within a circle. — Cushman v. 
 Goddard, 95 Fed. 664; 37 C. C. A. 221. 
 
 But this estoppel, for manifest reasons, does not prevent him from den^ang 
 infringement. To determine such an issue, it is admissible to show the 
 state of the art involved, that the court may see what the thing was which 
 was assigned, and thus determine the primary or secondary character of 
 the patent assigned, and the extent to which the doctrine of equivalents may 
 be invoked against the assignor. The court will not assume against an as- 
 signor, and in favor of his assignee, anything more than that the irivention 
 presented a sufficient degree of utility and novelty to justify the issuance 
 of the patent assigned, and will apply to the patent the same rule of con- 
 struction, with this limitation, which would be applicable between the pat- 
 entee and a stranger. — Noonan v. Chester, 99 Fed. 90; 39 C. C. A. 426. 
 
 Babcock v. Clarkson. 63 Fed. 607: Ball v. Ball. 58 Fed. 818; Cash Carrier v. 
 Martin, 67 Fed. 786: Chambers v. Crichley, 33 Beav. 374; Construction Co. v. 
 Stromberg, 66 Fed. 550; Clark v. Adie, 2 App. Cas. 423. 
 
 After the termination of a license, the parties are freed from any estoppel 
 resting upon them while in their former relation. The licensee may dispute
 
 354 THE FIXED LAW OP PATENTS 5 386 
 
 the title or right of the former Ucensor to the same extent as a stranger might. 
 The estoppel is raised for the protection of the interest which the assignor 
 or licensor professed to convey, and has no further office. — Stimpson v. 
 Stimpson, 104 Fed. 893; 44 C. C. A. 241. 
 
 Mfg. Co. V. Robbins, 75 Fed. 17; Noonan v. Athletic, 99 Fed. 90; Smith v. 
 Ridgley, 103 Fed. 975. 
 
 Being himself the inventor and applicant for the patent, defendant, 
 under well settled principles, may not challenge its validity, and he does 
 not undertake to do so. — Piaget v. Headley, 108 Fed. 870; 48 C. C. A. 116. 
 
 A subsequent purchaser from a licensor and guarantor takes the patent 
 subject to all equities, but this does not include any obligations of the as- 
 signor. — Bradford v. Kisinger-Ison, 113 Fed. 811 ; 51 C. C. A. 483. 
 
 There is evidence to show that the Regent Co. had designed the alleged 
 infringing mirrors before employing Curry (one of the inventors of the patent 
 in suit), that Curry had no voice in deciding what should be manufactured, 
 and that his efforts were directed to organizing the factory so as to produce 
 better and cheaper what the Regent Co. had already determined upon. 
 On this showing there is basis for contending that the Regent Co. is not 
 involved in the estoppel against Curry. — Regent v. Penn, 121 Fed. 80; 
 57 C. C. A. 334. 
 
 Boston V. Woodward, 82 Fed. 97. 
 
 Being- the assignor, he cannot be permitted to assail the validity of his 
 own patent. — Wold v. Thayer, 148 Fed. 227 ; 78 C. C. A. 350. 
 Siemens-Halske v. Duncan, 142 Fed. 157. 
 
 § 386. Privity. 
 
 One who, for his own interests, assumes the defense of an action, is bound 
 by the judgment as if he had been a party thereof or in privity with the 
 defendant. But it must not be overlooked that the rule is subject to the 
 limitation that, in order that one not a party who has assumed the burden 
 of the defense of an action shall be bound by the judgment therein rendered, 
 his connection with the defense must be open and known to the opposite 
 party. Estoppels must be mutual. — Cramer v. Singer, 93 Fed. 636; 35 
 C. C. A. 508. 
 
 Herm. Estop. 157; 2 Black. Judgm. sec. 540; Freem. Judgm. 189; Andrews 
 V. Pipe Works, 76 Fed. 166; Lacroix v. Lyons, 33 Fed. 437; Schroeder v. Lahr- 
 man, 26 Minn. 87; Ass'n v. Rogers, 42 Minn. 123; Allen v. Hall, 1 A. K. Marsh, 425. 
 
 The evidence before us tends strongly to show that the appellants were 
 privy in fact to the various proceedings involved in this litigation; but if 
 we were to assume that the present appellants were parties in a part of u 
 prior litigation, and that they conducted, controlled, and paid the expenses 
 of that in which they were not parties of record, we could not, in the present 
 aspect of the case accept such conditions as operating as a strict estoppel, 
 for the reason that the final decree in the earlier litigation was not entered 
 after this proceeding was instituted, and is not so pleaded as to strictly and 
 legally present the question of estoppel. — Bresnahan v. Tripp, 99 Fed. 280; 
 39 C. C. A. 508. 
 
 An estoppel must be mutual. If the defendants did not openly and avow- 
 edly, to the knowledge of complainants, undertake the defense of that suit, 
 the complainants would not have been estopped by the decree, if adverse
 
 § 387 ESTOPPEL 355 
 
 to them, in a subsequent suit against the defendants. — Lane v. Wells, 
 99 Fed. 286; 39 C. C. A. 528. 
 
 Herm. Estop, p. 157; Andrews v. Pipe Works, 76 Fed. 166; Cramer v. Mfg. 
 Co. 93 Fed. 636. 
 
 Even if B. had been a party, formal admissions made in pleadings by- 
 one party to a litigation are not sufficient to bind him in another suit be- 
 tween different parties, involving the same subject-matter. — American v. 
 Phoenix, 113 Fed. 629; 51 C. C. A. 339. 
 
 Gramophone v. Gramophone, 107 Fed. 129. 
 
 The doctrine is well settled that one who for his own interest joins in the 
 defense of a suit to which he is not a party of record is as much concluded 
 by the judgment as if he had been a party thereto, provided his conduct 
 in that respect was open and avowed or otherwise well known to the oppo- 
 site party. An estoppel by decree exists, although the demand in the two 
 cases is not the same, whenever the question upon which the recovery m the 
 second case depends has been before decided, under like conditions, between 
 the same parties or those in privity with them. — Penfield v. Potts, 126 Fed. 
 475; 61 C. C. A. 371. 
 
 Lane v. Welds, 99 Fed. 286; Southern v. U. S. 168 U. S. 1. 
 
 § 387. Miscellaneous. 
 
 No principle is better settled than that a party is not estopped by his 
 silence unless it has misled another to his hurt. — Railroad v. DuBois, 79 
 U.S. 47; 20L. Ed. 265. 
 
 Hill V. Esplay, 31 Pa. 334. 
 
 When the inventor disclosed his invention which defendant did not know 
 was to be patented and defendant used same, he is not estopped by such use 
 to deny the validity of the patent subsequently obtained. — Leggett v. 
 Standard, 149 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. 
 
 The fact that defendant had apphed for a patent upon the device which he 
 subsequently infringed and failed does not estop him from denying the nov- 
 elty of the patent sued on. — Haughey v. Lee, 151 U. S. 282; 38 L. Ed. 162; 
 14 S. Ct. 331. 
 
 The same principle is applied to an inventor who makes his discovery 
 public, looks on, and permits others to use it without objection or assertion 
 of a claim for a royalty. In such case he is held to abandon his inchoate 
 right to the exclusive use of his invention, to which a patent would have en- 
 titled him, had it been applied for before such use. — Gill v. U. S. 160 U. S. 
 426; 40 L. Ed. 480; 16 S. Ct. 322. 
 
 Pennock v. Dialogue, 2 Pet. 1, 16. 
 
 It may well be doubted whether the pendency of a motion for a new trial 
 would interfere in any way with the operation of the judgement as an estoppel. 
 — Hubbell V. U. S. 171 U. S. 203; 43 L. Ed. 136; 18 S. Ct. 828. 
 
 Harris v. Bemhart, 97 Cal. 546; Chase v. Jefferson, 1 Houst. 257; Young v. 
 Brehe, 19 Nev. 379. 
 
 The issue of estoppel may be raised by the court although neither party 
 intended to raise it. — Woodward v. Boston, 63 Fed. 609; 11 C. C. A. 353. 
 
 It is said that the right to set up estoppel, was waived in various ways. 
 There was no waiver by the pleadings. The estoppel w^ould properly arise
 
 356 
 
 THE FIXED LAW OF PATENTS 
 
 388 
 
 as a matter of rebuttal by complainant on the proofs, and not on the plead- 
 ings. The complainant might have anticipated the defense of invalidity by 
 inserting, in its bill, charges and an avoidance. But it was at its option to 
 do so and it lost no right by not availing itself of this option. Story Eq. PI. 
 sec. 33. — Woodward v. Boston, 63 Fed. 609; 11 C. C. A. 353. 
 
 The defendant, while engaged in selling the patented article, had been 
 accustomed to represent to the public that the patent was valid. As against 
 him, that was better proof of the validity of the letters patent than any 
 ordinary evidence of public acquiescence could have been. — Antisdel v. 
 Chicago, 98 Fed. 308; 32 C. C. A. 216. 
 
 The appellee contends for an estoppel by reason of a certain release that 
 was obtained from him by the said stockholder and another large stock- 
 holder, as a co-partnership just about the time of, or a few days after, the 
 organization of the defendant company. This release was for all past in- 
 fringements of the parties, in their own personal business, and could not in 
 ^ny way affect the defendant corporation as an estoppel, even if the release 
 had not contained as its concluding paragraph, the following: " It is under- 
 stood that it does not in any way bind or affect the corporation known as 
 the Newark Spring Mattress Company." — Newark v. Ryan, 102 Fed. 693; 
 42 C. C. A. 594. 
 
 In the absence of an expressly proved fraud, there can be no estoppel 
 based upon acts or conduct of the party sought to be estopped, where such 
 conduct is as consistent with honest purpose or with absence of negligence, 
 as with their opposites. — Standard v. Arrott, 135 Fed. 750; 68 C. C. A. 388. 
 
 EVIDENCE. 
 
 Statutory Provisions § 388 
 Anticipation (see § 58) 
 
 Prior Art § 389 
 
 Prior Patent or Publication § 390 
 
 Prior Use § 391 
 
 Rebuttal § 392 
 
 Miscellaneous § 393 
 Assignment § 394_(see § 149) 
 Depositions § 395 
 Documentary § 396 
 Exhibits § 397 
 Expert § 398 
 
 Infringement § 399 (see § 44o) 
 Invention — Fact of § 400 (see § 
 
 588) 
 
 Law Actions (see § 733) 
 Depositions § 401 
 
 Directions and Instructions § 402 
 
 Facts — For Court § 403 
 
 Facts — For Jury § 404 
 
 Rules of § 405 
 
 Miscellaneous Rules § 406 
 Objections and Exceptions § 407 
 Parol § 408 
 Prima Facie § 409 
 Records and Documents § 410 
 Miscellaneous § 411 
 See — Abandonment § 11; Anticipa- 
 tion §§ 71-77; Assignment §§ 158, 
 171; Infrmgeryient §§ 487-96; Inven- 
 tion §§ 620-38, 688; Judicial Notice 
 § 705; Prioritij § 809; Public Use 
 § 850; Reopening Case § 891 
 
 § 388. Statutory Provisions. 
 
 The Patent Act makes only the following special provisions: 
 
 Written or printed copies of any records, books, papers, or drawings 
 belonging to the Patent Office, and of letters patent authenticated by the 
 seal and certified by the Commissioner or Acting Commissioner thereof, 
 shall be evidence in all cases wherein the originals could be evidence; and 
 any person making application therefor, and paying the fee required by law, 
 shall ha\e certified copies thereof. — R. S. 892.
 
 §389 EVIDENCE 357 
 
 Copies of the specifications and drawings of foreign letters patent certified 
 as provided in the preceding section, shall be prima facie evidence of the fact 
 of the granting of such letters patent, and of the date and contents thereof. 
 — R. S. 893. 
 
 The printed copies of specifications and drawings of patents, which the 
 Commissioner of Patents is authorized to print for gratuitous distribution, 
 and to deposit in the capitols of the States and Territories, and in the clerk's 
 offices of the district courts, shall, when certified by him and authenticated 
 by the seal of his office, be received in all courts as evidence of all matters 
 therein contained. — R. S. 894. 
 
 § 389. Anticipation — Prior Art. 
 
 No notice was necessary to justify the admission of evidence to show 
 the state of the art. — Vance v. Campbell, 66 U. S. 427; 17 L. Ed. 168. 
 
 Evidence of the state of the art is admissible in actions at law under the 
 general issue without a special notice, and in equity cases without any 
 averment in the answer touching the subject. It consists of proof of what 
 was old and in general use at the time of the alleged invention. It is re- 
 ceived for these purposes and none other — to show what was then old, to 
 distinguish what was new, and to aid the court in the construction of the 
 patent. — Brown v. Piper, 91 U. S. 37; 23 L. Ed. 200. 
 
 Proof of the state of the art is admissible in equity cases without any 
 averment in the answer touching the subject, and in actions at law without 
 notice. It consists of proof of what was old and in general use at the time 
 of the alleged invention and may be admitted to show what was the old, or 
 to distinguish what is new, or to aid the court in the construction of the pat- 
 ent. — Dunbar v. Meyers, 94 U. S. 187 ; 24 L. Ed. 34. 
 
 Evidence showing the state of the art to limit the construction of the 
 patent is competent under a general denial without special pleading. — 
 Zane v. Soffe, 110 U. S. 200; 28 L. Ed. 119; 3 S. Ct. 562. 
 
 We have the material for ascertaining its meaning in that view, by means 
 of the evidence on that point contained in the record, which, although ob- 
 jected to on the ground that no prior use or knowledge of the invention 
 claimed has been specifically set up in the answer as a defense, was never- 
 theless admissible for the purpose of defining the limits of the grant in the 
 original patent and the scope of the invention described in the specification. 
 
 — Eachus V. Broomall, 115 U. S. 429; 29 L. Ed. 419; 6 S. Ct. 229. 
 Vance v. Campbell, 1 Black. 427; Brown v. Piper, 91 U. S. 37. 
 
 Although the specification of the patent set forth the state of the art 
 sufficientlv, the testimony of an expert was admissible, though unnecessary. 
 
 — Ecaubert v. Appleton, 67 Fed. 917; 15 C. C. A. 73. 
 
 The defense of want of invention, including the right to introduce evidence 
 of the prior art, is always open, and it is not necessary to set it up in the 
 answer. — Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 593. 
 
 Richards v. Elevator Co. 158 U. S. 299. 
 
 Ordinarily, prior patents can be offered in evidence, when not specially 
 pleaded, only for the purpose for which the appellee offers the patent to which 
 his motion refers; that is to say, only for the purpose of construing and
 
 358 THE FIXED LAW OF PATENTS §§390-391 
 
 limiting the claims of the patent without affecting their validity. — Parsons 
 V. Seelye, 100 Fed. 452; 40 C. C. A. 484. 
 
 Grier V. Wilt, 120 U. S. 412; Edmund Pat. 2 ed. 650. 
 
 That prior patents not presented to the circuit court and no explanation 
 of them given will not be considered on appeal, see Scott v. Lazell, 160 Fed. 
 472; 87 C. C. A. 456. 
 
 § 390. Anticipation — Prior Patent or Publication. 
 
 Letters patent, though not set up in the answer, may be received in evi- 
 dence to show the state of the art and to aid in the construction of the 
 plaintiff's claim, though not to invalidate the claim on the ground of want 
 of novelty when properly construed. — Grier v. Wilt, 120 U. S. 412 ; 30 L. Ed. 
 712; 7 S. Ct. 718. 
 
 Vance v. Campbell, 66 U. S. 427; Railroad v. Dubois, 79 U. S. 47; Brown v. 
 Piper, 91 U. S. 37; Eachus v. BroomaU, 115 U. S. 429. 
 
 The respondents cite over 40 patents alleged to either anticipate or narrow 
 the art. Our general observation as to these is that the citation of so many 
 patents by the respondent in an infringement suit sometimes tends, as we 
 have several times said, not so much to weaken the complainant's position 
 as to strengthen it, by showing that the trade had long and persistently 
 been seeking in vain for what the complainant finally accomphshed. — For- 
 syth V. Garlock, 142 Fed. 461; 73 C. C. A. 577. 
 
 The defense (anticipation) is only suggested by injecting a large number 
 of prior patents into the record without any explanatory testimony. If an 
 examination of the prior art were necessary to the decision of the case, we 
 should not sustain the defense of anticipation upon such mere production 
 of patents for complicated combinations of machinery. — Bell v. MacKinnon, 
 149 Fed. 205; 79 C. C. A. 163. 
 
 That a prior patent which fails to mention or disclose a use which it is 
 alleged to anticipate will not be held to possess such qualities to defeat a 
 subsequent patent of undoubted utility, see Lewis v. Premium, 163 Fed. 
 950; C. C. A. 
 
 Barbed Wire Pat. 143 U. S. 275; Deering v. Winona, 155 U. S. 286. 
 
 The Zimmer publication must be given effect as an anticipation only to 
 the extent that it actually gave the public information of a process of filtra- 
 tion. It is not competent to read into such a publication information which 
 it does not give, or by expert opinion explain an otherwise uninforming 
 statement by evidence of some apparatus or article not itself competent as 
 an anticipation. — Loew v. German- American, 164 Fed. 855. 
 
 Badische v. Kalle, 104 Fed. 802. 
 
 § 391. Anticipation — Prior Use. 
 
 The alleged prior use must be certain and the anticipating invention re- 
 duced to practice. But prior knowledge and use by a single person is suffi- 
 cient. — Coffin V. Ogden, 85 U. S. 120; 21 L. Ed. 821. 
 
 Gayler v. Wilder, 10 How. 496; Reed v. Cutter, 1 Story, 590; Bedford v. Hunt, 
 1 Mus. 303. 
 
 The burden of proof of prior use is on the defendant. — Brown v Gu'ld, 
 90 U. S. 181; 23 L. Ed. 161.
 
 5§ 392-393 EVIDENCE 359 
 
 Under a general denial of the patentee's priority of invention, evidence of 
 prior knowledge and use, taken without objection, is competent at the final 
 hearing on the question of the validity of the patent. — Zane v. Soffe, 110 
 U. S. 200; 28 L. Ed. 119; 3 S. Ct. 562. 
 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 Testimony of prior use, produced after adjudication and unsifted by 
 cross-examination, is always to be accepted with caution. It must be most 
 clear and convincing to warrant what is substantially a reversal of an ad- 
 judication at a final hearing. — Consohdated v. Hays, 100 Fed. 984; 41 
 C. C. A. 142. 
 
 Such evidence, especially when it deals with experiments which resulted 
 only in some two or three specimens, which never left the shop, and were 
 seen years before by but a few persons, who, in giving their recollection of 
 dates, are unable to fix such dates by reference to some transaction whose 
 date is susceptible of definite proof, is rarely satisfactory. — Lein v. Myers, 
 105 Fed. 962; 45 C. C. A. 148. 
 
 That a mere accidental or fugitive occurrence is not sufficient in itself to 
 defeat a patent, see Edison v. Novelty, 167 Fed. 977 ; C. C. A. 
 
 § 392. Anticipation — Rebuttal. 
 
 The defendant may at all times, under proper pleadings, resort to prior 
 use and the general history of the art to assail the validity of a patent or to 
 restrain its construction. The door is then opejied to the plaintiff to resort 
 to the same kind of evidence in rebuttal; but he can never go beyond his 
 claim. — Keystone v. Phoenix, 95 U. S. 274; 24 L. Ed. 344. 
 
 Where plaintiff had introduced evidence of want of novelty and defendant 
 had rebutted such evidence it was within the discretion of the court to refuse 
 to allow the plaintiff to introduce further evidence. — St. Paul v. Starling, 
 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. 
 
 After defendant had introduced in evidence earlier patents, it was proper 
 for plaintiff to show that prior to the date of any of them he had reduced 
 his invention to a working form. — St. Paul v. Starling, 140 U. S. 184; 35 
 L. Ed. 404; 11 S. Ct. 803. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Webster v. Higgins, 105 U. S. 580. 
 
 Evidence introduced on rebuttal to change the character and force of 
 the prima facie proofs comes too late to be of much weight. — Forgie v. Oil 
 Well Supp. Co. 58 Fed. 871 ; 7 C. C. A. 551. 
 
 § 393. Anticipation — Miscellaneous. 
 
 Witness was asked if defendant's machine was like the model in evidence. 
 Objected to on the ground that no notice had been given covering the model. 
 Objection overruled and sustained. — Evans v. Hittich, 7 Wheat. 453; 5 L. 
 Ed. 496. 
 
 . The want of invention in a patent is a matter of defense imless the thing 
 for which a patent is claimed shows on its face that it is without invention. 
 — Hunt Bros. v. Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 Walk. Pat. sec. 599; Mahn v. Ham'ood, 112 XJ. S. 354; Hendy v. Iron Works, 
 127 U. S. 370.
 
 360 THE FIXED LAW OF PATENTS §§ 394-396 
 
 It was stipulated that testimony in either one of two pending cases might 
 be used in the other. A patent, without pleading and without notice was 
 introduced in one case for other purposes, and was then set up in the other 
 case in anticipation. Neither pleading nor proof was made to bring it in. 
 Held: It was not the intention of the stipulation that a patent offered for 
 one purpose in one case could be used in the other case as an anticipation, 
 without an amendment of the pleadings and without a scintilla of testimony 
 by which the complainant could be warned so as to offer seasonable testi- 
 mony in regard to the history and character of the alleged anticipation, before 
 the record reached the appellate court. — Vermont v. Gibson, 56 Fed. 143; 
 5 C. C. A. 451. 
 
 § 394. Assignment. 
 
 The appellee produced a license in its possession absolute on its face and 
 without any limitation or condition. The burden of proof is upon the appel- 
 lants to show that it was delivered as an escrow. — i\Iellon v. D. L. & W. 
 154 U. S. 673; 26 L. Ed. 929; 14 S. Ct. 1194. 
 
 But it is the settled rule with respect to the construction of patents 
 that the prior state of the art is admissible in evidence " to show what ^yas 
 old, to distinguish what was new, and to aid the court in the construction 
 of a patent." That this rule applies as between assignor and assignee has 
 been held by this court in two carefullv considered cases, — Ball v. Ball, 
 58 Fed. 818, and Babcock v. Clarkson, 63 Fed. 607 — 58 Fed. 581. — Martin v. 
 Martin, 67 Fed. 786; 14 C. C. A. 642. 
 
 Brown v. Piper, 91 U. S. 37; Eachus v. Broomall, 115 U. S. 429; Grier v. Wilt, 
 120 U. S. 412. 
 
 § 395- Depositions. 
 
 A deposition, though in improper form read in evidence without objection 
 and with acquiescence and consent cannot afterwards be objected to. — 
 Evans v. Hittich, 7 Wheat. 453; 5 L. Ed. 496. 
 
 . Statement: Complainant, on order under sec. 870 Code Civ. Pro. N. Y. 
 was examined under objection and exception. Certified to Supreme Court. 
 Held: That the order of the Circuit Court directing the president of de- 
 fendant to appear before a master or commissioner appointed pursuant to 
 the provisions of sees. 870 et sq. of the N. Y. Code of Civil Procedure was 
 invalid and not authorized under the act of Mar. 9, 1892. — Hanks v. Inter- 
 national, 194 U. S. 303; 48 L. Ed. 989; 24 S. Ct. 700. 
 
 The courts of the United States are not given discretion to take depositions 
 not authorized by Federal law, but, in respect of depositions thereby au- 
 thorized to be taken, they may follow the Federal practice in the manner of 
 taking or that provided by the state law. — Hanks v. International, 194 U. S. 
 303; 48 L. Ed. 989; 24 S. Ct. 700. 
 
 Note: Holding the taking of depositions before trial under N. Y. Code 
 to be bad. Citing cases holding all sorts of ways. 
 
 § 396. Documentary. 
 
 These objections to proof of records were not urged in the court below, 
 and by well settled principles of practice applicable to appellate courts they 
 cannot be raised here in the first instance. — Paine v. Trask, 56 Fed. 233; 
 5 C. C. A. 497. 
 
 Wasatch v. Crescent, 148 U. S. 293; Rules Supreme Court, No. 13.
 
 J 396 EVIDENCE ,361 
 
 At the hearing in tKis court, the appellee claimed that this certified copy 
 has probative force of itself and makes out a prima facie case of an assign- 
 ment. He cited, as sustaining this proposition, Lee v. Blandy, 1 Bond, 361. 
 He might also have cited Brooks v. Jenkins, 3 McLean, 432 ; Parker v. Ha- 
 worth, 4 Fed. 370; Dederick v. Agricultural Co. 26 Fed. 763; and Rob. Pat. 
 sec. 1040, Walker on Pat. (2 ed. sec. 495) referring to these decisions says 
 that they have been generally acquiesced in for 20 years, and that few rules 
 of patent law have been more frequently made the basis of action by counsel 
 and by courts than the one which they apparently sustain. The author, 
 however, adds " but it hardly seems justified by statute upon which it s 
 based and may even yet be overthrown by the Supreme Court." 
 
 R. S. 892, which provides for certified copies from the patent oflace, relates 
 only to records, books, papers or drawings, " belonging to " that office, 
 and letters patent. If the law required the original assignments to remain 
 on file, and that certified copies should be given of them, a different principle 
 would be involved ; but the only thing in this case " belonging to " the patent 
 office, is the record, which is itself only secondary evidence. No provision is 
 made for authentication of the genuineness of the instrument to be recorded, 
 as frequent in laws providing for registry, but a forged assignment may be 
 recorded equally with a genuine one. Neither is there any method given 
 by the law, by which any person prejudiced by the registry in the patent 
 office of a spurious instrument, can purge the records. Neither does this 
 registry have the moral protection presumably given to local county and 
 township records through local publicity and notoriety. The proposition 
 as made by the appellee, is independent of the support which sometimes 
 comes from the fact that one party or the other to an alleged instrunient 
 has continued openly to act under it, or from the credibility given to ancient 
 papers and records; but it stands as a universal unqualified claim, with 
 reference to all copies of assignments certified from the patent oflace records. 
 
 It is not, however, necessary that we should determine this point, and we 
 refer to it only for the purpose of making it understood that we cannot 
 acquiesce in it without further consideration. — Paine v. Trask, 56 Fed. 233; 
 5 C. C. A. 497. 
 
 Charges were presented against the examiner who passed the application 
 and against the solicitor, asking for the dismissal of the one and the disbar- 
 ment of the other. Upon these charges the commissioner made a written 
 decision. The charges and the decision were offered by the complainants, 
 and were properly objected to as irrelevant. These proceedings were res 
 inter alios actae, and were of no value in this case. — Ecaubert v. Appleton, 
 67 Fed. 917; 15 C. C. A. 73. 
 
 The opinion of the commissioner of patents was properly rejected as irrele- 
 vant. The record of the judgement or decree would have been admissible, 
 but the opinion of the commissioner was not a decree, and was not the find- 
 ing of facts which a court is frequently called upon to make. — Ecaubert v. 
 Appleton, 67 Fed. 917; 15 C. C. A. 73. 
 
 Buckingham's Appeal, 60 Conn. 143. 
 
 The printed copy of the testimony in the interference proceedings before 
 the patent office was properly rejected upon the grounds of irrelevancy. This 
 suit is an independent one, ahhough between the same parties as in the 
 patent office proceeding. — Ecaubert v. Appleton, 67 Fed. 917 ; 15 C. C. A. 
 73. 
 
 That uncertified copies of U. S. letters patent introduced in evidence 
 and not objected to at the proper time are good evidence as to dates, such 
 as the date of invention, see Drewson v. Hartje, 131 Fed. 734; 65 C. C. A. 548.
 
 362 THE FIXED LAW OF PATENTS §§ 397-398 
 
 Worley v. Tobacco, 104 U. S. 340; Roemer v. Simon, 95 U. S. 214; Loom Co. v. 
 Higgins, 105 U. S. 580. 
 
 § 397. Exhibits. 
 
 Where an alleged prior invention is introduced as an exhibit and accepted 
 by the examiner it is in evidence ; and if improper should have been stricken 
 out on motion before the court below. — Clark v. Willimantic, 140 U. S. 481 ; 
 
 35 L. Ed. 521; 11 S. Ct. 846. 
 Hoskin v. Fisher, 125 U. S. 217. 
 
 If, against the earnest protest of their opponent, they availed themselves 
 of a technicality to prevent a consideration by the court of a patent which 
 they claimed will disclose want of novelty in the invention of the patent in 
 suit, they cannot complain if the court declines to accept their unsupported 
 assertion of the character of that patent. — Red Jacket v. Davis, 82 Fed. 
 432; 27 C. C. A. 204. 
 
 The court certainly has the unquestioned right to draw its own conclusions 
 from an exhibition and inspection of the respective machines, or models 
 thereof, as well from the opinion of expert witnesses. It is not bound to 
 accept such testimony as conclusive. — Overweight v. Improved, 94 Fed. 155; 
 
 36 CCA. 125. 
 
 The Conqueror, 166 U. S. 111. 
 
 Note: As an illustration of the manner in which such a rule, if it were a rule, 
 would utterly fail, suppose that the court had before it a Tesla motor, alleged 
 to be of the polyphase type, and the court should attempt to pass upon the 
 value of that exhibit regardless of the expert testimony essential to determine 
 whether it was a motor of the polyphase type or multiphase or lagphase, or 
 any other of the numerous forms of phase winding which would be abso- 
 lutely indistinguishable to the naked eye. 
 
 The publication was put in evidence by the defendant himself. He may, 
 indeed, have intended to use it for another purpose, but the publication was 
 in the case as evidence for every legitimate purpose. — Maurer v. Dickerson, 
 113 Fed. 870; 51 C C A. 494. 
 
 Certain patents were printed and indexed in the record and were referred 
 to on the argument. On rehearing it was objected that these patents were 
 not " offered in evidence." Held: In view of these circumstances, the ob- 
 jection made at this late day, that the examiner did not formally mark it in 
 evidence as an exhibit, is one not calculated to commend itself to an appel- 
 late court. — Smyth v. Sheridan, 149 Fed. 208; 79 C C A. 166. 
 
 § 398. Expert. 
 
 Experts may be examined as to the meaning of terms of art on the prin- 
 ciple of " cuique in suo arte credendum," but not as to the construction of 
 written instruments. — Corning v. Burden, 15 How, 252; 14 L. Ed. 683. 
 
 Experts may be examined to explain terms of art, and the state of the 
 art at any given time. They may explain to the court and jury the machines, 
 models or drawings exhibited. They may point out the difference or identity 
 of the mechanical devices involved in their construction. The maxim of 
 cuique in suo arte credendum permits them to be examined to questions of art 
 or science peculiar to their trade or profession ; but professors or mechanics 
 cannot be received to prove to the court or jury what is the proper or legal 
 construction of any instrument of writing. A judge may obtain information
 
 f 398 EVIDENCE 363 
 
 from them, if he desire it, on matters which he does not clearly comprehend, 
 but cannot be compelled to receive their opinions as matter of evidence. — 
 Winans v. New York & Erie, 21 How. 88; 16 L. Ed. 68. 
 
 It cannot be expected that the court will possess the requisite knowledge 
 for this purpose, and when necessary it should avail itself of the light neces- 
 sary by evidence. — Loom Co. v. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 Where an expert has merely made experiments for the purposes of the 
 litigation and froni such experiments testifies that the results attained by 
 defendant could be attained only by plaintiff's process; and his evidence is 
 rebutted by an experienced expert who establishes the fact that the results 
 had been attained by more than one process to his knowledge, although 
 he does not testify by what process defendant did attain such results, such 
 evidence is sufficient to rebut the negative testimony of complainant's 
 expert. — Bene v. Jeantet, 129 U. S. 683; 32 L. Ed. 803; 9 S. Ct. 428. 
 
 It would seem that the Supreme Court would disregard the opinions of 
 eminent chemists where such chemists had found a degree of difference 
 in the processes to warrant them in holding the new process to be novel. 
 Such seems to be the position assumed by Justice Blatchford in the case of 
 Commercial v. Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 S. Ct. 972. 
 
 Expert testimony is admissible to explain the several drawings, models 
 and machines that are exhibited upon the trial, their operation, purpose and 
 effect, and the differences which exist in the various de\aces involved in their 
 construction. The opinion of an expert is, in certain cases, admissible in 
 evidence, but it is not conclusive upon the courts. It is to be considered as the 
 judgment and oJ)inion of a person who has had extensive practice, education 
 and knowledge in relation to the particular subject upon which his testi- 
 mony is given. If the reasons given by the expert witness are deemed reason- 
 able and satisfactory, the court may adopt them, but, if they are unsatis- 
 factory, the court will discard the testimony and act upon its own knowledge 
 and judgment. — Norton v. Jensen, 49 Fed. 859; 1 C. C. A. 452. 
 
 To sustain the defense of want of novelty the defendants have set up in 
 their answer, and offered in evidence, a large number of patents prior in 
 date to those of the complainant. In the absence of any expert testimony 
 to explain these patents, or indicate what they contain tending to negative 
 the novelty of the complainant's patent, we do not feel called upon to examine 
 them. There may be cases in which the character of the invention has so 
 little complexity that such expert testimony is not necessary to aid the court 
 in understanding whether one patent, or several patents considered together, 
 describe the devices or combination of devices which are the subject matter 
 of a subsequent patent ; but this is not one of them. — Waterman v. Shipman, 
 55 Fed. 982; 5 C. C. A. 371. 
 
 Scientific expert evidence is not wholly reliable when not subjected to the 
 search light of intelligent cross-examination. — Standard Elevator Co. v. 
 Crane, 56 Fed. 718; 6 C. C. A. 100. 
 
 If a valuable patent might be overthrown by the testimony of an expert 
 without careful inquiry into and virtual demonstration of its correctness, 
 the rights of patentees would rest upon the testimony of such witnesses rather 
 than the judgement of the court. — National v. Belcher, 71 Fed. 876; 18 
 C. C. A. 375.
 
 364 THE FIXED LAW OF PATENTS § 398 
 
 In these expressions (determining what was novel) the expert, as is too 
 common in the taking of evidence of that class, goes beyond the province 
 of an expert and into the province of counsel or the court. — Osgood v. 
 Metropolitan, 75 Fed. 670; 21 C. C. A. 491. 
 
 No detailed analysis of the specifications is made by any of them. The 
 testimony consists of little more than bare opinions. They give no reasons 
 for their conclusions. — Hanifen v. Godshalk, 84 Fed. 649; 28 C. C. A. 507. 
 
 The testimony of a capable and conscientious expert, in a case which 
 admits of his employment cannot but be at once helpful to the court and 
 creditable to the witness ; but it is a sorry situation for the display either of 
 skill or candor when, not to hurt the cause he was employed to promote, the 
 expert must suppress his opinions upon all matters of controlling significance, 
 and restrict his testimony to the pointing out of superficial and obvious 
 distinctions of structural forms that involve no conceivable differences 
 of function or operation, — a task of mere drudgery, which a common me- 
 chanic, accustomed to work by lines laid down for him by another, could 
 perform quite as well. — Chuse v. Ide, 89 Fed. 491 ; 32 C. C. A. 260. 
 
 The value of expert testimony generally depends upon the facts stated, as 
 a reason for their opinions and conclusions. — Overweight v. Improved, 94 
 Fed. 155; 36 C. C. A. 125. 
 
 Green v. Terwilliger, 56 Fed. 384; 1 Tay. Ev. sec. 58. 
 
 That in the absence of expert or scientific explanation of a physical dis- 
 tinction in operation urged upon the argument, the court will not consider 
 such argument, see Dececo v. Gilchrist, 125 Fed. 293; 60 C. C. A. 207. 
 
 We do not question the rule which permits a complainant to introduce a 
 patent whose mechanical details are simple, and where the issue of infringe- 
 ment is sharply defined, without burdening the court with useless expert 
 testimony. But this rule has no application to a case like this, where the 
 operative construction embodies only a portion of the two patents in suit; 
 where material and difficult questions of form, of operation, and of equiva- 
 lency of function are involved ; where the validity of a reissue is challenged 
 on the ground that the reissued patent is for a different invention ; and where 
 the 39 claims of one of the patents are projected before the court without 
 any attempt to analyze them, or read them upon defendant's patent or 
 commercial machine. — Fay v. Mason, 127 Fed. 325; 62 C. C. A. 159. 
 
 Waterman v. Shipman, 55 Fed. 982. 
 
 We are aided in the examination of this question by the evidence of experts, 
 but their opinions are not conclusive. We must form our own opinion, based 
 on all the evidence. — American v. American, 128 Fed. 709 ; 63 C. C. A. 307. 
 
 Hardwick v. Masland, 71 Fed. 887. 
 
 Unhappily we cannot accept without reservation the opinions of the 
 experts who have been examined as witnesses, for they are necessarily 
 partisans of the side calling them, and essentially advocates, and their 
 opinions are contradictory, and tend to perplex, instead of elucidating, al- 
 though they appear to be gentlemen of great ability and deserved eminence. 
 — Ideal V. Crown, 131 Fed. 244; 65 C. C. A. 436. 
 
 The Segrist patents were not discussed or explained by either counsel on 
 the argument, no model was produced. In these circumstances we are not
 
 J 399 EVIDENCE 365 
 
 disposed to critically discuss the Segrist patents. — Greene v. Buckley, 135 
 Fed. 520; 68 C. C. A. 70. 
 
 The admission of an expert witness, is, of course, entitled to weight in 
 the interpretation of technical terms employed in a patent. But the court 
 is not necessarily concluded by such interpretation when other satisfactory 
 evidence is available. — Panzl v. Battle Island, 138 Fed. 48; 70 C. C. A. 474. 
 
 Defendant's expert claims that this difference of operation is material. 
 But the fact that the defendant commercially manufactures and sells saw- 
 sets with this construction indicates that the difference is theoretical rather 
 than practical. — Morrill v. Hardware, 142 Fed. 756; 74 C. C. A. 18. 
 
 The defendant undertook to prove that the Blandfield and Andrews 
 supporters (the alleged anticipation) were the embodiment of perfection; 
 the complainant that they were the embodiment of stupidity; and, as gen- 
 erally happens, both succeeded. — Parramore v. Siegel-Cooper, 143 Fed. 516; 
 74 C. C. A. 386. 
 
 When once familiarity with the nomenclature and the elementary features 
 of the art is acquired, the character and functions of the respective structures 
 are found to be clearly displayed therein (in the patents). Indeed they are 
 far more illuminative than some of the so-called " simplified diagrammatic 
 drawings " which have been put in evidence. If the expert who is called to 
 testify in such causes would only appreciate that he is not addressing elec- 
 trical engineers, but laymen, and if, when undertaking to describe what some 
 particular patent showed to a man skilled in the art, he would take the speci- 
 fications and drawings of the patent as his text, instead of some conventional 
 paraphrase of his own devising with its lettering entirely changed, he would 
 materially lighten the labor of the court. — Western v. Rochester, 145 Fed. 
 41; 75C. C. A. 313. 
 
 We note that more than two thirds of the nearly 1000 pages in this record are 
 taken up by the testimony of expert witnesses, of whom there were 11 or 12, 
 arrayed in about equal numbers on the opposite sides, and the reading of it 
 has imposed upon the court a needless burden. As a contest between gentle- 
 men learned in the science of the subject, it might be interesting if one had 
 leisure, though it seems sometimes to run into very attenuated points. This 
 prohxity seems not so much the fault of the witnesses as a mistake of the 
 counsel. It is not the province of witnesses to advocate the cause of the 
 party who calls him, nor to pass upon the questions of law or facts presented 
 by the controversy. Frequently an expert witness may be of much aid to the 
 court in explaining matters which can only be appreciated and understood 
 by learning higher than the ordinary ; but his province is to instruct and not 
 to decide ; and even the instruction is of uncertain value when it is colored 
 from standing in the place of the partisan for one of the parties. Usually 
 the testimony of one competent witness on each side is enoujrh to insure a 
 full and fair elucidation of what is recondite in the case. The voice of a 
 single teacher is worth more than a confusion of many tongues. And the 
 expense is worse than useless. — American v. Cleveland, 158 Fed. 978; 86 
 C. C. A. 182. 
 
 § 399. Infringement. 
 
 The five averments must all be established. — Cammeyer v. Newton, 94 
 U.S. 225; 24 L. Ed. 72.
 
 366 THE FIXED LAW OF PATENTS §§ 400-JOl 
 
 Where denial of infringement is made in the answer under oath, infringe- 
 ment must be shown by satisfactory proof, — Lehigh v. Mellon, 104 U. S. 
 112; 26 L. Ed. 639. 
 
 The burden of proof of infringement is upon the complainant. — Price v. 
 KeUy, 154 U. S. 669; 26 L. Ed. 634; 14 S. Ct. 1208. 
 
 In a suit at law where evidence was taken and the question of infringement 
 was determined this court will not review the evidence as if it were a suit 
 in equity. — St. Paul v. Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. 
 
 § 400. Invention — Fact of. 
 
 The question is now well settled, that the question whether the alleged 
 improvement is or is not patentable, is, in an equity suit, a question for the 
 court. — Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 34. 
 
 We have now to allude to a most important factor in determining the weight 
 of evidence, a factor which seems to us to have been overlooked by the learned 
 judge of the court below. It is, that the burden of proof is on the one who 
 disputes it, to repel the presumption of originality arising from the patent. 
 Tills is a well established rule of evidence, and is the result of long judicial 
 e.>:perience in considering the foundations of belief. In a case like the pres- 
 ent, it is not a mere balancing of the weight of testimony on one side or the 
 otlier, but it is a requirement that this presumption of originality of invention 
 must be overcome by proof which fully satisfies the mind respecting the fact. 
 — Keasbey v. American, 143 Fed. 490; 74 C. C. A. 510. 
 
 When the question (whether he knew of the fact of the appUcation of one of 
 the defendants for a patent) was again asked him on cross-examination, he 
 answered, " To the best of my knowledge and recollection, he never did! " 
 This will not do as an answer to the unequivocal testimony of the defendant 
 inventor. — Keasbey v. American, 143 Fed. 490; 74 C. C. A. 510. 
 
 § 401. Law Actions — Depositions. 
 
 The Massachusetts interrogatories are sought as a " mode of proof in 
 trials at law." The answers to them are not oral testimony, and therefore, 
 to be admitted must be brought within the exceptions specified in the Re- 
 vised Statutes. They are not a deposition taken under the circumstances 
 in which it is permitted to take a deposition, by sections 863 and 865 of the 
 Re\'ised Statutes, and, like the New York examination, the Massachusetts 
 interrogatories violate common usage by seeking to call the party in advance 
 of the trial at law, and to " subject him to all the skill of opposing counsel to 
 exact something which he may use then or not as suits his purpose." 
 As the Massachusetts interrogatories fall neither within the rule of section 
 861 nor within the exceptions allowed by the following section, and as that 
 rule and those exceptions provide an exclusive mode of proof in trials at 
 law in the federal courts, it would seem that the interrogatories are inad- 
 missible here. — National v. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 Railway v. Botsford, 141 U. S. 250; ex parte Fisk, 113 U. S. 713. 
 
 It is further contended by the plaintiff that the interrogatories in question 
 are admissible as a statutory substitute for a bill of discovery in aid of 
 an action at law, and are thus brought within the provision of section 914 
 of the Re^^sed Statutes. This view of the Massachusetts interrogatories 
 was taken by the circuit court for this district in Bryant v. Leyland, 6 Fed. 
 125. We think the contention unsound. The Supreme Court has constantly
 
 §§ 402-403 EVIDENCE 367 
 
 maintained the distinction between the system of law and equity, and has 
 refused to adopt into the practice of the federal courts any part of the prac- 
 tice of the state courts which confounds the two systems. Moreover, the 
 provisions of section 914 apply only to suits at law in the federal courts, and, 
 in the absence of express language, can hardly be intended to introduce into 
 the practice and procedure of such suits statutory procedure which is in its 
 nature plainly equitable. We find, therefore, that it has been decided by the 
 Supreme Court that, if the statutory interrogatories are to be treated as lajdng 
 the foundation for a deposition, they are inadmissible in federal practice, 
 because a deposition is not authorized to be taken in such a case by the stat- 
 utes of the United States ; that an examination authorized by state statutes 
 has been excluded on this ground when such examination though not alto- 
 gether similar, was yet in most respects similar to the interrogatories in the 
 case at bar, the grounds for the exclusion, as stated by the Supreme Court, 
 being largely applicable to the interrogatories in this case. We find, further- 
 more, that, if these interrogatories are to be treated, not as questions put to 
 a deponent, but as a statutory substitute for a bill of discovery, they are 
 excluded as an encroachment upon that control of equity procedure which 
 belongs to the federal courts except when regulated in express terms by an 
 act of congress. — National v. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 The plaintiff further contends that, even if the statutory interrogatories be 
 treated as the taking of an ordinary deposition, and hence forbidden by sec- 
 tion 861, yet they are permitted by chapter 14 of the Act of 1892 (27 Stat. 7), 
 which permits the taking of depositions in the mode described by the laws 
 of the state in which the courts are held. This position seems to us plainly 
 untenable. The act of 1892, as stated by the learned judge in the circuit 
 court, was intended only " to simplify the practice of taking depositions 
 by providing that the mode of taking in instances authorized by the federal 
 laws might conform to the mode prescribed by the laws of the state in which 
 federal courts were held," and not " to authorize the taking of depositions 
 in instances not heretofore authorized by the federal statutes, and to confer 
 additional rights to obtain proofs by interrogatories addressed to the adverse 
 party in actions at law." For these reasons the exception to the refusal of 
 the judge of the circuit court to default the defendants must be overruled. — 
 National v. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 § 402. Law Actions — Directions and Instructions. 
 
 The judgement entered on the verdict rendered in favor of the defendants, 
 in pursuance of the direction of the court, can be maintained only on the 
 ground, either that the legal identity of the furnace described by Karsten 
 with that covered by plaintiff's patent was manifest as a matter of law, or 
 that it was established as a matter of fact so conclusively by the evidence 
 that a verdict the other wav could not be supported, within the rule as stated 
 in Randall v. Baltimore, 109 U. S. 878. — Keyes v. Grant, 118 U. S. 25; 30 
 L. Ed. 54; 6 S. Ct. 974. 
 
 It is not error to refuse to instruct as to an abstract question, and in- 
 structions should never be given upon hypothetical statements of fact, of 
 which there is no evidence. — Haines v. McLaughlin, 135 U. S. 584; 22 
 L. Ed. 241; 10 S. Ct. 876. 
 
 § 403. Law Actions — Facts — For Court. 
 
 So far as concerns what is for the court and what is for the jury, there is no 
 essential distinction between patents for inventions and other instruments. 
 Primarily the construction of all of them is for the court. — DeLoria v. 
 Whitney, 63 Fed. 611; 11 C. C. A. 355.
 
 368 THE FIXED LAW OF PATENTS § 404 
 
 § 404. Law Actions — Facts — For Jury. 
 
 In law actions the question of infringement is a question of fact for the 
 jury. — Turrill v. R. R., 68 U. S. 491 ; 17 L. Ed. 668. 
 
 It is said properly, whether one compound of given proportions is substan- 
 tially the same as another compound varying in the proportions — whether 
 they are substantially the same or substantially different — is a question 
 of fact and for the jury. — Tyler v. Boston, 74 U. S. 327 ; 19 L. Ed. 93. 
 
 Questions of fact must be submitted to the jury if there is so much resem- 
 blance as raises the question at all. — Tucker v. Spalding, 80 U. S. 453 ; 
 20L. Ed. 515. 
 
 This court has no more right than the court below to have decided that 
 the one patent covered the invention of the other or that it did not. — Tucker 
 V. Spalding, 80 U. S. 453; 20 L. Ed. 515. 
 
 A pure question of fact is for the jury in an action at law, and it is error 
 to take it away. — Burdell v. Denig, 92 U. S. 716; 23 L. Ed. 764. 
 
 All questions of fact are exclusively for the jury to decide. The court does 
 not decide nor instruct you whether any device was or was not an antici- 
 pation of plaintiff's patent. The question of anticipation is purely a ques- 
 tion of fact and is exclusively for the jury to determine. — Haines v. Mc- 
 Laughhn, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. 
 
 This court has had occasion more than once, to reverse the trial courts 
 for taking away from the jury the question of infringement, which they have 
 sometimes done by rejecting evidence of earlier patents offered to show 
 anticipation, and sometimes by a peremptory instruction that a patent relied 
 on by the defense was or was not infringement of plaintiff's patent. — Coupe 
 V. Royer, 155 U. S. 565; 39 L. Ed. 263; 15 S. Ct. 199. 
 
 Tucker v. Spalding, 80 U. S. 453; Bischoff v. Wethered, 76 U. S. 815; Keyes v. 
 Grant, 118 U. S. 36; Royer v. Schultz, 135 U. S. 319. 
 
 There was no question to go to the jury in this case (the court having de- 
 termined want of novelty) and the court should have directed a verdict. — 
 Black Diamond v. Excelsior, 156 U. S. 611 ; 39 L. Ed. 553; 15 S. Ct. 482. 
 
 This is a question of fact, and in a law case should be submitted to the 
 jury under proper instructions, as to the law applicable to the same. — 
 Hunt Bros. v. Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 When there is any evidence whatever to go to the jury upon an issue of fact, 
 the refusal of the court to instruct the jury to return a verdict for the de- 
 fendant is not reviewable in this court. There is nothing in the case before 
 the court to make it an exception to the rule. — Singer Mfg. Co. v. Brill, 54 
 Fed. 380; 4 C. C. A. 374. 
 
 Explaining: Hcald v. Rice, 104 U. S. 737; Lumber Co. v. Rodgers, 112 
 U. S. 659; Fond Du Lac v. May, 137 U. S. 395. 
 
 Under the issue and evidence, it was for the jury to decide whether the 
 defendant had been licensed to use the patented appliances, and whether 
 the defendant was charged with notice of the patent. — Houston v. Stern. 
 74 Fed. 636; 20 C. C. A. 636.
 
 §§ 405-407 EVIDENCE 369 
 
 The question of novelty is a question of fact for the jury, or, when a jury 
 is waived, is a question of fact to be decided by the court. — American v. 
 BuUivant, 117 Fed. 255; 54 C. C. A. 287. 
 
 Westlake v. Carter, 6 Fish. P. C. 519; Battin v. Taggart, 17 How. 74. 
 
 The question of invention is one of fact, and after examining the testimony 
 we are of opinion that there was sufficient evidence to warrant its submission 
 to the jury. The jury having found for the plaintiffs, the verdict should 
 not be disturbed. — Willis v. Miller, 121 Fed. 985; 58 C. C. A. 286. 
 
 § 405. Law Actions — Rules of. 
 
 Except as otherwise prescribed by the laws of the United States, state laws 
 governing the admissibility of evidence obtain at common law. — Vance v. 
 Campbell, 66 U. S. 427; 17 L. Ed. 168. 
 
 § 406. Law Actions — Miscellaneous Rules. 
 
 This contention (want of novelty and non-infringement) in each of its 
 branches, presents a mixed question of law and of fact. — Graham v. Earl, 
 92 Fed. 155; 34 C. C. A. 267. 
 
 1 Rob. Pat. 272; California v. Molitor, 113 U. S. 609. 
 
 That a patent not pleaded, may be introduced in evidence in a law action, 
 not for the purpose of proving anticipation, but for the purpose of showing 
 the prior art to enable the court to construe the claim, may be so employed, 
 see Overweight v. Improved, 94 Fed. 155; 36 C. C. A. 125. 
 
 On objection by the defendant, the learned judge below held that the 
 witness might describe the results of the omission of the connecting mecha- 
 nism, but could not be permitted to call that omission a " fatal fault," as the 
 word " fatal " contained an inference which went beyond the province of 
 an expert. — National v. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 That where the mechanism is such that it is difficult for an ordinary 
 person to understand it, an expert may testify as to what are and what are 
 not equivalents, see National v. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 Curt. Pat. 489; Keyes v. Grant, 118 U. S. 25; Bischoff v. Wethered, 9 Wall, 
 812. 
 
 As the plaintiff claimed that the corporations were mere devices to pro- 
 tect the individual defendants, evidence showing that the defendants were 
 acting in good faith, was admissible. — National v. Leland, 94 Fed. 502 ; 37 
 C. C. A. 372. 
 
 § 407. Objections and Exceptions. 
 
 An objection to the examination of a witness should state specifically 
 the grounds of the objection, in order that the opposite party may have the 
 opportunity of removing it if possible. — Woodbury v. Keith, 101 U. S. 479; 
 25 L. Ed. 939. 
 
 Ansnn and Cole were both examined and testified, without any objection 
 to their competency because of want of notice. Hence it is too late to object 
 to their testimony now. Had objection been taken at the time, the answer 
 might have been amended. — Woodbury v. Keith, 101 U. S. 479 ; 25 L. Ed. 
 939. 
 
 Graham v. Mason, 5 Fish. P. C. 6; Brown v. Hall, 3 Fish. P. C. 531; Phillips 
 V. Paige, 24 How. 164; Roemer v. Simon, 95 U. S. 214.
 
 370 THE FIXED LAW OF PATENTS § 408 
 
 Plaintiff waived the exception to the refusal of this court to instruct 
 the jury to find for defendant by proceeding with the cause and inter- 
 locutory evidence. — Hunt Bros. v. Cassidy, 53 Fed. 257 ; 3 C. C. A. 525. 
 
 Railway v. Cummings, 106 U. S. 700; Insurance Co. v. Crandal, 120 U. S. 527; 
 Robertson v. Perkins, 129 U. S. 236. 
 
 Inasmuch as the respondent did not make specific and clear objections 
 at the time it should have made them, if it is intended to rely thereon, we give 
 no weight to the general objection interposed at the close of the testimony of 
 the witness, in the following language: "Testimony objected to, in whole 
 and in part, as incompetent and insufficient on the issue of priority of inven- 
 tion." In no view of the rules relating to objections with reference to testi- 
 mony produced in federal courts can one so sweeping as this have effect, 
 unless it is apparent that the facts intended to be proved in whatever form 
 produced, could have no weight. — Westinghouse v. Stanley, 133 Fed. 167; 
 68 C. C. A. 523. 
 
 § 408. Parol. 
 
 Parol evidence and documentary evidence are admissible to establish 
 the statutory defenses. — Bates ?;. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Oral evidence of anticipation must be regarded with grave doubt. The 
 burden of proof rests upon the defendant and every reasonable doubt should 
 be resolved against him. — Washburn v. Beat Em All, 143 U. S. 275 ; 36 L. Ed. 
 154; I2S. Ct. 443. 
 
 Coffin V. Ogden, 85 U. S. 120. 
 
 Oral testimony, unsupported by patents or exhibits, tending to show prior 
 use of a device regularly patented is, in the nature of the case, open to grave 
 suspicion. — Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 Washburn v. Beat Em All, 143 U. S. 275. 
 
 Granting the witnesses be of the highest character, and never so conscien- 
 tious in their desire to tell only the truth, the possibility of their being mis- 
 taken as to the exact device, which though bearing a general resemblance to 
 the one patented may differ from it in the very particular which makes it 
 patentable, are such as to render oral testimony particularly untrustworthy; 
 particularly so if the testimony be taken after the lapse of years from the 
 time the anticipating device was used. If there be added to this a personal 
 bias, or an incentive to color the testimony in the interest of the party calling 
 the witness, to say nothing of downright perjury, its value is, of course, still 
 more seriously impaired. This case is an apt illustration of the wisdom of the 
 rule requiring such anticipations to be proven by evidence so cogent as to 
 leave no reasonable doubt in the mind of the court, that the transaction 
 occurred substantially as stated. — Deering v. Winona, 155 U. S. 286; 39 
 L.Ed. 153; 15S. Ct. 118. 
 
 That no two of these witnesses testify as to the same plate, and that none 
 of these old plates are produced, is urged as ground upon which we should 
 hold the anticipation not proven. We are not unmindful of the liability 
 to mistake in oral evidence of anticipation, and of the rule which requires 
 that the evidence relied upon to overthrow the presumption of novelty should 
 be of the most cogent character. Deering v. Winona, 155 U. S. 286 ; American 
 V. Weston, 59 Fed. 147. Nevertheless we cannot escape the conviction that 
 this method of making door name-plates is established as convincingly as 
 any such fact can be established where the original article is not produced.
 
 5§ 409-410 EVIDENCE 371 
 
 So far as we can see, the witnesses are without bias or incentive to color their 
 evidence. The probabihty of mistake is reduced to a minimum by the very 
 simple character of the subject about which they testify. The case is there- 
 fore quite exceptional, and, if the evidence does in fact produce conviction 
 beyond all reasonable doubt, we are unadvised of any rule which denies to 
 it legal effect in any class of cases, criminal or civil. — Rodwell v. Tuchfarber, 
 127 Fed. 138; 62 C. C. A. 252. 
 
 The unsatisfactory character of testimony depending upon the unaided 
 recollection of witnesses of events occurring years previous render courts 
 loth to destroy a patent upon testimony so unreliable. — United v. Beattie, 
 149 Fed. 736; 79 C. C. A. 442. 
 
 § 409. Prima Facie. 
 
 The patent is prima facie proof of invention. — Marsh v. Sejonour, 97 U. S. 
 348; 24L. Ed. 963. 
 
 Plaintiff introduced his patent in evidence. This was prima facie proof 
 of the vaUdity of his patent. — Hunt Bros. v. Cassidy, 53 Fed. 257 ; 3 C. C. A. 
 525. 
 
 Mitchell V. Tilghman, 19 WaU. 390; Walk. Pat. Sec. 491; Blanchard v. Put- 
 nam, 8 WaU. 420; Seymour v. Osborne, 11 Wall. 576. 
 
 Counsel for the appellant insisted that, if the testimony left in the mind 
 of the court a reasonable doubt as to complainant's priority, his client 
 was entitled to the benefit of it. A large number of cases, both in the Supreme 
 Court and in the circuits, hold that doctrine, nor do we propose to dispute 
 it. If it were an open question, we might consider whether the pre- 
 sumption arising from the granting of the letters patent, could not be 
 overthrown, as any other presumption at law is overthrown, by the prepon- 
 derance of evidence. But accepting it as settled that any doubt is fatal to 
 a claim antagonistic to the validity of letters patent themselves because of 
 fraud, we can but say that in this case the principle cannot afford the appellant 
 any assistance. The evidence is too convincing to permit the shadow of a 
 doubt. — Forgie v. Oil Well. Supp. Co. 58 Fed. 871 ; 7 C. C. A. 551. 
 
 That the presumption of noninfringement arising from the grant of a sub- 
 sequent patent is overcome by the finding of the trial court that infringement 
 exists, see Anderson v. CoUins, 122 Fed. 451 ; 58 C. C. A. 669. 
 
 § 410. Records and Documents. 
 
 Patents are public records and as all persons are bourid to take notice 
 of their contents, they consequently have the right to obtain copies of them, 
 by making proper application and paying the required fees. — Boyden v. 
 Burke, 14 How. 575; 14 L. Ed. 548. 
 
 The application is a public record which the defendant and all others 
 are presumed to know. — Loom Co. v. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 A certified copy of a decision will be accepted as against the official report 
 differing from it. — Gamewell v. Municipal, 77 Fed. 490; 23 C. C. A. 250. 
 
 Some mention is made of the file-wrapper; but this is of no consequence, 
 because at every point the application for the patent was overruled by the 
 examiners, and also on appeal until the commissioner was reached, who
 
 372 THE FIXED LAW OF PATENTS § 411 
 
 reversed everything appealed against, and what is thus referred to occurred 
 before the inventor reached him, and was wiped out. — Forsyth v. Garlock, 
 142 Fed. 461; 73 C. C. A. 577. 
 
 § 411. Miscellaneous. 
 
 It is perfectly clear that a person having an interest only in the question 
 and not in the event of the suit is a competent witness; and in general, the 
 liability of a witness to a like action, or his standing in the same predicament 
 with the party sued, if the verdict cannot be given in evidence, for or against 
 him, and does not exclude him. — Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 
 472. 
 
 The court refused to receive a disclaimer on the ground that it did not 
 recite 'plaintiff's interest. Defendant later tried to introduce some paper to 
 limit plaintiff's claim. Also refused. Held: That while it was error to have 
 refused it in the first instance it was not error in the second case to which 
 exception could be taken. — Silsby v. Foote, 14 How. 218; 14 L. Ed. 394. 
 
 It would seem, that the defendant may introduce a junior patent in 
 evidence to justify what he has done with the same prima facie as attaches 
 to the patent in suit. — Corning v. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 Note: This rule is doubtful. 
 
 The defendant is not at liberty to raise and prove issues outside of the 
 pleadings and direct the attention from the main issue. — Blanchard v. 
 Putnam, 75 U. S. 420; 19 L. Ed. 433. 
 
 If the defense be that it is for a different invention, the original patent, 
 though inoperative as a cause of action or to protect the rights of the inven- 
 tor, is yet admissible in evidence to sustain or prove such a defense. — Reedy 
 V. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 The burden of proof is upon defendant when the patent is put in evidence. 
 
 — Marsh v. Seymour, 97 U. S. 348; 24 L. Ed. 963. 
 Seymour v. Osborne, 11 Wall. 516. 
 
 Defendant did not apply for a patent until after he had seen plaintiff's 
 drawings and had made a model therefrom. It is difficult to believe, in view 
 of this evidence, that he did not obtain the idea of his alleged invention from 
 the prior invention and patent of plaintiff. — Garrett v. Siebert, 98 U. S. 75; 
 25 L. Ed. 84. 
 
 Complainant's testimony as to the date of his invention should be strictly 
 construed against him because such evidence is necessarily subject to the 
 gravest suspicion, however honest and well intentioned the witness may be. 
 
 — Clark V. WiUimantic, 140 U. S. 481 ; 35 L. Ed. 521 ; 11 S. Ct. 846. 
 
 But while the stipulation is undoubtedly admissible in e\idence it ought 
 not to be used as a pitfall, and where the facts subsequently developed show 
 with respect to a particular matter, that it w^as inadvertently signed, we 
 think that, upon giving notice in sufficient time to prevent prejudice to the 
 opposite party, counsel mav repudiate anv fact inadvertently incorporated 
 therein. — Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 The Hiram, 1 Wheat. 440; Malin v. Kinney, 1 Cai. 117; Barry v. N. Y. 53 
 N. Y. 5.36.
 
 § 411 EVIDENCE 373 
 
 The opinion of the witnesses as to the relative cost of two machines of 
 which he was competent to judge, was not objectionable on the ground that 
 he had testified that he did not know what one of them had cost. — Hunt v. 
 Cassidy, 53 Fed. 257; 3 C. C. A. 525. 
 
 Counsel for complainant was justified in refusing, as he did, to cross- 
 examine the witness who was the author of the pamphlet offered in evidence 
 said to contain the views of the witness on the patents in suit, in regard to its 
 contents. The greater part of it was scandalous matter, entirely irrelevant 
 to the present controversy; and he was under no obligation to undertake 
 to read and analyze its contents to see whether it contained anything bearing 
 upon the issue worthy of a cross-examination. — Waterman v. Shipman, 55 
 Fed. 982; 5 C. C. A. 371. 
 
 It was incumbent upon the appellant, by fit objection at the time, or by 
 subsequent motion to expunge, to have informed its opponent of the precise 
 ground of objection to the offering in evidence of the former decree. The 
 objection could then have been obviated by amendment to the bill, or by 
 proper supplemental pleading. It is too late to urge such objection for the 
 first time upon an appeal. — Bradley v. Eagle Mfg. Co. 57 Fed. 980; 6 
 C. C. A. 661. 
 
 Walsh V. Colclough, 56 Fed. 778. 
 
 The proposition (of settlement) made by the defendants was purely and 
 simply an offer of compromise. It was not an admission of any fact involved 
 in the litigation. If evidence of the proposition had been offered by the plain- 
 tiffs upon the trial it clearly would have been inadmissible, against the de- 
 fendant's objection; for the law is well settled that the offer of settlement 
 made by a party to a suit with a view to a compromise or an amicable ad- 
 justment of the matter in dispute is not admissible against him. — Holmes v. 
 Truman, 67 Fed. 542; 14 C. C. A. 517. 
 
 9 Am. & Eng. Enc. Law, 353; Stanford v. Bates, 22 Vt. 546; West v. Smith, 
 101 U. S. 263; Gerrich v. Sweetser, 4 Pick. 374. 
 
 The oral testimony of two officials in the patent office was taken for the 
 purpose of proving the averment in the bill that the patent was issued either 
 fraudulently or through the gross negUgence of the examiner, and was ob- 
 jected to. The evidence was admissible. — Ecaubert v. Appleton, 67 Fed. 
 917; 15C. C. A. 73. 
 
 The attention of the bar of this circuit is again called to the inexpediency 
 of allowing irrelevant matter in depositions in patent causes. — Bonsack v. 
 Elliott, 69 Fed. 335; 16 C. C. A. 250. 
 
 The conduct of the complainant in harassing purchasers of the product 
 of this process with threats of litigation, when no possible ground for an 
 action existed against them whether the patent be valid or not (Goodvear v. 
 Railroad, Fed. Cas. No. 5,563; Boyd v. McAlpin, id. 1748; Brown v. D. C. 3 
 Mackey, 502; 3 Rob. Pat. 927) savors of an attempt to use the process of 
 the courts to win customers by unfair means, and thus to reap a harvest 
 of limited duration. It does not indicate that confidence in the validity of 
 the patent which presses to a full investigation of rights and a comprehensive 
 and decisive conclusion. Such a course certainly does not commend the 
 cause of a suitor to a court of equity. — American v. Port Huron, 72 Fed. 
 516; 18C. C. A. 670. 
 
 The appellees caused it to be identified, but failed to introduce it in e\i- 
 dence, and when appellant desired this court to consider it in evidence the
 
 374 THE FIXED LAW OF PATENTS 5 411 
 
 appellees objected. They cannot therefore, take any supposed advantage 
 from a patent which they have failed to produce in evidence, and to the consid- 
 eration of which they now object. — Red Jacket v. Davis, 82 Fed. 432; 27 
 C. C. A. 204. 
 
 Statements of counsel are not evidence ; nor is the court bound by their 
 construction of a patent. — Red Jacket v. Davis, 82 Fed. 432 ; 27 C. C. A. 
 204. 
 
 Where both parties lumbered up the record with a mass of evidence which 
 was wholly immaterial and unnecessary, costs may be refused the successful 
 party. — Eastman v. Getz, 84 Fed. 458; 28 C. C. A. 459. 
 
 More weight is given to the testimony of a witness based upon facts within 
 his own knowledge and experience, than to the testimony of a witness which 
 is " largely the assertion of theory." — Overweight v. Improved, 94 Fed. 
 155; 36C. C. A. 125. 
 
 Bene v. Jeantet, 129 U. S. 613; 3 Rob. Pat. sec. 1012. 
 
 We do not think the learned judge meant to maintain that the structures 
 to which he referred were matters of which " judicial notice," as that phrase 
 is used in our jurisprudence, could be taken. The reference seems to have 
 been made out of the fulness of his knowledge and experience in regard to 
 these structures and, as naturally, apposite to and illustrative of the ques- 
 tions discussed by counsel in the suit before him. No hint or suggestion 
 is made by the learned judge, that the knowledge of the fact referred to by 
 him, determined the result at which he arrived. That he freely stated the 
 facts he had in mind, in regard to combined gravity and cable roads, tends 
 no more to invalidate or impeach his decree than the fact that he had this 
 knowledge, though he were silent in regard to it. Extended experience 
 in the affairs of life, does not disqualify a judge, who does not use or seek to 
 use it unfairly. — Thompson v. Chestnut, 127 Fed. 698; 62 C. C. A. 454. 
 
 The preliminary question of the title in complainants was raised by their 
 failure to produce the assignment to them of the sole and exclusive right 
 to the patent, as pleaded in the bill. In view of the finding of the court 
 below that complainants' title as alleged was admitted in the court below, 
 and the statement of counsel that the assignment as pleaded was ready to be 
 produced in court, showing such exclusive license in complainants, we con- 
 clude that title has been sufficiently proved. — Kirchberger v. American, 
 128 Fed. 599; 64 C. C. A. 107. 
 
 That a written agreement to submit certain questions as to use under a 
 patent to a court of competent jurisdiction is competent evidence upon the 
 trial of such an issue, see Holmes v. ffirkpatrick, 133 Fed. 232; 66 C. C. A. 286. 
 
 It is true that the testimony of an inventor in derogation of the validity 
 of his own patent is usually open to suspicion; and in a case like this, where 
 he has made oath, for the purpose of obtaining a joint patent, that he and 
 another inventor were the joint inventors of the subject matter, the court 
 should reject his subsequent testimony to the contrary, unless it carries 
 a clear conviction that he did not intend to testify falsely originally, but made 
 oath under misapprehension or mistake. We are not aware of any rule of 
 evidence or any principle of estoppel which precludes a witness who has testi- 
 fied incorrectly, or even falsely, on a former occasion, from telling the truth
 
 5 412 EXPERIMENT 375 
 
 later. The joint patentees might be estopped from asserting that they were 
 not joint inventors in a suit against them by the owner to enforce the patent, 
 but a third party, who is in no way in privity with them or with the owner, 
 cannot be affected by an estoppel. — De Laval v. Vermont, 135 Fed. 772; 
 68 C. C. A. 474. 
 
 In the nature of the case, it was scarcely to be expected that the complain- 
 ant could prove that the inventions in question were made during the term 
 of Franzen's employment by the direct and positive testimony of any witness 
 speaking from his own actual or personal knowledge. Naturally the com- 
 plainant's reliance would be on circumstantial evidence, which often leads 
 to a conclusion more satisfactory than direct evidence can produce. — Mis- 
 sissippi V. Franzen, 143 Fed. 501 ; 74 C. C. A. 135. 
 
 The complainant is not concluded by what the defendant testified, or 
 prevented from contending upon the whole evidence that the inventions 
 were actually made while defendant was in its employment, although he 
 asserted the contrary when on the witness stand. A party who calls the 
 opposite party as a witness is not bound by his testimony, but may contra- 
 dict him. — Mississippi v. Franzen, 143 Fed. 501 ; 74 C. C. A. 135. 
 
 1 Whart. Ev. sees. 484, 489; Dravo v. Fabel, 132 XJ. S. 487 distinguished. 
 
 The Circuit Court, and we on appeal, proceeding on a bill in equity of this 
 character as finders of the facts have as wide a range for drawing inferences 
 as a jury. — United v. Duplessis, 155 Fed. 842; 84 C. C. A. 76. 
 
 It will thus be seen that we have nothing before us but the statements of 
 the patent itself and the patents referred to in the specification. With these 
 exceptions there is no prior art. We are permitted to consider the decrees 
 in the first circuit as rules of decision entitled to the highest respect but we 
 are not permitted to consider the facts as stated in the opinions either to 
 sustain or defeat the patent, for the reason that these facts are not in proof 
 here. We have nothing more before us than if the case were here on demurrer 
 to the bill. The rules prescribing the limits beyond which the court is not 
 permitted to go at such hearings is clearly stated in New York v. New Jersey, 
 137 U. S. 445. — American v. DeGrasse, 157 Fed. 660; 87 C. C. A. 260. 
 
 Whether the application under which the patent in suit was granted be 
 called a formal continuation or not, of the original application for a patent 
 with reference to the same subject-matter, the admissions and statements 
 of the applicant in the former case are not irrelevant to the issues now under 
 consideration, and we are not to be asked to close our eyes to evidential 
 facts upon a ground so slight as the one suggested. — Dodge v. Jones, 159 
 Fed. 715; 86 C. C. A. 191. 
 
 See — Abandonment § 10; Anticipa- 
 tion § 78; Priority § 811; Public Use 
 § 851; Reduction to Practice § 863; 
 Secret Process or Machine § 898; 
 Unpatented Invention § 930 
 
 EXPERIMENT. 
 
 General Statement § 412 
 Abandonment § 413 {see § 1) 
 Experimental use § 414 
 Public Use § 415 {see § 849) 
 Reduction to Practice § 416 
 Secret Use § 417 
 
 § 412. General Statement. 
 
 The Patent Statute makes no provision as to experiment or experimental 
 use. This subject recurs under the titles Anticipation and Public Use. 
 The following is, perhaps, the best general statement made by the courts: 
 
 The law upon the question of experimental use is well settled. It is the 
 duty of the inventor to file his application within two years after the com-
 
 376 THE FIXED LAW OF PATENTS § 413 
 
 pletion of his invention. He is permitted to take the time necessary to com- 
 plete the invention and to make experiments for that purpose, but the 
 moment the invention is completed the two-year period begins to run. The 
 leading case is Elizabeth v. Pavement Co. 97 U. S. 126. An experimental 
 public use of six years was there held not to be unreasonable. The invention 
 was for a pavement and durability was the principal object sought to be 
 attained. An invention must not only be new, it must be useful. A pave- 
 ment that would not last six years was useless, no one would want it, no one 
 would incur the expense of laying it down. There is but one way to ascer- 
 tain whether a newly invented pavement is durable and that is to test it 
 by public use. A trial of two years will demonstrate nothing. It may stand 
 the test for that period and then suddenly disintegrate. These were the con- 
 siderations which induced the court to uphold the Nicholson patent. As 
 we shall presently see, there were no such problems to be solved in the case 
 in hand. 
 
 Smith V. Sprague, 123 U. S. 249, is authority for the following proposi- 
 tions : 
 
 First. Where it is clearly shown that there was public use of an invention 
 by the inventor for more than two years prior to the application, the burden 
 rests upon him to establish by convincing proof that the use was for the 
 purpose of perfecting an incomplete invention by tests and experiments. 
 
 Second. Where the invention is one of many embodied in a single machine, 
 or where the device contains features not included in the invention covered 
 by the claims, experiments intended to produce more perfect working of these 
 extrinsic features are not such as will prevent the running of the statutory 
 limitation. In other words, the experiments must be made for the purpose 
 of developing the invention as described and claimed and nothing else. 
 When the invention is completed the time begins to run and it is of no 
 moment that something else, not a part of the invention, is incomplete and 
 requires tests and experiments to perfect it. (Citing and explaining Egbert v. 
 Lippman, 104 U. S. 333; Root v. Railroad, 146 U. S. 210; Worley v. To- 
 bacco, 104 U. S. 340; Perkins v. Paper, 2 Fed. 451; Hall v. Macneale, 107 
 U. S. 90; Harmon v. Struthers, 57 Fed. 637; Swain v. Holyoke, 109 Fed. 
 154; Lettelier v. Mann, 91 Fed. 917.) 
 
 From these authorities we deduce the following propositions, as applicable 
 to the present controversy: 
 
 1. An inventor has a reasonable time in which to experiment for the 
 purpose of perfecting the invention and demonstrating its utility. 
 
 2. The time thus spent, if in good faith, is no part of the two-year statute 
 of hmitations. 
 
 3. The experiments must be made in perfecting the invention as described 
 and shown. 
 
 4. Experiments made in testing parts of the machine not covered by the 
 invention will not have the effect of extending the two-year period. 
 
 5. As soon as the invention is completed, viz. : " in such a condition that 
 the inventor can apply for a patent for it," the two-year period begins to 
 run and the application must be made within this period. 
 
 6. The fact that the invention has been improved since its original em- 
 bodiment does not demonstrate that it was then embryonic or incomplete. 
 
 7. When a clear case of prior public use is established, the burden is on 
 the inventor to prove by convincing proof that the use was experimental. — 
 Eastman v. Mayor, 134 Fed. 844; 69 C. C. A. 628. 
 
 § 413. Abandonment. 
 
 The use of an invention, by the inventor himself, or of any other person 
 under his direction, by way of experiment, and in order to bring his invention
 
 §§ 414-416 EXPERIMENT 377 
 
 to perfection has never been regarded as abandonment. — Elizabeth v. 
 American, 97 U. S. 126; 24 L. Ed. 1000. 
 Curt. Pat. 381; Shaw v. Cooper, 7 Pet. 292. 
 
 A machine which has been in use, unchanged in the principle of its cori- 
 struction, for some 30 years, until it was taken from the shop to be made an 
 exhibit in suit, cannot be thrown aside as an abandoned experiment. — 
 Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939. 
 
 It is only when experiments fall short of the desired result and are 
 abandoned as failures that they are rejected as proof of want of novelty. 
 — American v. Wagner, 151 Fed. 576; 81 C. C. A. 120. 
 
 Waterman v. Thomson, 2 Fish. P. C. 461; Aikin v. Dolan, 3 Fish. P. C. 197. 
 
 § 414. Experimental Use. 
 
 A machine need not be put up and used only in the inventor's own shop 
 or premises. He may have it put up and used in the premises of another, 
 and the use may inure to the benefit of the owner of the establishment. 
 Still, if used under the surveillance of the inventor, and for the purpose 
 of enabling him to test the machine and ascertain whether it will answer the 
 purpose intended, and make such alterations and improvements as experi- 
 ence demonstrates to be necessary, it will be a mere experimental use and 
 not a public use, within the meaning of the statute. — Elizabeth v. American, 
 97U. S. 126; 24 L. Ed. 1000. 
 
 It is not experimental use where an inventor practises his art generally, 
 teaching it to others and receiving pay therefor. — International v. Gaylord, 
 140 U. S. 55; 35 L. Ed. 347; 11 S. Ct. 716. 
 
 Smith V. Sprague, 123 U. S. 249; Consolidated v. Wright, 94 U. S. 92; Egbert 
 V. Lippman, 104 U. S. 333; Elizabeth v. Nicholson, 97 U. S. 126. 
 
 We are convinced that, while the product of the Rieseck machine was sold, 
 such sale was incidental to its experimental use. — Penn v. Conroy, 159 Fed. 
 943; 87 C. C. A. 149. 
 
 § 415. Public Use. 
 
 The rule of Coffin v. Ogden, 18 Wall. 120 and Egbert v. Lippman, 104 U. S. 
 333 followed. — Hall v. Macneale, 107 U. S. 90; 27 L. Ed. 367; 2 S. Ct. 73. 
 
 If it be once understood that the object of the act " was to require the 
 inventor to see to it that he filed his application within two years from the 
 completion of his invention, so as to cut off all question of the defeat of his 
 patent by a use or sale of it by others more than two years prior to his appli- 
 cation," the courts will no longer be vexed by the perplexing questions which 
 must frequently arise when the intent of the user and the bona fides of the 
 use are questions to be determined on oral testimony. Isolated cases of 
 injustice to inventors may result, but the remedy is certain and sure. The 
 inventor is master of the situation and has it in his power by prompt action 
 to make the defense of prior public use impossible. Surely two years after 
 he has completed his invention is ample time in which to file his application. 
 If he fails to take so simple and reasonable a precaution, why should it not 
 be said that the risk is his and that he cannot complain of the consequences 
 of his own supineness? — Eastman v. Mayor, 134 Fed. 844; 69 C. C. A. 628. 
 
 § 416. Reduction to Practice. 
 
 A mere experiment is not patentable. It must have been reduced to 
 practice. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33.
 
 378 THE FIXED LAW OF PATENTS §§ 417-418 
 
 What constitutes legitimate experiment. — Smith v. Sprague, 123 U. S. 
 249; SOL. Ed. 141; 8 S. Ct. 122. 
 
 Putting an invention into public use for more than two years merely to 
 test its efficiency, is not reduction to practice within the meaning of the 
 cases. — Root v. Third Ave. 146 U. S. 210 ; 36 L. Ed. 946 ; 13 S. Ct. 100. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Smith v. Sprague, 123 U. S. 249; Hall v. 
 Macneale, 107 U. S. 90; Egbert v. Lippman, 104 U. S. 333. 
 
 § 417. Secret Use. 
 
 The machine was kept under lock and key, hidden from sight, and no 
 employees permitted to see it except the foreman. Held: Whatever knowl- 
 edge, if any, was obtained of the machine by the public was surreptitious 
 and contrary to the manifest wish of the inventor. — Penn v. Conroy, 159 
 Fed. 943; 87 C. C. A. 149. 
 
 Elizabeth v. Pavement, 97 U. S. 126; Jennings v. Pierce, Fed. Cas. 7283; 
 Smith V. Sprague, 123 U. S. 249. 
 
 EXTENSIONS. 
 
 General Statement and Holdings § 418 
 
 § 418. General Statement and Holdings. 
 
 Extensions have for long years been obsolete. They can be secured only 
 by special act of Congress (see § 268). The following rulings are given, not 
 because they are of any practical use, but to make the record of cases com- 
 plete. 
 
 In absence of specific , agreement the assignee takes no interest in an ex- 
 tension. — Wilson V. Rousseau, 4 How. 646; 11 L. Ed. 1141. 
 
 The executor or administrator and not a former assignee, has the right 
 to apply for an extension. — Wilson v. Rousseau, 4 How. 646; 11 L. Ed. 
 1141. 
 
 1 — The act authorizes an extension on the application of an executor or 
 administrator. 
 
 2 — The right of extension inures to the executor or administrator, and 
 not to an assignee. 
 
 3 — That such right inures to the administrator notwithstanding a contract 
 of assignment of the existing patent. 
 
 4 — That one claiming the title from administrator under extension may 
 maintain an action against the assignees of the former patent. 
 
 5 — That the fact that the patentee in his life time had sold all his rights, 
 receiving no contingent interest in the patent, did not permit the executor 
 or administrator from obtaining extension and that such former assignees 
 acquired no rights beyond the original term. 
 
 6 — That an assignee of a specific territory, limited to use two machines 
 holds such an interest as will enable him to sue. 
 
 7 — That the extended specification is not void for uncertainty. 
 
 8 — That the decision of the Commissioners is not conclusive as to their 
 jurisdiction. 
 
 9 — That a reissue of an extended patent is lawful. — Wilson v. Rousseau, 4 
 How. 646; 11 L. Ed. 1141. 
 
 _ Upon the authority of Evans v. Eaton and Wilson v. Rousseau, two propo- 
 sitions are settled: 1. That a special act of Congress in favor of a patentee,
 
 § 419 
 
 FOREIGN PATENT 
 
 379 
 
 extending the time beyond that originally limited, must be considered as 
 engrafted on the general law. 2. That under the general law, m force when 
 thfs special act was passed, a party who had purchased the right to use a 
 machine during the period to which the patent was first limited, was en- 
 titled to continue to use it during the extension authorized by law. — Bloomer 
 V. McQueewan, 14 How. 539; 14 L. Ed. 532. 
 
 Evans v. Eaton, 3 Wheat. 518; Wilson v. Rousseau, 4 How. 688. 
 
 Under the former law when extensions were granted, unless special agree- 
 ment ran to the contrary, the sale or license of ^'^^f "^^Jf ^^|f .^^^Ji\^V9? 
 right under an extension. — Mitchell v. Hawley, 83 U. S. 544; 21 L. Ed. 322. 
 
 Under the Act of 1836 a license or assignment carried with it the right 
 under the extension of the patent. — Eunson v. Dodge, 85 U. b. 414; 21 
 
 L. Ed. 766. n nu t 
 
 Wilson V. Rousseau, 4 How. 646; Bloomer v. McQueewan 14 How. 539; Chafee 
 V. Belting Co. 22 How. 217; Bloomer v. Millinger, 1 Wall. 340. 
 
 In the absence of specific terms, an assignment does not carry extensions 
 — on the principle that Nemo dat non habet (Benj. Sales, 2nd ed. 5; Feer v. 
 Humohrev 2 Ad. & Ell. 495); but where the conveyance is of the invention 
 whether before or after the patent is obtained the rule is otherwise, unless 
 there is something in the instrument to indicate a different intention, ihe 
 rule being that a conveyance of the described invention carries with it all its 
 incidents? and all the well considered authorities concur that the mchoate 
 right to obtain a renewal or extension of the patent is as much an incident 
 •of the invention as the inchoate right to obtain the original patent; and 
 if so it follows that both are included in the instrument which conveys the 
 described invention without limitation or qualification. — Hendrie v. bayles, 
 98 U. S. 546; 25 L. Ed. 176. 
 
 Emmons v. Sladden. 9 O. G. 354; Gayler t'- Wilder, 10 How. 477; Clum v. 
 Brewer, 2 Curt. 520; Carnan v. Bowles, 2 Bro. Ch. 84. 
 
 The right of an owner of a patented machine, without any conditions 
 attached to his ownership, to continue the use of his machine during an ex- 
 tended term of the patent is well settled. — Paper Bag cases, lOo U. b. 7bb, 
 26 L. Ed. 959. ,,. ^ „ 
 
 Bloomer v. McQueewan, 14 How, 550; Chaffee v. Boston, 63 U. S. 223; MitcheU 
 V. Hawley, 83 U. S. 547; Adams v. Burks, 84 U. S. 455. 
 
 FOREIGN PATENT. 
 
 Statutory Provision § 419 
 General Rulings § 420 
 Expiration of § 421 
 Lapse of § 422 
 Prior § 423 
 
 Miscellaneous Rulings § 424 
 See — Anticipation §§ 80-85; De- 
 fenses § 320; Evidence § 390; Public 
 Use § 852 
 
 § 419. Statutory Provision. 
 
 No person otherwise entitled thereto shall be debarred from receiving a 
 patent for his invention or discovery, nor shall any patent be declared invalid 
 by reason of its haA-ing been first patented or caused to be patented by tlie 
 inventor or his legal representatives or assigns in a foreign country, unless 
 ihe appUcation for said foreign patent was filed more^tban twelve months 
 in case? within the provisions of section 4886 R. S., and four months m cases 
 of designs, prior to the filing of the application in this country, in which case 
 no patent shall be granted in this country.
 
 380 THE FIXED LAW OF PATENTS § 419 
 
 An application for patent for an invention or discovery or for a design filed 
 in this country by any person who has previously regularly filed an appli 
 cation for a patent for the same invention, discovery, or design in a foreign 
 country which, by treaty, convention, or law, affords similar privileges to 
 citizens of the United States shall have the same force and effect as the same 
 application would have had if filed in this country on the date on which appU- 
 cation for patent for the same invention, discovery, or design was first filed 
 in such foreign country, provided the application in this country was filed 
 within twelve months in cases within the provisions of section 4886 of the 
 Revised Statutes, and within four months in cases of designs, from the 
 earliest date on which any such foreign application was filed. But no patent 
 shall be granted on an application for patent for an invention or discovery 
 or a design which had been patented or described in a printed publication 
 in this or any foreign country more than two years before the date of the 
 actual filing of the application in this country, or which had been in public 
 use or on sale in this country for more than two years prior to such filing. 
 — R. S. 4887. 
 
 The foregoing is the statute as twice amended — first by the act of Mar. 3, 
 1897, and second by the act of Mar. 3, 1903. In order to understand the force 
 and effect of the decisions on this subject, it is necessary to quote the section 
 as originally found in the act of July 8, 1870, and also as amended by the 
 act of Mar. 3, 1897. 
 
 As originally passed: 
 
 No person shall be debarred from receiving a patent for his invention or 
 discovery, nor shall any patent be declared invalid, by reason of its having 
 been first patented or caused to be patented in a foreign country, unless 
 the same has been introduced into public use in the United States for more 
 than two years prior to the application. But every patent granted for an 
 invention which has been previously patented in a foreign country shall be 
 so limited as to expire at the same time with the foreign patent, or, if there 
 be more than one, at the same time with the one having the shortest term, 
 and in no case shall it be in force more than seventeen years. 
 
 After the amendment of Mar. 3, 1897, the section read thus: 
 
 No person otherwise entitled thereto shall be debarred from receiving 
 a patent for his invention or discovery, nor shall any patent be declared 
 invalid, by reason of its having been first patented or caused to he patented 
 by the inventor or his legal representatives or assigns in a foreign country, 
 unless the application for said foreign patent was filed more than seven months 
 prior to the filing of the application in this country, in which case no patent 
 shall be granted in this country. 
 
 It is well, also, to have before us the text of Sec. 4886, showing the amend- 
 ments of Mar. 3, 1897. The amendments are shown in italics: 
 
 Any person who has invented or discovered any new and useful art, 
 machine, manufacture, or composition of matter, or any new and useful 
 improvements thereof, not known or used by others in this country, before 
 his invention or discovery thereof, and not patented or described in any printed 
 publication in this or any foreign country, before his invention or discovery 
 thereof, or more than two years prior to his application, and not in public use 
 or on sale in this country for more than two years prior to his application, 
 unless the same is proved to have been abandoned, may, upon payment 
 of the fees required by law, and other due proceeding had, obtain a patent 
 t heref or.
 
 J 420 FOREIGN PATENT 381 
 
 It will thus be seen that Sec. 4S87 has had a somewhat varied career. The 
 decisions following must be read with this in view. 
 
 § 420. General Rulings. 
 
 A patent granted subsequent to a foreign patent for the same invention, 
 is limited thereby under sec. 4887 to the term for which the foreign j^atent 
 is granted, and the word " term " is meant to cover the full period of the 
 foreign grant, without reference to the " terms " for which the patent may- 
 be extended, as construed in Pohl v. Anchor, 134 U. S. 381. — Bate v. Ham- 
 mond, 129 U. S. 151 ; 32 L. Ed. 645 ; 9 S. Ct. 225. 
 
 Under 4887 U. S. R. S. a patent expires with the term of the shortest 
 prior foreign patent, the expiration of term meaning the term for which such 
 foreign patent was granted, or could be kept in force. Construing Bate v. 
 Hammond, 129 U. S. 151 ; Pohl v. Anchor, 134 U. S. 381 ; 33 L. Ed. 953; 10 
 S. Ct. 577. 
 
 Holmes v. Metropolitan, 21 F. R. 458; Paillard v. Bruno, 29 F. R. 864; Bate 
 V. Gillett, 31 F. R. 809; Ruber v. Nelson, 38 Fed. 830. 
 
 The expiration of a foreign patent prior to application for a reissue voids 
 the reissue. — Commercial v. Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 
 S. Ct. 972. 
 
 Voids grant of domestic patent issued after expiration of foreign patent. 
 — Huber v. Nelson, 148 U. S. 270; 37 L. Ed. 447; 13 S. Ct. 603. 
 Bate V. Hammond, 129 U. S. 151. 
 
 Does not operate to terminate domestic patent if the term for which the 
 foreign patent is undisturbed. — Huber v. Nelson, 148 U. S. 270; 37 L. Ed. 
 447; 13 S. Ct. 603. 
 
 Pohl V. Brewing Co. 134 U. S. 385. 
 
 Under the facts stated (that the American application was filed Dec. 1, 
 1876; that English patent was issued Jan. 29, 1877; that Canadian patent 
 was issued Jan. 9, 1877; that the American patent was issued Nov. 20, 1877) 
 the invention for which the U. S. patent was issued was " previously patented 
 in a foreign country," within the meaning of those words in sec. 4887 
 U. S. R. S. and the tl. S. patent expired under the terms of that section, 
 l)efore the expiration of seventeen years from its date. — Bate v. Sulzberger, 
 157 U. S. 1; 39 L. Ed. 601 ; 15 S. Ct. 508. 
 
 Compare Bate v. Hammond, 129 U. S. 151. 
 
 Full statement of present status of sec. 4887. 
 
 The French patent for a term of 15 years was issued before the date of 
 the application for the United States patent, and was in full force at that 
 date, but lapsed for the nonpayment of an annuity before the U. S. patent 
 issued. The effect which the lapse had upon the life of the U. S. patent de- 
 pends upon the proper construction of sec. 4887. 
 
 No one of the five decisions of the Supreme Court which may be supposed 
 to bear upon a decision of this motion was based upon the facts in this case. 
 All the decisions of the Supreme Court upon sec. 4887 were intended to be 
 limited to the question which arose upon the precise facts of the respective 
 cases, and are to be so regarded, notwithstanding any general language 
 which was used. 
 
 In Bate v. Hammond, 129 U. S. 151, the question was whether the U. S. 
 patent expired at the end of 5 years or 15 years, from the date of the pre- 
 viously issued Canadian patent; and it was held that as there was no in- 
 terruption of the Canadian patent, 15 year period prevailed.
 
 3g2 THE FIXED LAW OF PATENTS §420 
 
 In Pohl V. Brewing Co. 134 U. S. 381, the court held that the potential 
 term and not the period of actual existence, was to govern. 
 
 In Commercial v. Fairbank, 135 U. S. 176, the great question was whether 
 the foreign patents were identical with those of the United States, and hnding 
 them to be so, held that the application for the reissue filed subsequent to the 
 expiration of a foreign patent was void. <■ ■, ^ ^u • i 
 
 The decision of Bate v. Sulzberger, 157 U. S. 1, was confined to the suigle 
 point that the provisions of sec. 4887 " refer to foreign patents granted pre- 
 viously to the issue of letters patent for the same mvention by the United 
 States, and not to foreign patents granted previously to the application for 
 the American letters." . , . . .^ ^ .^ 
 
 The case of Huber v. Mfg. Co., 148 U. S. 270, was tried m circuit court after 
 the decision in the Bate case and before that in the Pohl case. In this case, 
 the application for the U. S. patent was filed more than 7 months after the 
 English patent had become void. Held: " We are of opinion that, as in the 
 case at bar, the foreign patent was not in force when the U. S. patent was 
 issued, the latter patent never had any force or validity; " and gave as the 
 apparent reason for the conclusion that " the delay in applying for the U. b. 
 patent until after the foreign patent expired amounted to an abandonment 
 of the right to a U. S. patent. This is in accordance with Mushet's Case " 
 (1870) which was an application for an extension of a U. S. patent after the 
 foreign patent for the same invention had expired. The Huber case is an 
 authority only for the right to obtain a U. S. patent applied for 7 months 
 after a foreign patent had expired, and after its owners manifestly regarded 
 it as of no importance and consequently after the abandonment of the right 
 to a U. S. patent. There has been no authoritative decision by that court 
 upon the facts of the case at bar. 
 
 Section 4887 provided that prior foreign patenting should not be a bar to 
 a United States patent, unless under certain circumstances, but that such 
 patent should not extend beyond the term of the hfe of its foreign predecessor. 
 If the invention or the right to a patent had been abandoned before the ap- 
 plication for a United States patent, its issuance was prohibited under an- 
 other section. If there had been no abandonment before application, but the 
 issuance of the United States patent was delayed until the foreign patent had 
 become forfeited by noncompliance with some statutory provision, the ques- 
 tion is, whether when issued, its life had been destroyed, or whether its life 
 was upon the declared or legal term of the foreign patent. If its life was des- 
 troyed, its destruction was effected while the application was under exam- 
 ination, and was delayed in the patent office. Such a result would be at 
 variance with the spirit of the section, the intent of which was to make the 
 United States term coterminous with the possible foreign term. 
 
 But there is no requirement that the foreign patent must be in force at 
 the date of the United States patent, and in searching for the meaning of 
 the section, as applied to this case, the words " to expire at the same time " 
 should have the same construction in each set of circumstances, and should 
 be taken to mean that the United States patent expires at the end of the 
 term prescribed in the previous foreign patent. — Welsbach v. Apollo, 96 
 Fed. 332; 37 C. C. A. 508. 
 
 'Note: Perhaps this decision should set at rest the wandering and dis- 
 embodied spirit of sec. 4887. The opinion is by Wallace and concurred in 
 by Shipman (only two judges sitting), and the briefs were by Bennett for 
 appellant and Wetmore for appellees. Wliile other conditions may arise, 
 it would seem that thus far the law should remain settled. 
 
 The following opinion by Judge Lowell is given, practically in full. 
 At the time the patent in suit was issued, section 4887 of the Revised 
 Statutes was in force in its original form. By virtue of that section the patent
 
 § 420 FOREIGN PATENT 383 
 
 was limited to expire with the British patent, May 19, 1897. The complain- 
 ant contended that since the passage of Act Mar. 3, 1903, c. 1019, 32 Stat. 
 1225, every patent whenever granted is limited only by the term expressed 
 in its grant and is governed by Rev. St. sec. 4884. Under this contention 
 the patent expired May 24, 1904. In order to understand the legislation 
 under consideration it is here printed in full. (Here is quoted sec. 4887; 
 Act Mar. 3, 1897, c. 391, 29 Stat. 692; Act Mar. 3, 1903, c. 1019, sec. 1, 32 
 Stat. 1225, above quoted.) 
 
 Let us consider how the law stood regarding patents like that here in suit 
 at every stage of the legislation, bearing in mind the necessary distinction 
 between the validity of a patent and its term. Act July 4, 1836, c. 357, sec. 
 8, 5 Stat. 121, provided that prior foreign patenting within six months 
 of the application here should not invahdate the domestic patent, which 
 was left in force as expressed on its face. Act Mar. 3, 1839, c. 89, sec. 6, 5 
 Stat. 354, did not affect patents validated by the act of 1836, but, in addition 
 thereto, validated American patents for inventions which had been patented 
 abroad more than six months before the application here. It first gave to 
 foreign patenting an effect upon the term of an American patent for the same 
 invention by reckoning the statutory term of the American patent from the 
 foreign rather than from the American issue. The general codification of 
 the patent laws in Act July 8, 1870, c. 230, 16 Stat. 201, materially changed 
 the effect given to foreign patenting, and in this respect did not merely 
 codifv existing legislation. Bate v. Sulzberger, 157 U. S. 1, 41. The American 
 patent was made to expire with the foreign patent of shortest term, and not 
 at the usual statutory period reckoned from the date of the foreign applica- 
 tion. The pro\dsions of sec. 25 of the Act of 1870 were substantially Hke those 
 of Rev. Stat. 4887. The latter was expressed in two sentences. In substantial 
 accordance with the acts of 1836 and 1839 as amended by the Act of 1870, 
 the first sentence declared that no patent should be deemed invalid because 
 of prior foreign patenting. This sentence dealt with validity as affected 
 by foreign patenting and with that subject only. The second sentence dealt 
 with the term of American patent as affected by prior foreign patentmg, 
 and not at all with its validity, carrying out the radical alteration of the 
 term which was introduced bv the Act of 1870. 
 
 When granted, the patent in suit fell within the purview of both sentences 
 of section 4887. The first saved it from invalidation by the prior British 
 patenting. The second limited its term by that of the British patent; i. e., 
 :Mav 19, 1897. Had the legislation remained unchanged to the present day 
 the defense to this bill would undoubtedly be complete. 
 
 The Act of Mar. 3, 1897, was passed before the expiration of the patent 
 in suit. Section 3 amended both sentences of Rev. Stat. 4887. The only 
 important amendment to the first sentence invalidated American patents 
 where the foreign application was filed more than seven months before the 
 American application. The second sentence of sec. 4887 was stricken out 
 altogether. As thus amended, sec. 4887 dealt solely with the invalidation 
 of patents by reason of foreign patenting, and in no way affected their term. 
 As no legislation remained to give to prior patenting any effect upon the term 
 of an American patent for the same invention, that term stood as fixed by the 
 grant issued under Rev. Stat. 4884. 
 
 In order to save earlier patents from the operation of the Act of 1897 as 
 to their term or validitv, section 8 expresslv provided that the amendment 
 of Rev. Stat. sec. 4887" should not apply to patents granted before Jan. 1, 
 1898. These were left to be governed bv section 4887 in its original form. 
 Therefore the patent in suit was left by the Act of 1897 unaffected either as 
 to its validity or as to its term, governed as to the latter by the second 
 clause of sec. 4887, and not by sec. 4884. By this saving of rights some 
 patents were left valid which would have been invalidated had the Act of
 
 384 THE FIXED LAW OF PATENTS §421 
 
 1897 been made retroactive; e. g., cases in which the foreign patent had been 
 applied for more than seven months before the domestic appUcation. Other 
 patents were left invalid which would have been validated had the Act 
 of 1897 been made retroactive ; e. g., cases in which the American patent 
 had expired by reason of the expiration of the British patent. The general 
 saving of rights to individuals and to the public made by sec. 8 applied alike 
 to both cases. The patent in suit therefore, expired May 19, 1897, as it 
 would have done had the Act of 1897 never been passed. 
 
 The Act of 1903 amended sec. 4887 as amended. It did not purport to 
 affect the term of patents in any respect, but only the requisites of their 
 validity. Before its passage, as has just been said, the patent in suit was 
 controlled as to its term by sec. 4887 in its original form. The Act of 1903 
 manifested no intention to change this control, or in effect to revive a patent 
 which had expired six years before its passage. Complainant has referred 
 to statutes which repealed earlier legislation imposing penalties or working 
 forfeitures. These repealing statutes have often been given a retroactive 
 effect. But the second sentence of Rev. Stat. 4887, imposed no penalty, and 
 worked no forfeiture. Moreover, the case does not stand as if the second 
 sentence of Rev. Stat. 4887 had been repealed without qualification. Legis- 
 lation will not easily be construed to destroy by mere implication rights 
 expressly saved to the public or to individuals in earlier legislation from its 
 retroactive operation. As the Act of 1897 expressly left the patent in suit 
 to expire in 1897, and as the Act of 1903 manifested no contrary intention, 
 it follows that the Sherman patent expired before this suit was brought. — 
 Sawyer v. Carpenter, 143 Fed. 976; 75 C. C. A. 162. 
 
 The patent laws of the different countries vary so much in the extent of 
 the grant provided for, and the limitations placed upon it, that to sustain 
 complainant's proposition would lead to holding that few, if any, of the foreign 
 patents could be included in the terms of section 4887. The words " pre- 
 viously patented in a foreign country," must then be taken to mean " pa- 
 tented according to the laws and usages of such foreign country," provided 
 a substantial monopoly is thereby granted. None of the cases cited by the 
 complainant, all of which have been examined, sustains its contention in 
 this respect. Even the recent case of Societe v. General Electric Co. 97 Fed. 
 604, so much relied upon by complainant, does not, on the precise point 
 determined upon the facts of the case, justify such an interpretation of the 
 meaning of the act in question. It is true, the learned judge in that case 
 said, " A patent implies a grant from the sovereign power, securing to the 
 inventor, for a limited time, the exclusive right to make, use, and vend 
 the invention." If he meant by this that there could be no patent in a foreign 
 country, within the meaning of section 4887, that was not covered by the 
 precise language of this definition, we must hold, not only that the statement 
 was obiter dictum, but inaccurate. We are inclined to think, however, that 
 the learned judge in using the words " make, use and vend," had in mind 
 merely the statutory terms of the grant contained in an American patent, 
 which were sufficient for his then purpose, inasmuch as he decided that in 
 the case before him the Swiss government had granted no patent at all, 
 because the condition required by the Swiss law had not been complied with, 
 and the instrument claimed to be a patent was merely a temporary protection, 
 with a promise that a definitive patent would be granted when the condition 
 prescribed was fulfilled. The conclusion arrived at by the court upon the 
 facts stated was correct, and the reasoning of the court upon those facts 
 was clear and convincing. — Atlas v. Simonds, 102 Fed. 643; 42 C. C. A. 398. 
 
 § 421. Expiration of. 
 
 A patent granted subsequent to a foreign patent for the same invention 
 is limited thereby under sec. 4887 to the term for which the foreign patent
 
 i 421 FOREIGN PATENT 385 
 
 is granted, and the word " term " is meant to cover the full period of the 
 former patent without reference to the " terms " for which the patent may- 
 be extended. As construed in Pohl v. Anchor, 134 U. S. 381. — Bate v. 
 Hammond, 129 U. S. 151; 32 L. Ed. 645; 9 S. Ct. 225. 
 
 A patent shall be so limited as to expire at the same time with the term 
 limited by the foreign patent of prior issue having the shortest time to run; 
 and the word " term " is not subject to any lapse or forfeiture of the foreign 
 patent. Construing, Bate v. Hammond, 129 U. S. 151. — Pohl v. Anchor, 
 134 U. S. 381 ; 33 L. Ed. 953; 10 S. Ct. 577. 
 
 Holmes v. Metropolitan, 21 F. R. 458; Paillard v. Bruno, 29 F. R. 864; Bate 
 V. Gillett, 31 F. R. 809; Ruber v. Nelson, 38 F. R. 830. 
 
 " If your invention has not been introduced into public use in the United 
 States for more than two years, you may, upon complying with the condi- 
 tions prescribed, obtain an American patent, and you may, if you can, 
 obtain a foreign patent. But the American patent will be granted on 
 the condition that if you obtain the foreign patent first, your invention 
 shall be free to the American people whenever by the expiration of the 
 foreign patent it becomes free to people abroad; and in no case shall the 
 term of the American patent exceed seventeen years." This we deem to be 
 a sound interpretation of the statute, giving to the words used the meaning 
 required by their ordinary signification. — Bate v. Sulzberger, 157 U. S. 1 ; 
 39 L. Ed. 601 ; 15 S. Ct. 508. 
 
 It would seem that the main question in this case, namely, whether the 
 invention for which the patent from the U. S. was issued had been pre- 
 viously patented in a foreign country, within the meaning of those words 
 in sec. 4887 of the R. S. and whether the American patent expired under 
 the terms of that section before the expiration of the seventeen years from 
 its date, was squarely before the Supreme Court in the case of Bate v. Ham- 
 mond, 129 U. S. 151, involving the same patent; but that the court declined 
 to decide it. Such was the statement of counsel in this case ; and the court 
 acquiesced therein by neither referring to such statement nor citing that 
 case in this opinion. It follows, therefore, that Bate v. Hammond supra, 
 did not decide the question herein determined, although such interpretation 
 has been put upon it by inexperienced or careless annotators and digesters. 
 — Bate V. Sulzberger, 157 U. S. 1 ; 39 L. Ed. 601; 15 S. Ct. 508. 
 
 In Bate v. Hammond, 129 U. S. 164, it was held that, so far as the term 
 of a Canadian statute operated to curtail the term of the United States patent 
 under 4887 R. S. it should be regarded as a continuous term for the entire 
 period. — Edison v. U. S. 52 Fed. 300; 3 C. C. A. 83. 
 
 The failure to Hmit the patent in suit on its face, to a shorter term than 17 
 years, so as to expire at the same time with the prior foreign patent having 
 the shortest term, does not affect its vaUdity. — Edison v. U. S. 52 Fed. 
 300; 3 C. C. A. 83. 
 
 Bate V. Hammond, 129 U. S. 151. 
 
 It was argued that as a Swedish patent had lapsed under failure to comply 
 with the statute, under the Canadian act the short term patent could not be 
 extended so as to come within Bate v. Hammond, 129 U. S. 164. Held: 
 That the Canadian act applied only to foreign patents existing prior to the 
 Canadian patent; and, therefore, that neither directly (Pohl v. Brewing Co. 
 134 U. S. 381) nor indirectly, through the Canadian patent, is the patent in
 
 386 THE FIXED LAW OF PATENTS § 422 
 
 suit affected by what happened to the Swedish patent. — Edison v. U. S. 
 52 Fed. 300; 3 C. C. A. 83. 
 
 It will be observed that this section (4887) while it extended the right 
 of a foreign inventor and patentee, as it existed under the acts 1836 and 1839, 
 in regard to the limitation by a two-years public use, on the other hand, 
 changed, in the interest of the American public, the term for which such 
 foreign patentee could obtain a patent in the United States from 14 years 
 from the date of the foreign patent to a period to be ineasured by the shortest 
 term of the foreign patents previously obtained. This limitation of the term 
 of the monopoly of an American patent, where the patentee has previously 
 obtained a foreign patent, is obviously in the interest of those from whom 
 tribute is exacted by such monopoly ; and this purpose to do justice to the 
 American public, by giving them the same privilege as is accorded to the 
 people of the foreign country in which the patent is first granted, challenges 
 the consideration of the Court. — Atlas v. Simonds, 102 Fed. 643; 42 C. C. A. 
 398. 
 
 That there was no patent law, in the sense of a legislative enactment, in 
 Denmark, until 1894, does not affect the situation. Prior to the enactment 
 of the law of that year, patents or enerets were granted and issued by the 
 king, in exercise of the royal prerogative, and the term for which they were 
 granted was determined according to what seemed the exigency of each 
 case. Nevertheless such patents were issued by virtue of the recognized law- 
 ful authority vested in the reigning monarch, and were acts of a reigning 
 sovereignty as completely as were legislative enactments! — Atlas v. Simonds, 
 102 Fed. 643; 42 C. C. A. 398. 
 
 That sec. 4887, before it was amended, and as construed in Bate v. Sulz- 
 berger, 157 U. S. 1, was sufficiently drastic to warrant a strict construction; 
 and that the question of identity between the foreign patent and the domestic 
 patent depends upon the claim of the domestic patent, and not upon the 
 disclosure of the foreign patent, see Westinghouse v. Stanley, 138 Fed. 823; 
 71 C. C. A. 189. 
 
 Commercial v. Fairbank, 135 U. S. 176; Rob. on Pat. sec. 623. Criticising 
 Walker on Pat. (4 Ed.) 150. Distinguishing Siemens v. Sellers, 123 U. S. 276. 
 See also Sawyer v. Carpenter, 133 Fed. 238. 
 
 If differences could be set up to defeat the application of sec. 4887 of the 
 R. S., even when they involV^e no patentable invention, the statute would 
 have been emasculated, and the application could always have been defeated, 
 by trivial and unimportant changes, so that it would be left practically 
 worthless. In Westinghouse v. Stanley, 138 Fed. 823, we rested on the fact 
 that the differences between the foreign patent and the domestic patent 
 then in question involved " an essential, novel, and patentable improve- 
 ment." We were not then required to rule directly on the question 
 pressed on us here. If it had been pressed we would probably have perused 
 Siemens v. Sellers, 123 U. S. 276, farther than we did. It was there said 
 at page 283 " a patent cannot be exempted from the operation of the law 
 (sec. 4887) by adding some new improvement to the invention." No mere 
 changes in detail which do not affect the essence of the invention as cov- 
 ered by the respective patents can avail this complainant. — Thomson- 
 Houston V. McLean, 153 Fed. 883; 82 C. C. A. 629. 
 
 § 422. Lapse of. 
 
 A patent shall be so limited as to expire at the same time with the term 
 limited by the foreign patent of prior issue having the shortest time to run,
 
 §§ 423-424 FOREIGN PATENT 387 
 
 and the word " term " is not subject to any lapse or forfeiture of the foreign 
 patent. Construing, Bate v. Hammond, 129 U. S. 151. — Pohl v. Anchor, 
 134 U. S. 381 ; 33 L. Ed. 953 ; 10 S. Ct. 577. 
 
 Holmes v. Metropolitan, 21 F. R. 458; Paillaxd v. Bruno, 29 F. R. 864; Bate v. 
 Gillett, 31 F. R. 809; Huber v. Nelson, 38 F. R. 830. 
 
 Nor do we find it necessary to express an opinion whether the lapsing of 
 a foreign patent by the failure of a patentee to pay a renewal fee required 
 by the British law would shorten the term of his patent here. — Hobbs v. 
 Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 409. 
 
 Bate V. Hammond, 129 U. S. 151; Pohl v. Anchor, 134 U. S. 381; Bate v. 
 Sulzberger, 157 U. S. 36. 
 
 § 423. Prior. 
 
 Neither of the English inventions are shown by the testimony to have 
 been patented until after Morse's appHcation for a patent, nor to have been 
 so described in any pre\'ious publication as to embrace any substantial part 
 of his invention. And if his application for a patent was made under such 
 circumstances, the patent is good, even if in point of fact he was not the 
 first inventor. — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 By the Act of 1870, a foreign patent, in order to invaHdate an American 
 patent, must antedate the invention patented. — Cochrane v. Deener, 94 
 U. S. 780; 24 L. Ed. 139. 
 
 Under the law prior to the act of 1870 the issue of a prior foreign patent 
 carried the issue date of the American patent back to it. — Siemens v. Sellers 
 123 U. S. 276; 31 L. Ed. 153; 8 S. Ct. 117. 
 
 It is true that by Rev. Stat. sec. 4887, " every patent granted for an in- 
 vention which has been previously patented in a foreign country shall be 
 so limited as to expire at the same time with the foreign patent ; " but this 
 ob%'iously presupposes that the foreign patent shall have been obtained by 
 the American patentee or with his consent. This is evident from the some- 
 what awkward phraseology of the 1st clause of the section, which declares 
 that " no person shall be debarred from receiving a patent for his invention 
 ... by reason of its ha\ing been first patented or caused to be patented in a 
 foreign country," which e\idently means that the patentee shall not be de- 
 barred from his patent by reason of his ha\ang first patented, or caused 
 his invention to be patented in a foreign countrj'. Indeed it would be mani- 
 festly unjust that a patentee should lose the full fruit of his patent by the 
 fact that some intermeddler had caused the invention to be patented abroad, 
 that we could not give that construction to the section unless its phraseology 
 imperatively demanded it. This construction would suggest an excellent 
 de\'ice for an enemy to bring about the termination of an inconvenient patent. 
 — Hobbs V. Beach, 180 U. S. 383 ; 45 L. Ed. 586 ; 21 S. Ct. 409. 
 
 § 424. Miscellaneous Holdings. 
 
 The effect of a foreign patent of a different date is to limit the duration 
 of the American patent, not to invaUdate it. — O'Reilly v. Morse, 15 How. 
 62; 14 L. Ed. 601. 
 
 The fact that the domestic patent does not bear the same date as a foreign 
 patent does not render the domestic patent void, although the foreign patent 
 limits its duration. — Telephone Cases, 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 
 778. 
 
 O'ReiUy v. Morse, 56 U. S. 62; Siemens t'. Sellers, 123 U. S. 276.
 
 388 THE FIXED LAW OP PATENTS § 425 
 
 The preamble of complainant's patent contains a recital of several foreign 
 patents which were taken out for the same invention. (And in the oath it 
 is shown the same recital is made.) This recital is erroneous in several partic- 
 ulars, but the record fails to show that there was any intentional misrepre- 
 sentation. So far as we can discover, the requirement of a reference to 
 foreign patents in the preamble of an application, is a mere regulation of the 
 patent office, which is so far reasonable that it may bar the issue of a patent 
 until it is complied with, but which cannot invalidate a patent once issued 
 unless perhaps when the recital is erroneous through a wilful misrepresenta- 
 tion or some fraudulent purpose. — Heap v. Tremont, 82 Fed. 449 ; 27 C. C. A. 
 316. 
 
 Note: It is a question if the statement were contained in the oath and 
 were false, whether it would not amount to a false oath which could 
 defeat the patent. 
 
 The true meaning and purpose of the act of Congress, as expressed in the 
 language used, are accomplished by applying the word " patented " to the 
 having received the grant of an exclusive privilege from a foreign sovereign, 
 if such privilege amounts to a substantial monopoly. The contention of 
 appellant is that, inasmuch as, under our present patent laws, the exclusive 
 privilege granted to an inventor is to " make, use, and vend " his invention, 
 the words " patented in a foreign country " can only refer to an exclusive 
 privilege to this full extent, and are therefore not applicable to the privilege 
 granted by the Danish patent or eneret, which is only " to make and allow 
 to make " the thing invented. In our opinion this contention is not tenable. 
 The Danish word " eneret," according to the Danish expert and patent 
 solicitor produced as a witness by complainant, means " monopoly." There 
 can be no question that the exclusive privilege to make and permit others to 
 make is a substantial monopolv, and within the meaning of the language 
 employed in section 4887. — Atlas v. Simonds, 102 Fed. 643; 42 C. C. A. 398. 
 
 The complainant maintains that the British patent was taken out by an 
 intermeddler (the evidence was that simultaneous patenting was ordered, 
 but that the parties whether authorized or not acted otherwise). There is 
 no evidence that the inventor, or whoever controlled the invention, ever 
 repudiated the British patent until after this suit was commenced, or at- 
 tempted to do so. As he, whoever he was, knew that there was to be an 
 application for a British patent, and that there was a purpose to take it 
 out, it is beyond reasonable probability to assume that he never informed 
 himself as to the issue of such a patent. On the other hand, the Circuit 
 Court, and we, are entitled to assume that he obtained knowledge of what 
 was done and acquiesced therein, an hypothesis which would reject the 
 conclusion of the Circuit Court in this respect, to the effect that the British 
 patent was properly taken out, would be unreasonable. — United v. Du- 
 plessis, 155 Fed. 842; 84 C. C. A. 76. 
 
 FRAUD. 
 
 Statute and General Statement § 425 | See — Defenses §§ 317, 318. 
 
 § 425. Statute and General Statement. 
 
 It will be noted that the first and second statutory defenses under Sec. 
 4920 suggest the question of fraud — the first defense, fraud against the public, 
 and the second, fraud against another inventor. The question of fraud has 
 also arisen in connection with actions to cancel patents (see title Cancellation 
 of Patent);hui the question of fraud has not entered largely into the subject 
 of patent litigation, as will be seen from the following meagre quotations.
 
 § 426 FUNCTION 389 
 
 It seems to us that if Bell was aware, at the time that he filed his specifi- 
 cations, asserted his claims, and procured his patents, that the same matter 
 had been previously discovered and put into operation by other persons, 
 he was guilty of such a fraud upon the public that the monopoly which these 
 patents grant to him ought to be revoked and annulled. — U. S. v. Am. Bell, 
 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 While equity will always reheve those who suffer from acts of fraud, it 
 has always been required that those who seek its jurisdiction on that ac- 
 count shall, after having carefully scrutinized the cause of complaint, more 
 clearly formulate the allegations of the same, and then that they shall fully 
 prove that which they have so alleged. — Dashiell v. Grosvenor, 66 Fed. 334; 
 13C. C. A. 593. 
 
 Montesquieu v. Sandys, 18 Ves. 302; Price v. Berrington, 7 Eng. Law. & Eq. 
 260; Wilde v. Gibson, 1 H. L. Cas. 620; Glasscott v. Lang, 2 Phil. Ch. 310; Curson 
 V. Belworthy, 22 Eng. Law. & Eg. 1; Tillinghast v. Champlain, 4 R. I. 173; Fisher 
 V. Boody, 1 Curt. 206; Eyve v. Potter, 15 How. 42. 
 
 We conclude that the statement in the specification to which allusion has 
 been made is a statement which rests upon no substantial foundation, and 
 was most likely inserted in the specification for the purpose of forestalling 
 objections to the granting of a patent. — Mahler v. Animariutn, 111 Fed. 
 530; 49 C. C. A. 43L 
 
 FUNCTION. 
 
 Patentability § 426 
 Miscellaneous Rules § 427 
 See — Claims § 196; Infringement 
 §§ 448, 490, 527; Invention §§ 594, 
 
 600, 603; Machine and Product 
 § 771; Process § 820-1; Product 
 § 823, Specification § 911 
 
 § 426. Patentability. 
 
 It has been perfectly well settled ever since the time of Corning v. Burden 
 that a function is not patentable, but to determine whether a claim is so far 
 functional in character as to be invalid is a constantly recurring problem. 
 It is never a question of the rule itself, but whether the claim comes under 
 the rule. This subject recurs under Invention — Result or Function. 
 
 It is well settled that a man cannot have a patent for the function or ab- 
 stract effect of a machine, but only for the machine which produces it. — 
 Corning v. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 An inventor who has devised a machine for performing a particular func- 
 tion cannot claim to cover every machine performing the same function. — 
 Dryfoos V. Weise, 124 U. S. 32; 31 L. Ed. 362; 8 S. Ct. 354. 
 
 A function which is an incident to the operation of a machine attributable 
 to the skill and deftness of the operator, rather than a distinct function of 
 the machine cannot be claimed as novelty. ^— Union v. Keith, 139 U. S. 
 530; 35 L. Ed. 261 ; 11 S. Ct. 621. 
 
 The difficulty we have found with this claim is, it is open to the objection 
 (held in several cases to be fatal) that the new function of a machine cannot 
 be patented. — Westinghouse v. Boyden, 170 U. S. 537; 42 L. Ed. 1136; 18 
 S. Ct. 707. 
 
 Coming v. Burden, 15 How. 252; Burr v. Duryee, 1 Wall. 531; Fuller v. 
 Yentzer, 94 U. S. 288; Locomotive v. Medart, 158 U. S. 68; Paper Bag Case, 30
 
 390 THE FIXED LAW OF PATENTS § 427 
 
 Fed. 63; Machine Co. v. Waterbury, 39 Fed. 389; Travers v. Cordage Co. 64 
 Fed. 771. 
 
 That a claim for a function is invalid, see Goshen v. Bissell, 72 Fed. 67; 19 
 C. C. A. 13. 
 
 A claim for a function is not patentable. — Boyden v. Westinghouse, 70 
 Fed. 816; 17 C. C. A. 430. 
 
 Now, the function or result of the operation of a machine or combination 
 is not patentable under our laws, and therefore the camber in the beam could 
 not be monopolized by means of a patent. The means, the mechanical 
 device, by which that camber was produced and that alone, was capable 
 of protection by such a franchise. — National v. Interchangeable, 106 Fed. 
 693; 45 C. C. A. 544. 
 
 Fuller V. Yentzer, 94 U. S. 288; Pencil Co. v. Howard, 20 Wall. 498; Miller v, 
 Mfg. Co., 151 U. S. 186; Knapp v. Morss, 150 U. S. 221; Carver v. Hyde, 16 Pet. 
 513; LeRoy v. Tatham, 14 How. 156; Coming v. Burden, 15 How. 252; Burr v. 
 Duryee, 1 Wall. 531. 
 
 . Again, since a function is not patentable, a combination of functions 
 is not ; nor is a combination of mechanical devices or elements and one of the 
 functions of that combination. — National v. Interchangeable, 106 Fed. 693; 
 45 C. C. A. 544. 
 
 A valid patent cannot be secured for a function, a mode of operation, or a 
 result, separate from the means or mechanical devices by which the result 
 is accomplished. — Union v. Diamond, 162 Fed. 148; 89 C. C. A. 172. 
 
 Fuller V. Yentzer, 94 U. S. 288; Westinghouse v. Boyden, 170 U. S. 537. 
 
 § 427. Miscellaneous Rules. 
 
 The distinction between a practically operative mechanism and its function 
 is said to be difficult to define. Rob. Pat. sec. 144. It becomes more difficult 
 when a definition is attempted of a function of an element of a combination 
 which is the means by which other elements are connected and by which 
 they co-act to make complete and efficient the invention. — Continental v. 
 Eastern, 210 U. S. 405; 51 L. Ed. 922; 28 S. Ct. 748. 
 
 An inventor is entitled to a beneficial function of his invention, whether 
 he knew all its beneficial uses or not. — Goshen v. Bissell, 72 Fed. 67; 19 
 C. C. A. 13. 
 
 McCormick v. Aultman, 69 Fed. 371; Roberts v. Ryer, 91 U. S. 150; Brown 
 V. D. C. 130 U. S. 87-103; Fames v. Andrews, 122 U. S. 40; Miller v. Mfg. Co. 
 151 U. S. 201; Stow v. Chicago, 104 U. S. 550; Tucker v. Spalding, 13 Wall. 453; 
 Appleton V. Starr, 60 Fed. 411; Western v. Sperry, 58 Fed. 186; Gait v. Parlin, 
 60 Fed. 422; Dixon v. Pfeifer, 55 Fed. 390; Thompson v. National, 65 Fed. 427. 
 
 It is not always clear what is meant by the use of this elastic and indefinite 
 word " function." But it is thought that the assertion of a new function 
 or effect should only be sustained upon proof of novel or unexpected properties 
 or uses capable of producing novel results. Smith v. Goodyear, 93 U. S. 486. 
 We arenot aware of any case where a claim for a new function has been sus- 
 tamed in the absence of such element of novelty or unexpectedness. — Gen- 
 eral V. Yost, 139 Fed. 568; 71 C. C. A. 552.
 
 §§ 428-429 
 GOVERNMENT. 
 
 GOVERNMENT 
 
 391 
 
 Statutory Provisions § 428 
 
 General Rulings § 429 
 
 See — Employer and Employee § 364; 
 
 Infringement § 498; Injunction § 553; 
 Jurisdiction § 715; License § 749 
 
 § 428. Statutory Provisions. 
 
 All officers and employees of the Patent Office shall be incapable, during 
 the period for which they hold their appointments, to acquire or take, 
 directly or indirectly, except by inheritance or bequest, any right or interest 
 in any patent issued by the Office. — R S. 480. 
 
 No royalty shall be paid by the United States to any one of its officers 
 or employees for the use of any patent for the system, or any part thereof, 
 mentioned in the preceding section (marine engines), nor for any such patent 
 in which said officer or employee may be directly or indirectly interested. 
 — R. S. 1673. 
 
 The Secretary of the Interior and the Commissioner of Patents are author- 
 ized to grant any officer of the Government, except officers and employees of 
 the Patent Office, a patent for any invention of the classes mentioned in 
 sec. 4886 of the Revised Statutes when such invention is used or to be used 
 in the public service, without the payment of any fee: Provided, That the 
 applicant in his application shall state that the invention described therein, 
 if patented, may be used by the Government, or any of its officers or em- 
 ployees in prosecution of work for the Government, or by any other person 
 in the United States, without the payment to him of any royalty thereon, 
 which stipulation shall be included in the patent. — Act Mar. 3, 1883, ap- 
 pended to 4886 R. S. See App. § 428. 
 
 § 429. General Rulings. 
 
 As will be seen, the Government has no different property rights and no 
 different exemption from liability than any other person or corporation. 
 Of course, an injunction will not lie, and actions lie in the Court of Claims 
 instead of in the circuit court. The subject of jurisdiction is treated under 
 Jurisdiction — Court of Claims, and the subject of governmental infringement 
 is treated under Infringement — Government. See App. § 828. 
 
 The government of the United States has no prerogative right which gives 
 it any right to use the patented invention of a citizen on other terms than 
 any citizen. — James v. Campbell, 104 U. S. 356; 26 L. Ed. 786. 
 
 There is no difference between the government and any other employer. 
 If one is employed to devise and perfect an instrument, or means for accom- 
 plishing a desired result, he cannot, after successfully accomplishing his work 
 for which he was employed plead title thereto as against his employer. That 
 which he has been employed and paid to accomplish, becomes, when ac- 
 complished the property of his employer. So also when one is in the employ 
 of another in a certain line of work, and devises an improved method or in- 
 strument for doing the work, and uses the property of his employer and the 
 services of other employees to develop and put in practicable form his in- 
 vention, and explicitly assents to the use by his employer of his invention, 
 a jury, or a court trying the facts, is warranted in finding that he has so far 
 recognized the obligations of service flowing from his employment and the 
 benefits resulting from his use of the property, and the assistance of the co-
 
 392 
 
 THE FIXED LAW OF PATENTS 
 
 § 430 
 
 employees of his employer, as to have given to such employer an irrevocable 
 license to use such invention. — Solomons v. U. S. 137 U. S. 342; 34 L. Ed. 
 667; 11 S. Ct. 88. 
 McClurg V. Kingsland, 42 U. S. 202. 
 
 The government has no more right to appropriate a man's property 
 invested in a patent than it has to take his property vested in real estate; 
 nor has the fact that an inventor is at the time of his invention in the employ 
 of the government transfer to it any title or interest therein. .There is no 
 difference between the government and any other employer in this respect. 
 But when he is employed to and does invent in his capacity, the government 
 acquires the same rights, and the same rules obtain, as in the case of any other 
 employee. — Solomons v. U. S. 137 U. S. 342; 34 L. Ed. 667; 11 S. Ct. 881. 
 
 It would seem that, although the contractor in the performance of his 
 contract and with the knowledge of the officers of the government may in- 
 fringe a patent in the actual performance of such work (as infringing a 
 process for laying a pavement) the government is in no way liable in damages. 
 — Schillinger v. U. S. 155 U. S. 163; 39 L. Ed. 108; 15 S. Ct. 85. 
 
 Harlan and Shiras dissenting. 
 
 There is no doubt whatever of the proposition laid down in Solomons v. 
 U. S. 137 U. S. 342, that the mere fact that a person is in the employ of the 
 Government does not preclude him from making improvements in the ma- 
 chines with which he is connected, and obtaining patents therefor as his 
 individual property, and that in such cases the government would have no 
 more right to seize upon and appropriate such property than any other 
 proprietor would have. On the other hand, it is equally clear that, if the 
 patentee be employed to invent or devise such improvements, his patents 
 obtained therefor belong to his employer, since in making such improve- 
 ments he is merely doing what he was hired to do. — Gill v. U. S. 160 U. S. 
 426; 40 L. Ed. 480; 16 S. Ct. 322. 
 
 The United States may be sued by a patentee for their use of his invention 
 under a contract made with him by the United States or by their authorized 
 officers. — Belknap v. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 U. S. V. Bums, 79 U. S. 246; U. S. v. Palmer, 128 U. S. 262; U. S. v. Berdan, 156 
 U. S. 552. 
 
 IMPROVEMENT. 
 
 Statute Authority and General State- 
 ment § 430 
 
 Carrying Forward § 431 
 Claims § 432 {see § 184) 
 Combinations § 433 (see § 249) 
 General Rules § 434 
 Generic § 435 
 
 Infringement of § 436 (see § 445) 
 Mechanical Skill § 437 
 Old Device, New Use § 438 
 On Prior Patent to Same Inventor 
 §439 
 
 Patentability § 440 
 Scope — - Limitations § 441 
 Specific § 442 
 Utility § 443 
 Miscellaneous § 444 
 See — Assignment §§ 160-62; Claims 
 §§ 198, 205; Divisional Patenting 
 § 348; Double Patenting § 356; Em- 
 ployer and Employee § 365; Equiva- 
 lents § 376; Infringement §§ 471, 
 506-7; Invention §§ 646-8, 659. 
 
 § 430- Statute Authority and General Statement. 
 
 Any person who has invented or discovered any new and useful art, ma- 
 chine, manufacture, or composition of matter, or any new and useful im- 
 provement thereof * * * — R. S. 4886.
 
 S 431 IMPROVEMENT 393 
 
 The term " improvement " is used with great freedom in the statute, 
 by the Patent Office, and by the courts. It is no more definable than the 
 term invention. Some have tried to classify improvements as a separate 
 class of inventions, but the attempt has not proved wholly satisfactory. 
 The author has not undertaken to correct the custom and usage of the legis- 
 lative, executive or judicial departments of Government, however wrong 
 or loose the same may have been. Supplemental sections will be found 
 under Infringement and Invention. 
 
 § 431, Carrying Forward. 
 
 But a mere carrying forward or new or more extended application of the 
 original thought, a change only in form, proportions or degree, the substitu- 
 tion of equivalents, doing substantially the same thing in the same way by 
 substantially the same means with better results, is not such invention as 
 will sustain a patent. These rules apply aUke, whether what preceded was 
 covered by a patent or rested only in public knowledge or use. In neither 
 case can there be an invasion of such domain and an appropriation of any- 
 thing found there. In one case everything belongs to the prior patentee; 
 in the other to the public at large. — Smith v. Nichols, 88 U. S. 112; 22 L. Ed. 
 566. 
 
 The mere carrying fom-ard of an old idea, though effecting an im- 
 provement, is not invention. — Guidet v. Brooklyn, 105 U. S. 550: 26 L. Ed. 
 1106. 
 
 In short, this is a patent for superior workmanship, and within all the 
 authorities is invalid. This court has repeatedly stated that all improve- 
 ment is not invention. If a certain device differs from what precedes it 
 only in superiority of finish, or in greater accuracy of detail, it is but carrying 
 forward of an old idea, and does not amount to invention. Thus if it had 
 been customary to make an article of unpolished metal it does not involve 
 invention to polish it. If a telescope had been made with a certain degree 
 of power, it involves no invention to make one which differs from the other 
 only in its having greater power. If boards had heretofore been planed by 
 hand, a board better planed by machinery would not be patentable, al- 
 though in all those cases the machinery itself mav be patentable. — Risdon 
 V. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 S. Ct. 745. 
 
 Smith V. Nichols, 88 U. S. 112; Pickering v. McCullough, 104 U. S. 310; Burt 
 V. Every, 133 U. S. 349; Wooster v. Calhoun, 11 Blatchf. 215. 
 
 A mere carrying forward or an extended application of the original device 
 with the change only in degree, is not patentable invention. — Eames v. 
 Worcester, 123" Fed. 67; 60 C. C. A. 37. 
 
 Smith V. Nichols, 21 Wall. 112; Burt v. Every, 133 U. S. 349; Grant v. Walter, 
 148 U. S. 547; Market v. Rowley, 155 U. S. 621; Fox v. Perkins, 52 Fed. 205; 
 Galvin v. Grand Rapids, 53 Fed. 165. 
 
 It is not invention to merely carry forward an invention shown in a prior 
 machine. — Van Epps v. United, 143 Fed. 869 ; 75 C. C. A. 77. 
 Smith V. Nichols, 21 Wall. 112; Ansonia v. Electrical, 144 U. S. 11. 
 
 This simplifying of the process may have involved an exercise of the in- 
 ventive faculties, but surely does not entitle its author to rank as a pioneer. 
 Such improvements are a part of the evolution and natural development 
 of every art. An inventor of such an improvement must be confined strictly 
 to the particular advantage which he has made and cannot levy tribute
 
 394 THE FIXED LAW OF PATENTS §§ 432^34 
 
 on the improvement of others. — Universal v. Sonn, 154 Fed. 665; 83 C. C. A. 
 422. 
 
 § 432. Claims. 
 
 An inventor who has made an improvement in a machine cannot include 
 all previous inventions, and have a claim to the whole art, discovery, or 
 machine which he has improved. All others have an equal right to make 
 improved machines, provided they do not embody the same or substantially 
 the same devices or combination of devices, which constitute the pecuhar 
 characteristic of the previous invention. — Burr v. Duryee, 68 U. S. 531 ; 
 17 L. Ed. 750. 
 
 A patent is addressed to those famiUar with the art. A new and useful 
 improvement upon an old machine is just as much the subject of a patent 
 as a new machine. All that the inventor is required to do is to point out dis- 
 tinctly the part he claims as new, so as to advise the pubhc as to the extent 
 of his invention, and what is thereby withdrawn from the public. — Goshen 
 V. BisseU, 72 Fed. 67; 19 C. C. A. 13. 
 
 Parks V. Booth, 102 U. S. 96; Seymour v. Osborne, 11 Wall. 516; Roberts v. 
 NaU Co. 53 Fed. 916; 2 Rob. Pat. 530-534. 
 
 The claims of a patent covering a mere improvement upon prior machines, 
 which were capable of accomplishing the same general result, must receive 
 a narrow interpretation. — Greene v. Buckley, 135 Fed. 520; 68 C. C. A. 70. 
 
 Morley v. Lancaster, 129 U. S. 263. 
 
 § 433* Combinations. 
 
 Improvements in machines protected by letters patent may also be men- 
 tioned, of a much more numerous class, where all the ingredients of the in- 
 vention are old, and where the invention consists entirely of a new combina- 
 tion of old ingredients, whereby a new and useful result is obtained, and many 
 of them are of great utility and value, and are just as much entitled to pro- 
 tection as those of any other class. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 Union v. Matthieson, 2 Fish. P. C. 605. 
 
 The patent is not a pioneer or primary one in any sense, and the owner is 
 not entitled to much range of equivalents. The claims must be limited in 
 their scope to the actual combination of essential parts as shown, and cannot 
 be construed to cover other combinations of elements or different construc- 
 tion of arrangement. — St. Louis v. American, 156 Fed. 574; 84 C. C. A. 340. 
 
 Cimiotti v. American, 198 U. S. 399; Kokomo v. Kitselman, 189 U. S.8; Greene 
 V. Buckley, 135 Fed. 520. 
 
 § 434. General -Rule. 
 
 Nor can its validity be impeached upon the ground that it is an improve- 
 ment upon a former invention, for which the patentee had himself already 
 obtained a patent. Any other inventor might do so ; and there can be no rea- 
 son, in justice or in policy, for refusing the like privilege to an original in- 
 ventor. — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 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 infringer who has improved the original machine
 
 S 435 IMPROVEMENT 395 
 
 by use of a different form or combination performing the same functions. 
 The inventor of the first improvement cannot invoke the doctrine of equiva- 
 lents to suppress all other improvements which are not mere colorable in- 
 vasions of the first. — McCormick v. Talcott, 61 U. S. 402; 15 L. Ed. 930. 
 
 For ordinary improvers the stimulus of the rewards offered by our patent 
 laws is needed to encourage by the hope of profit that zealous eagerness to 
 improve processes, to remedy defects in machinery, to invent new methods 
 and appHances for saving labor and cheapening productions in the number- 
 less articles that are in daily use. It is this stimulus that has made the 
 American mechanic the most alert, observant, and studious of any in the 
 world, and it is the indefinite multiplication of these small inventions and 
 improvements that has wrought an industrial revolution and brought this 
 country to the forefront of the world's commerce. — Crown v. Aluminum, 
 lOSFed. 845; 48 C C. A. 72. 
 
 The alleged improver may have a valid patent for his new means, and is 
 entitled to its exclusive use;' but the prior patent equally excludes him from 
 the use of the prior invention, with or without his improvement. — Columbia 
 V. Kokomo, 14.3 Fed. 116; 74 C. C. A. 310. 
 
 Cochrane v. Deener, 94 U. S. 780. 
 
 § 435- Generic. 
 
 The Arnold and Pipo machines merely gave hints how a plaiting machine 
 could be made. The manufacture of plaits originated with the mechanism 
 of Crosby and Kellogg, whose machine was not an addition to an old struc- 
 ture, as in Garretson v. Clark, supra, or in Reed v. Lawrence, 29 Fed. 915. 
 — Tuttle V. Claflin, 76 Fed. 227; 22 C C. A. 138. 
 
 If the evidence was true that Cramer was the first to present a new and 
 useful combination by mounting his treadle in the vertical cross-brace, 
 thereby obtaining the advantages which some of the witnesses testified to, 
 he was undoubtedly entitled to the protection, and to the exclusive right to 
 mount a treadle in" the cross brace, no matter what the form of the bearings 
 of the treadle might be. — Singer v. Cramer, 109 Fed. 652; 48 C. C. A. 588. 
 
 Reversed, 192 U. S. 265. 
 
 Winans v. Denmead, 15 How. 330; Ives t'. Hamilton, 92 U. S. 426; Machine 
 Co. i;. Murphy, 97 U. S. 120; Hoyt v. Home, 145 U. S. 308. 
 
 The device was wholly novel, performing a function never before per- 
 formed, achieving at once an extensive demand and a successful use; and 
 the invention, small in character though it seem, is therefore entitled to a 
 primary rank. — Chicago v. Miller, 133 Fed. 541 ; 66 C. C. A. 517. 
 
 Westinghouse v. Boyden, 170 U. S. 537. 
 
 We think it cannot be said that Jordan was a pioneer inventor in the sense 
 that he was first to produce a machine to successfully form can bodies. He 
 was first, however, to form can bodies by the use of a rotating horn. His 
 invention must be accorded a place inferior, perhaps, to that of a priniary 
 invention, but far in advance of those which constitute but a slight 
 improvement on the prior art. His claims, therefore, while not entitled to 
 the broadest construction accorded to the former, are not to be restricted 
 to the narrow construction applicable to the latter. He is entitled to the 
 protection of the doctrine of equivalency in proportion to the nature of the 
 advance which his invention indicates. — American v. Hickmott, 142 Fed. 
 141; 73C. C. A. 359.
 
 396 THE FIXED LAW OF PATENTS § 435 
 
 Penfield v. Chambers, 92 Fed. 630; McCormick v. Aultman, 69 Fed. 371; 
 Muller V. Tool, 77 Fed. 621; Letson v. Alaska, 130 Fed. 140; Miller v. Eagle, 115 
 U. S. 186. 
 
 The conception of Bates was not pioneer invention in the broad sense 
 of the term, and the mechanism described in the patent was merely an im- 
 provement upon the old wire-barbing machines. Nevertheless the invention 
 was meritorious — a marked advance in the art, and of unquestionable utility 
 — so that the patentee is not only entitled to protection of his monopoly 
 against colorable evasions, but, for such protection, is entitled as well to 
 the benefit of the doctrine of equivalents, commensurate with the invention 
 disclosed, though not of the broad range which is accorded an invention 
 of primary character. — Columbia v. Kokomo, 143 Fed. 116 ; 74 C. C. A. 310. 
 
 Miller v. Eagle, 151 U. S. 186; Bundy v. Detroit, 94 Fed. 524; National v. 
 Interchangeable, 106 Fed. 693. 
 
 The assumed prototype of the device was a failure, and Bates was the 
 pioneer in his conception of a combination, which solved the problem where 
 other inventors had failed in the quest. Exact measurement of the faculty 
 thus brought to the solution is needless in the face of the undeniable achieve- 
 ment. The combination so devised is both new and useful in the sense and 
 within the objects of the patent law. — Columbia v. Kokomo, 143 Fed. 116; 
 74 C. C. A. 310. 
 
 The defendant contends that, inasmuch as Chadbourn (the inventor of 
 the prior device) discloses the generic combination, the only novelty of 
 Johnson (the inventor of the patent in suit) lies in the form of the secondary 
 motor, or in the form of the secondary valve. This, in our opinion, is erro- 
 neous. He (Johnson) was first to regulate the heat supply, using a relay or 
 secondary motor operated by compressed air, and this seems to have been 
 a very practical and important contribution to the art of heat regulation. 
 We are of the opinion, therefore, that Johnson, and not Chadbourn, is to 
 be regarded as the inventor of the generic combination, and that the claims are 
 to be construed not merely as for minor and detailed improvements, but for 
 a primary invention in the specific field of heat regulation. In order to hold 
 that Chadbourn's patent in any respect anticipates or limits the patent in 
 suit, we should be obliged to lay great stress upon a mere verbal suggestion 
 of Chadbourn as to the use of air, and to ignore the fact that he had appar- 
 ently no conception whatever of the modifications which the use of a com- 
 pressed-air relay would permit in practical apparatus for heat regulation. 
 We also should be obliged to ignore entirely Johnson's exact and definite 
 conception which led to an important improvement upon an art which 
 Johnson had already brought to a high degree of development. We are of 
 opinion that, in sustaining the Johnson patent and giving it a construction 
 commensurate with Johnson's actual contribution to the practical art, we 
 are well within the principles laid down and applied in Lawther v. Hamilton, 
 124 U. S. 1 ; Western v. LaRue, 139 U. S. 601 ; Potts v. Creager, 155 U. S. 
 597; Cash Register Case, 156 U. S. 502; Hobbs v. Beach, 180 U. S. 383; 
 and applied by us in Watson v. Stevens, 51 Fed. 757; Davey v. Prouty, 107 
 Fed. 505; Forsyth v. Garlock, 142 Fed. 461. — Weld v. Johnson, 147 Fed. 
 234; 77 C. C. A. 376. 
 
 Gathright's device, though an improvement upon existing tabulators, 
 was an improvement of such vital importance that it may be said that the 
 art, when considered from a practical and commercial point of view, began 
 with him. He converted a theory into a fact. His invention belongs to that 
 large class which have been treated with liberality by the courts, when the 
 inventor by an apparently simple change, addition or transposition of parts
 
 §§ 436-437 IMPROVEMENT 397 
 
 has converted imperfection into completeness. — Wagner v. Wycoff, 151 
 Fed. 585; SICCA. 129. 
 
 Westinghouse v. Boyden, 170 U. S. 537; Barbed Wire Patent, 143 U. S. 275* 
 Consolidated v. Crosby, 113 U. S. 157; Hobbs v. Beach, 180 U. S. 383; 
 Topliff V. Topliff, 145 U. S. 156. 
 
 § 436. Infringement of. 
 
 One invention may include within it many others, and each and all may 
 be valid at the same time. This only consequence follows : that each inventor 
 is precluded from using inventions made and patented prior to his own, 
 except by license from the owners thereof. His invention and his patent 
 are equally entitled to protection from infringement, as if they were inde- 
 pendent of any connection with them. — Cochrane v. Deener, 94 U. S. 780; 
 24 L. Ed. 139. 
 
 An improvement, although it may be a proper subject of a patent, in use 
 may involve the prior invention, and therefore infringe it. — Morley v. Lan- 
 caster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 That a narrow improvement, while of undoubted utility, which must be 
 very narrowly construed in order to save the patent from anticipation, must 
 be construed equally narrowly as to infringement, see Tower v. Eagle, 94 
 Fed. 361; 36 C C A. 294. 
 
 That an improvement suggested by acquaintance with a prior patented 
 device is not necessarily indicative of infringement or lack of invention, see 
 Cushman v. Goddard, 95 Fed. 664; 37 C C A. 221. 
 
 Westinghouse v. Boyden, 170 U. S. 537. 
 
 Note: This may be an inference from the Westinghouse case, but its value 
 is very doubtful; because it is merely an inference, and unless positively 
 backed up by substantial proof, has very small evidential value. 
 
 That the claims for improvements in a well-worked art will be strictly 
 construed when both patents in litigation — the patent sued on and the 
 patent justified under — are of such a character, see Mayor v. Holmquist, 
 145 Fed. 179; 76 C C A. 149. 
 
 Milwaukee v. Brunswick, 126 Fed. 185; Loew v. Miller, 138 Fed. 889. 
 
 § 437. Mechanical Skill. 
 
 It may be admitted that the inventor's later patent performed the work 
 it was designed to accomplish in a better and more workmanlike manner 
 than any of the preceding devices patented, because, as stated, there were 
 constant improvements in the art to which it related. So far as this record 
 shows, it was the last of a series of patents designed to accomplish the same 
 object. As such, it necessarily retained all the beneficial features of the earlier 
 patents, and, to a certain extent, improved upon them. Such improvement, 
 however, was an improvement in degree only, and was therefore not patent- 
 able. — Busell V. Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 150. 
 
 Burt V. Evory, 133 U. S. 349. 
 
 Somethin-T more is required to support a patent than a slight advance 
 over what had preceded it or mere superiority in workmanship or finish. 
 — International v. Gaylord, 140 U. S. 55; 35 L. Ed. 347: 11 S. Ct. 716. 
 
 Smith V. Nichols, 88 U. S. 112; Atlantic v. Brady, 107 U. S. 192; Pickenng v. 
 McCuUough, 104 U. S. 310.
 
 398 THE FIXED LAW OF PATENTS § 438 
 
 When the field is new inventions are striking and novel; when old im- 
 provements are so slight as to fall near to mechanical skill. — Haughey v. 
 Lee, 151 U. S. 282; 38 L. Ed. 162; 14 S. Ct. 331. 
 
 Where, of a number of independent inventors working in the same field, 
 one takes the last step which accomplishes the result sought, a strong pre- 
 sumption of invention is raised in his favor. But where a number of workers 
 in a single field, when confronted by an obstacle to the development of a 
 device, naturally, and practically contemporaneously, independently sub- 
 stitute one well-known material for another, and, finding that it successfully 
 overcomes such obstacle, use it publicly and privately without any claim 
 of exclusive right, the presumption is raised that such workers rightly re- 
 garded the substitution as a mere improvement, a mere choice of material 
 such as would be adopted or selected by the skilled workman, or a double 
 use. — Thomson-Houston v. Lorain, 117 Fed. 249; 54 C. C. A. 281. 
 
 At most, this addition is but the mere extension of an old idea, and nothing 
 more than the ordinary mechanical skill of one conversant with the art could 
 readily supply. To admit patentability in this would be to hold that every 
 duplication ad infinitum of similar forms founded on an old principle would 
 be patentable invention. — Standard v. Computing, 126 Fed. 639 ; 61 C. C. A. 
 541. 
 
 Smith V. Nichols, 21 Wall. 112; Grant v. Walter, 148 U. S. 547; Schreiber v. 
 Grimm, 72 Fed. 671; Soehner v. Favorite, 84 Fed. 182. 
 
 It did not involve invention to weaken the entire enclosing head so that 
 the whole head would yield under excessive interior pressure produced by 
 freezing, instead of weakening a part of the enclosing head. Such a change 
 would fall within the established principle that a mere carrying forward of 
 an original conception patented; a new and more extended application of 
 it, involving only change of form, proportions or degree; the substitution of 
 equivalents doing substantially the same thing in the same way, by substan- 
 tially the same means, with better results — is not such invention as will 
 sustain a patent. — Neptune v. National. 127 Fed. 563; 62 C. C. A. 345. 
 
 Smith V. Nichols, 21 Wall. 112; Burt v. Evory. 133 U. S. 349; HoUister v. 
 Benedict, 113 U. S. 59. 
 
 The result of the application of the common skill and experience of a 
 mechanic, which comes from habitual and intelligent practice of his calling, 
 to the correction of some slight defect in a machine or combination, or to a 
 new arrangement or grouping of its parts, tending to make it more effective 
 for the accomplishment of the object for which it was designed, not involving 
 a substantial discovery, nor constituting an addition to our knowledge of the 
 art, is not within the protection of the patent laws. — Sloan v. Portland, 139 
 Fed. 23; 71 C. C. A. 460. 
 
 Gates V. Fraser, 153 IT. S. 332; Florsheim v. Schilling, 137 U. S. 64; HoUister 
 V. Benedict, 113 U. S. 59; Atlantic v. Brady, 107 U. S. 192; Dunbar v. Meyers, 
 94 U. S. 187; Hotchkiss v. Greenwood, 11 How. 267; Adams v. Lindell, 77 Fed. 
 432; Tiemann v. Kraatz, 85 Fed. 437. 
 
 § 438. Old Device, New Use. 
 
 This inventor took the well-known parts of an ordinary double-action 
 pump changed some of them slightly in form, added a new device, and pro- 
 duced something which would do what was wanted. While nominally he 
 only made an improvement in pumps, he actually made an improved pump. 
 For ordmary uses the improvement added nothing to the value of the old
 
 §§ 439-440 IMPROVEMENT 399 
 
 pump, but for the new and special purpose in view, the old pump was useless 
 without the improvement. — Goulds v. Cowing, 105 U. S. 253; 26 L. Ed. 987. 
 
 All the elements in the combination have been used before, and the func- 
 tions of each were well known in the art, but it does not appear that they had 
 ever been similarly, specifically combined for effectuating the purpose here 
 accomplished. The grant of the patent carries with it the presumption of 
 patentability, and this presumption has been strengthened by the general 
 acceptance of the device, the acquiescence of those skilled in the art, and 
 their willingness to accept licenses thereunder. — Millheim v. Western, 95 
 Fed. 152; 37 C. C. A. 38. 
 
 His contribution to the art did not consist in improving the form or loca- 
 tion or sequence of elements in an existing combination, but in taking and 
 combining the elements to produce a new result. He is entitled to an ap- 
 plication of the doctrine of equivalents in proportion to the scope of his 
 invention. — Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. 
 
 § 439. On Prior Patent to Same Inventor. 
 
 He must stand on the same footing with any other inventor of an improve- 
 ment upon a previous discovery. Nor is he bound in his new patent to refer 
 specially to his former one. All that the law requires is that he shall not claim 
 as new what is covered by a former invention, whether made by himself or 
 any other person. — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 § 440. Patentability. 
 
 That an improvement upon a well-known device is patentable ; and that 
 proof of the existence of the old device does not defeat the improvement. — 
 Evans v. Eaton, 3 Wheat. 454 ; 4 L. Ed. 433. 
 
 If the same combinations existed before in machines of the same nature 
 up to a certain point, and the party's invention consists in adding some new 
 machinery, or some improved mode of operation, to the old, the patent 
 should be Hmited to such improvement, for if it includes the whole machinery, 
 it includes more than his invention, and therefore cannot be supported. — 
 Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 472. 
 
 Improvements for which a patent may be granted must be new and useful, 
 within the meaning of the patent law, or the patent will be void, but the 
 requirement of the Patent Act in that respect is satisfied if the combination 
 is new and the machine is capable of being beneficially used for the purpose 
 for which it was designed, as the law does not require that it should be of 
 such general utility as to supersede all other inventions in practice to ac- 
 complish the same object. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Lowell V. Lewis, 1 Mason, 182; Bedford v. Hunt, 1 Mason, 302; Many v. Jagger, 
 1 Blatchf. 372; Barret v. Hall, 1 Mason, 447. 
 
 Particular changes must be made in the construction and operation of an 
 old machine so as to adapt it to a new and valuable use not known before, 
 and to which the old machine had not been, and could not be, applied without 
 those changes and, under the circumstances, if the machine, as changed and 
 modified, produce a new and useful result, it may be patented, and the patent 
 will be upheld under existing laws. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 Bray v. Hartshorn, 1 Cliff. 541; Losh v. Hague, 1 Web. P. C. 207; Hind. Pat. 
 95; Phillips v. Page, 24 How. 166; Norm. Pat. 25.
 
 400 THE FIXED LAW OF PATENTS §440 
 
 A new idea may be engrafted upon an old invention, but distinct from the 
 conception which preceded it, and be an improvement. In such case it ia 
 patentable. — Smith v. Nichols, 88 U. S. 112; 22 L. Ed. 566. 
 
 When a subsequent apparatus is substantially the same as one which 
 precedes it, it is not the proper subject of a patent; but if it be substantially 
 different in construction and mode of operation, then it is as much the proper 
 subject of a patent as if nothing of the kind had ever before been invented. 
 — Fuller V. Yentzer, 94 U. S. 299 ; 24 L. Ed. 107. 
 
 Dissenting: Waite, Strong, Miller, Bradley. 
 
 The first defense is based on the theory that a patent cannot be valid 
 unless it is new in all its elements as well as in the combination. But this 
 theory cannot be maintained. If it were so no patent for an improvement 
 on a known contrivance or process could be valid. And yet the great ma- 
 iority of patents are for improvements in old and well known devices or 
 on patented contrivances.— Cantrellt;.Wallick, 117 U. S. 689; 29 L. Ed. 1017; 
 6 S. Ct. 970. 
 
 Seymour v. Osborne, 11 Wall. 516; Loom v. Higgins, 105 U. S. 580; Hailes v. 
 Van Wormer, 20 Wall. 353; Star v. Grossman, 4 Cliff. 568. 
 
 Two patents may be both valid when the second is an improvement upon 
 the first, in which event, if the second includes the first, neither of the two 
 patentees can lawfully use the invention of the other without the other's 
 consent. — Cantrell v. WaUick, 117 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970. 
 
 Star V. Grossman, 4 Gliff. 568. 
 
 The test of an improvement is that it must be the product of an original 
 conception. — Burt v. Evory, 133 U. S. 349; 33 L. Ed. 640; 11 S. Ct. 349. 
 
 Pearce v. Mulford, 102 U. S. 112; Slawson v. Grand, 107 U. S. 649; Munson v. 
 N. Y. 124 U. S. 601; Smith v. Nichols, 88 U. S. 112. 
 
 It may be true, as claimed, that complainants' machine is superior to 
 prior devices; but the question is whether, in view of what is disclosed, in 
 the previous machines, it can be properly said that his machine or combina- 
 tion constitutes such a substantial advance or improvement over prior de- 
 vices as involves invention, and will entitle him to a patent therefor. " It 
 is well settled that not every improvement in an article is patentable. The 
 test is that the improvement must be the product of an original conception. 
 A mere carrying forward or more extended application of an original appli- 
 cation of an original idea — a mere improvement in degree — is not inven- 
 tion." — Fox V. Perkins, 52 Fed. 205; 3 C. C. A. 32. 
 
 Burt V. Evory, 133 U. S. 358; Smith v. Nichols, 21 Wall. 112; Howe v. National, 
 134 U. S. 397; Ansonia v. Electrical, 144 U. S. 11; Roller Go. v. Walker, 138 U. S. 
 124. 
 
 The history and nature of the invention shows that it did not consist in a 
 mere change of material. It was not an India rubber surgical instrument, 
 as distinguished from an instrument made of metal or webbing, but it was 
 an improvement upon an existing India-rubber tube, which was valuable, 
 and which the record shows had evaded invention, study and skill. — Stohl- 
 mann v. Parker, 53 Fed. 925; 4 C. C. A. 109. 
 
 For any new and useful improvement which contained also the element of 
 invention, or for a separate invention, a subordinate patent could be ob- 
 tained. — Westinghouse v. N. Y. 63 Fed. 962; 11 C. C. A. 528.
 
 { 441 IMPROVEMENT 401 
 
 §441. Scope — Limitations. 
 
 Where the specification discloses several combinations and separate in- 
 ventions the word improvement will be construed as in the plural. — Evans 
 V. Eaton, 3 Wheat. 454; 4 L. Ed. 433. 
 
 Under the proofs, we find ourselves unable to assent to the proposition 
 that the plaintiff was a pioneer. Wliile it must be conceded that none of 
 the earlier patents anticipate him, his true relation to this particular branch 
 of the art seems to be nothing more than that of an improver. — Lewis v. 
 Pa. Steel Co. 59 Fed. 129; 8 C. C. A. 41. 
 
 Tliis is not a case where Adams preceded all the rest, and struck out some- 
 thin-^ which included and underlay all that they produced. It is a case m 
 wliich the principles to be applied, and the mechanical elements to be used, 
 were all old and well known. Manv minds were independently striving to 
 accompUsh the same purpose. Adams formed and patented one com- 
 bination. Edison, Finney, and Sprague devised and used others. Each 
 is entitled to his own form, so long as it differs from that of his com- 
 petitor, and does not include theirs, and neither is entitled to sub- 
 lect to tribute those whose combinations are not mere evasions ot fiis 
 own The franchise of Adams was limited by the state of the art to the spe- 
 cific combination he described and claimed in his patent, and to palpable 
 evasions of it. — Adams Elec. Ry. v. Lindell, 77 Fed. 432; 23 C. C. A. 223. 
 
 No one can claim the complete whole, and each is entitled only to the 
 specific form or device which he produces, and every other inventor is en- 
 titled to his own specific form, so long as it differs from those of his com- 
 petitors, and does not include theirs. — Mann v. Hoffman, 104 l^ed. ^45, 
 43 C C A 514 
 
 Railway v. Sayles, 97 U. S. 554; Duff v. Pump Co. 107 Fed. 636; Boyd v, 
 Janesville, 158 U. S. 260. 
 
 When the advance toward the desideratum is gradual, and several inventors 
 form different combinations which accomplish the desired result with yarying 
 degrees of success, each is entitled to his own combination so long as it ditters 
 from those of his competitors and does not include theirs. — Kinloch v. 
 Western, 113 Fed. 659; 51 C. C. A. 369. 
 
 National v. Interchangeable, 106 Fed. 693; Railway ^-Sayles, 97 US- 554; 
 McCormick v. Talcott, 20 How. 402; Stirrat v. Mfg. Co. 61 Fed. 980; Griswold 
 V. Barker, 62 Fed. 389; Adams v. Lindell, 77 Fed. 432. 
 
 Where the advance in the art is gradual, and several inventors make valu- 
 able improvements varying In degrees of success, each is entitled to his own 
 combination, so long as it differs from those of his competitors and does not 
 include theirs. — Ide v. Trorhcht, 115 Fed. 137 ; 53 C. C. A. 341 . 
 
 National v. Interchangeable, 106 Fed. 693; Railway ^-Sayles 97 U. S 554, 
 McCormick v. Talcott. 20 How. 402; Stirrat v. Mfg- Co. 61 Fed. 980, Griswold 
 V. Harker, 62 Fed. 389; Adams v. Lindell, 77 Fed. 432. 
 
 \VTiere the advance in the art is gradual, and several inventors make 
 valuable improvements and form different combinations, which accomplish 
 the desired result with varying degrees of success, each is entitled to his own 
 combination, so long as it differs from those of his competitors, and does not 
 include theirs. — Anderson v. CoUins, 122 Fed. 451 ; 58 C. C. A. 669. 
 
 National v. Interchangeable, 106 Fed. 693; RaUway^. gayles 97 IJ. S. 554; 
 McCormick t;. Talcott, 20 How. 402; Stirrat v. Mfg. Co. 61 Fed. 980; Griswold t>.
 
 402 THE FIXED LAW OF PATENTS § 442 
 
 Harker, 62 Fed. 389; Adams v. Lindell, 77 Fed. 432; Ide v. Trorlicht, 115 Fed. 
 137. 
 
 He did not acquire the right to use the Bradley process simply because he 
 had improved that process. — Electric Smelting v. Pittsburg, 125 Fed. 926; 
 60 C. C. A. 636. 
 
 Where the advance towards the desideratum is gradual, and several 
 inventors form different combinations and make different improvements 
 which materially aid to accomphsh the desired results, each is entitled to 
 his own combination or improvement, so long as it differs from those of his 
 competitors and does not include theirs. — Mallon v. Gregg, 137 Fed. 68; 
 69 C. C. A. 48. 
 
 National v. Interchangeable, 106 Fed. 693; Railway v. Sayles, 97 U. S. 554; 
 McCormick v. Talcott, 20 How. 402; Stirrat v. Mfg. Co. 61 Fed. 980; Griswold 
 V. Harker, 62 Fed. 389; Adams v. Lindell, 77 Fed. 432. 
 
 There is room for such an adapter (a narrow improver) to have only a 
 specific patent for his particular form of adaptation, and he is not privileged 
 to exclude others from gleaning in the same general field. — Loew v. Miller, 
 138 Fed. 886; 71 C. C. A. 266. 
 
 Milwaukee v. Brunswick, 126 Fed. 171. 
 
 It is not given to any person to preclude all others from providing means 
 for accomplishing any beneficial result. If the means are different — are 
 not substantially the same — there is no infringement; there is not the use 
 of the means contrived by the inventor; his idea is not appropriated, except 
 the idea of the result to be accomplished, and in that there is no quality 
 of invention. — Wessel v. United, 139 Fed. 11; 71 C. C. A. 423. 
 
 That he improved upon the prior structures in the way of simplifying the 
 form and cheapening the casting when made integrally, is undoubted, and 
 such improvement may involve invention; but it is well settled that the 
 patent which may then be granted must be limited to the scope of the actual 
 invention — to his " particular form of adaptation." — Hunt v. Milwaukee, 
 148 Fed. 220; 78 C. C. A. 116. 
 
 Loew V. Miller, 138 Fed. 886. 
 
 § 442. Specific. 
 
 When a valid patent has been obtained, under such conditions (from a 
 study of the state of the art) the claims of the patentee must be restricted 
 to the precise form and arrangement of parts described in the specification. 
 Such a patent is an entirety, and it is a familiar principle that all the parts 
 of the combination must be used by the defendant in order to constitute 
 an infringement. — Mott Iron Works v. Standard, 53 Fed. 819; 4 C. C. A. 28. 
 
 Howe V. Neemes, 18 Fed. 4C; Matteson v. Caine, 17 Fed. 525; Bragg v. Fitch, 
 121 U. S. 478; Railway v. Sayles, 97 U. S. 554. 
 
 As these means existed in earlier machines, though not exactly in the same 
 form, he was not entitled to make such claims, and they cannot be sustained, 
 without restrictions on the specifications. His invention being not of a 
 
 Erimary character, but of special means of accomplishing results that had 
 itherto been attained by means but little different in their nature, the in- 
 vention was limited to the particular means provided. — Brown v. King, 
 107 Fed. 498; 46 C. C. A. 432.
 
 i 442 IMPROVEMENT 403 
 
 MacCormick v. Aultman, 69 Fed. 371; Noonan v. Athletic, 99 Fed. 90; Wells 
 V. Curtis, 66 Fed. 318. 
 
 Crary apparently originated the improvement, but it was, strictly speaking, 
 a secondary invention, for it performs the function previously performed by 
 the stationary platen, although it performs it in a much better way than had 
 been accomplished by its predecessor. It was a substantial and meritorious 
 invention, and was not limited to the details of the mechanism shown in the 
 specification. — Writing Mach. v. Elliott, 108 Fed. 628; 47 C. C. A. 536. 
 
 Walk. Pat. sec. 359. 
 
 When two inventors have each adopted the substantial features or ele- 
 ments of an earlier invention, making respectively but slight changes in or 
 improvements upon the earlier device, each will be limited to his own specific 
 form of device ; and, if there are differences therein, neither device will 
 be held to be an infringement of the other. In all such cases the general 
 words of a claim, especially where the claim contains words of reference to 
 a more particular description of the thing patented, which is contained 
 in the specification, will be held to cover only the structure of the device so 
 particularly described. — Sander v. Rose, 121 Fed. 835; 58 C. C. A. 171. 
 
 McCormick v. Talcott, 20 How. 402; Railway v. Sayles, 97 U. S. 554; National 
 V. Interchangeable, 106 Fed. 693; Brill v. St. Louis, 90 Fed. 666. 
 
 Even if the inventive faculty, as distinguished from ordinary mechanical 
 skill, was exercised, yet, as the invention is not primary, and the patent of 
 doubtful validity, the patentee should be limited to the specific form of 
 machine which he produced, and describes in his specification. — Wilson v. 
 Towuley, 125 Fed. 491 ; 60 C. C. A. 327. 
 
 Railway v. Sayles, 97 U. S. 554; Morley v. Lancaster, 129 U. S. 263; McCor- 
 mick V. Talcott, 20 How. 402; Stirrat v. Excelsior, 61 Fed. 980. 
 
 To the extent of the specific claim, we are not inclined to defeat the patent 
 merely because the change from earlier devices is slight and apparently 
 simple, when it is, as this appears to be, novel, efficient, and popular. — 
 Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669. 
 
 Taking into consideration then just what Motsinger has done — the con- 
 structive idea being old, the mechanism being old, except his substitution 
 of frictional peripheral engagement (frictional engagement being old) 
 for cog peripheral engagement — we are forced to the conclusion, that 
 though Motsinger's patent may cover a valuable improvement, it is 
 not a pioneer patent, and must therefore be limited to the substan- 
 tial mechanical means therein pointed out, or to their mechanical equiva- 
 lents. . . . 
 
 Considered then, as a limited patent for a specific form of construction, 
 we do not think the appellee infringes appellant's patent. Progress in nearly 
 every field of mechanical activity is like the advance of the tide — the last 
 high mark ha\'ing been attained, not by a single thought thrown far in ad- 
 vance of the flood, but by the column of thought that the weight of the flood 
 projects. Where one inventive mind has run far out, marking a distinct 
 field to be thereafter covered, it is not difficult for the courts to set the stakes 
 that give boundary to the advance. But when the advance is an item only 
 of a similar advance all along the line — is borrowed almost altogether from 
 the advance along the line — care must be taken that the boundaries given 
 do not include, up and down the line, every character of mechanism that 
 may thereafter bring about similar results. — Motsinger v. Hendricks, 149 
 Fed. 995; 79 C. C. A. 505.
 
 404 THE FIXED LAW OF PATENTS §§ 443-444 
 
 § 443. Utility. 
 
 It is quite true that this was not a very important discovery. The art 
 in which it was devised is not the most useful. It could not properly be de- 
 scribed as either a pioneer or primary invention, but it does indicate a dis- 
 tinct step forward in the art. It certainly is not in that class of patented 
 devices which are on the border line of mechanical skill and invention, and 
 for which courts have devised the strictest canons of construction. It shows 
 an ingenuity which courts are glad to reward, and which they will not allow 
 technical rules of interpretation intended to narrow the scope of patents of 
 doubtful merit, to impair or destroy. — Bonnette v. Koehler, 82 Fed. 428; 
 27 C. C. A. 200. 
 
 Blandy v. Griffith, Fed. Cas. 1529. 
 
 It is not a pioneer or primary invention, but its successful use proves it 
 to be a step in the art sufficiently meritorious to warrant the monopoly 
 of the patent. — Kisinger-Ison v. Bradford, 97 Fed. 502; 38 C. C. A. 300. 
 
 In that case (Kreraentz v. Cottle, 148 U. S. 556) novelty was found to 
 reside in making a stud or collar-button by swedging a piece of sheet metal 
 into the desired form although the form was old, the process of swedging 
 metal into any desired form, and the studs made in the same way, but more 
 solidly, were likewise old. The patent was sustained because of the recogni- 
 tion by the trade of the practical merits of the stud. So in this case, where, 
 so far as it appears, it had never occurred to the many persons who were 
 experimenting v/ith r.sbestos fabrics, that the sheets could be stitched to a 
 sohd backing, and the threads so embedded in the fibres as to be impervious 
 to fire, if it should be shown that the article was practically valuable and 
 had created a new industry, the question of patentable novelty might well 
 be decided in favor of the patent. — Beer v. Walbridge, 100 Fed. 465; 40 
 C. C. A. 496. 
 
 The embodiment of this conception in mechanical form, necessarily em- 
 braced the disk conception, and to that extent infringed it; but, though an 
 outgrowth, it goes distinctly beyond the disk apparatus substantially im- 
 proving it, as we have already said, in those features that give to the disk 
 apparatus its chief merit and purpose. Why is not improvement patentable? 
 Its patentability will exclude no one who chooses, from the use of the pre- 
 vious disk apparatus. It is a further step in the direction towards which the 
 disk conception was the first long step ; it is a decided and valuable addition 
 to the mechanism used in oil fields, and in connection with the disk form, for 
 the purposes in view, it has no predecessor in the whole pre%'ious uses of 
 eccentrics. This consideration, in our judgment, raises it to the merit of 
 invention. — Grimes v. Allen, 102 Fed. 606; 42 C. C. A. 559. 
 
 It must be remembered, however, that an improvement of an old device 
 or a new combination of old elements not infrequently marks a greater ad- 
 vance in the art and discloses a more useful invention than the conception 
 of the original machine or a knowledge of the old elements of the combination, 
 and that such an improvement is equally entitled with the conception of the 
 original device to the protection of a patent. — National v. Interchangeable, 
 106 Fed. 693; 45 C. C. A. 544. 
 
 § 444. Miscellaneous. 
 
 The right to improve on prior devices by making solid castings in lieu of con- 
 structions of attached parts is so universal in the arts as to have become a 
 common one, so that the burden rests on any one who sets up this improve-
 
 444 
 
 INFRINGEMENT 
 
 405 
 
 ment, in any particular instance as patentable to show special reasons to 
 support liis claims. — Consolidated v. Holzer, 67 Fed. 907; 15 C. C. A. 63. 
 
 Where a claim is predicated upon an improvement, the bill and the proof 
 must show in what the improvement consists. — Tiemann v. Kraatz, 85 Fed. 
 437; 29C. C. A. 257. 
 
 Peterson v. Wooden, Fed. Cas. 11,0.38. 
 
 Note:^ This I think is bad law and without any sound foundation. The 
 patent is prima facie under the statute. 
 
 He was entirely familiar with the Painter inventions. He took his chances 
 in the lottery of infringement, and has lost, and cannot be heard now to 
 complain that he was misled. — Crown v. Aluminum, 108 Fed. 845; 48 
 C. C. A. 72. 
 
 INFRINGEMENT. 
 
 The Statute § 445 
 General Statement § 446 
 Additions 
 
 Elements § 447 
 
 Functions § 448 
 Assignor and Assignee 
 
 By Assignee §449 
 
 By Assignor § 450 
 
 By Inventor-Assignor § 451 
 Avoidance 
 
 Adding Elements or Functions 
 
 §452 
 
 Concealment and Subterfuge § 453 
 
 Impairing Efficiency § 454 (see 
 
 § 470) 
 
 Improving Efficiency § 455 
 
 Omitting Element § 456 
 
 TransDosition of Parts § 457 
 
 Miscellaneous Conditions § 458 
 Change of Form 
 
 Colorable § 459 
 
 Location § 460 
 
 Modification § 461 
 
 Number of Parts § 462 
 Change of Material § 463 
 Combinations {see § 249) 
 
 Adding Elements § 464 
 
 Concealment and Subterfuge § 465 
 
 Construction of § 466 
 
 Different Combination, Same Re- 
 sult § 467 
 
 Equivalents § 468 (see § 373) 
 
 Identity § 469 
 
 Impairing Efficiency § 470 (see 
 
 § 454) 
 
 Improvements § 471 (see § 430) 
 
 Old Elements, New Function § 472 
 
 Omitting Element § 473 
 Contributory 
 
 Furnishing Material § 474 
 
 Intent § 475 
 
 Making Elements § 476 
 
 Rules § 477 
 
 Miscellaneous Rules § 478 
 
 Corporations (see § 271) 
 
 Common Carriers § 479 
 
 Joint Stock § 480 
 
 Officers of § 481 
 
 Miscellaneous Holdings § 482 
 Defenses (see § 306) 
 
 Anticipation § 483 (see § 58) 
 
 Miscellaneous § 484 
 Division or Union of Parts or Ele- 
 ments § 485 
 Duplication § 486 
 Evidence of (see § 388) 
 
 Acts of Defendant § 487 
 
 Burden § 488 
 
 Expert § 489 
 
 Function § 490 (see § 426) 
 
 Identity § 491 
 
 Law Actions § 492 (see § 733) 
 
 Parol § 493 
 
 Sufficiency § 494 
 
 Utility — Use by Defendant § 495 
 
 Miscellaneous Holdings § 496 
 Generic Patent § 497 
 Government § 498 (see § 428) 
 Identity 
 
 Equivalents § 499 (see § 373) 
 
 Means Employed § 500 
 
 Non-Essentials § 501 
 
 Result or Function § 502 
 
 Tests of § 503 
 
 Miscellaneous Rules § 504 
 Importation and Exportation § 505 
 Improvement (see § 430) 
 
 By an Improvement § 506 
 
 Of an Improvement § 507 
 Intent § 508 
 License (see § 749) 
 
 Implied § 509 
 
 By Licensee § 510 
 
 Patentee § 511 
 
 Territorial § 512 
 
 Miscellaneous § 513 
 Machine § 514 (see § 768) 
 Machine and Manufacture § 515
 
 406 
 
 THE FIXED LAW OF PATENTS 
 
 445-447 
 
 Notice § 516 {see § 776) 
 Prior Patent § 517 
 Process (see § 813) 
 
 Additions § 518 
 
 Tests § 519 
 
 Miscellaneous § 520 
 Product § 521 {see § 823) 
 Reissue § 522 {see § 869) 
 Repairs 
 
 Rebuilding § 523 
 
 What Constitute § 524 
 Tests 
 
 Anticipation Test § 525 (see § 58) 
 
 Device and Claims § 526 
 
 Function § 527 (see § 426) 
 
 Interchangeability § 528 
 
 Means and Result § 529 
 
 Utility and Use § 530 
 
 Miscellaneous § 531 
 Miscellaneous Infringement Rules 
 §532 
 
 See — Abandonment § 16; Anticipa- 
 tion § 58; Damages § 278; Defenses 
 § 312; Designs § 331; Evidence 
 § 399 ■,Government§ 428; Improvement 
 § 436; Jurisdiction § 721; License 
 § 749; Pleading and Practice § 792; 
 Unfair Trade § 929 
 
 § 445. The Statute. 
 
 The district courts shall have original jurisdiction as follows: 
 
 Seventh. Of all suits at law or in equity arising under the patent, the copy- 
 right, and the trade-mark laws of the United States. — Jud. Code, Sec. 24. 
 
 Damages for the infringement of any patent may be recovered by action 
 )n the case, in the name of the party interested either as patentee, assignee, 
 or grantee. * * * — R. S. 4919. 
 
 The several courts vested with jurisdiction of cases arising under the 
 patent laws shall have power to grant injunctions according to the 
 course and principles of courts of equity, to prevent the violation of any 
 right secured by patent * * * — R. S. 4921. 
 
 Special provisions relating to actions for infringement will be found in 
 sections 973, 4897, 4899, 4917, 4920, 4922 and 4923, R. S. 
 
 § 446. General Statement. 
 
 The subject of infringement is so interrelated with almost every other 
 subject in the law of patents that any division must necessarily be arbitrary. 
 Especially is this true with reference to such subjects as Claims, Combina- 
 tions, and Invention, and to a certain extent with such subjects as Abandon- 
 ment, Anticipation, Defenses, Equivalents, Machine, Process, Product, and 
 Specifications. 
 
 There is no definition of the term infringement. The term relates to a 
 condition which arises out of the combination of events, the creation of the 
 monopoly by the Government and the invasion of that monopoly by a 
 natural or artificial person. Notwithstanding a few stray expressions (see 
 §§ 403, 406) the question of infringement, per se, is a question of fact; but 
 since the marshalling of facts upon which the act of infringement may or 
 may not be predicated is a matter of law in construing the specification 
 and claims of the patent, and a matter of law in segregating the acts of the 
 alleged infringer which may constitute infringement from those which may 
 not, the actual problem, the difficult problem, is always one of law, or, 
 at the least, one of mixed law and fact. 
 
 § 447. Additions. — Elements. 
 
 The defendant's device, therefore, though it involves additional elements, 
 involves every element present in the Morrison coupling. — Kisinger-Ison 
 V. Bradford, 97 Fed. 502; 38 C. C. A. 300.
 
 §§ 448-450 INFRINGEMENT 407 
 
 The whole testimony impresses us with the beUef that the introduction of 
 the soda ash was intended, not to bring about a product essentially different 
 from the patented product, but to interpose a process so colorably different 
 that it might be used as a shelter against the charge of infringement; and 
 in this respect we are constrained to look upon the defense of infringement 
 differently from the view taken by the Circuit Court. — National v. Elkhart, . 
 123 Fed. 431; 59 C. C. A. 471. 
 
 If it be conceded that improvements are added, it is nevertheless an 
 infringement. — American v. American, 128 Fed. 709; 63 C. C. A. 307. 
 
 Cantrell v Wallick, 117 U. S. 689; Simmons v. Standard, 62 Fed. 928; Rohbins 
 V. Dueber, 71 Fed. 186; Pennington v. King, 7 Fed. 462. 
 
 The defendant certainly has the patented lining ; what else he has is not 
 important. Of course, the addition of the inner brick wall does not avoid 
 infringement. — American v. DeGrasse, 157 Fed. 660; 87 C. C. A, 260. 
 
 § 448. Additions — Functions. 
 
 Infringement is not avoided by the fact that at the same time a revolu- 
 tionary movement is imparted to the mechanism, which carries both the cap 
 and the can during the operation. — Litson v. Alaska, 130 Fed. 129; 64 
 CCA. 463. 
 
 Ives V Hamilton, 92 U. S. 426; Machine Co. v. Murphy, 97 U S. 120; Brush v. 
 Condit, i32 U. S. 39; Hoyt v. Home, 145 U. S. 302. 
 
 If the infringing device performs the same function as the patented 
 device, it is immaterial that it also performs some other function. It is still 
 none the less an equivalent of the patented device, and an appropriation of 
 the patented invention. — Comptograph v. Mechanical, 145 Fed. 331 ; 76 
 C. C. A. 205. 
 
 Walker on Pat. (4th Ed.) 308, 309; Norton v. Jensen, 49 Fed. 859; Norton v. 
 California, 45 Fed. 637; Sarven v. Hall, 21 Fed. Gas. 512; Masseth v. Palm 51 
 Fed. 824; Wheeler v. Clipper, 29 Fed. Cas. 881; Kendrick v. Emmons, 14 Fed. 
 Cas. 305.' 
 
 § 449. Assignor and Assignee — By Assignee. 
 
 The title to a patent conveyed by a written assignment cannot be revested 
 in the assignor by a breach of contract on the part of the assignee, so as to 
 enable the former to maintain a suit upon the patent. — Atkins v. Parke, 
 61 Fed. 953; IOC. C. A. 189. 
 
 Kartell v. Tilghman, 99 U. S. 547. 
 
 § 450. Assignor and Assignee — By Assignor. 
 
 An assignor of a territorial right to make and sell, may make and sell 
 articles to be sold out of his territory, and a purchaser may buy with the 
 understanding and purpose of selling the same out of the territory. — Keeler 
 V. Standard, 157 U. S. 659; 39 L. Ed. 848; 15 S. Ct. 738. 
 
 Dissented to by Brown, Fuller and Field. 
 
 Goodvear v Beverly, 1 Cliff. 348; Wilson v. Rousseau, 45 U. S. 688; Bloomer 
 .. ScQueewan. 5?5 U. S. 539; Mitchell v. Hawley, 83 U. S 547; Adams .. Burks, 
 84 U. S. 453; Boesch v. Graff, 133 U. S. 698; Hobbie v. Jennison, 149 U. S. 355. 
 
 The grantor conveyed to the grantee rights held to be an assignment under 
 the patent. Upon alleged failure of assignee to comply with the terms of 
 the agreement the assignor began manufacturing under alleged right under 
 the patent. Assignee brought suit for infringement, and on leave, assignor
 
 408 THE FIXED LAW OF PATENTS § 451 
 
 filed a cross bill. The proofs showed that there was no default in the payment 
 of royalty at the time the assignor attempted to cancel the contract. Held: 
 that the cross bill cannot be maintained. — Atkins v. Parke, 61 Fed. 953; 
 10 C. C. A. 189. 
 
 §451. Assignor and Assignee — By Inventor- Assignor. 
 
 The defendant is not at liberty to urge the defense of invalidity in a suit 
 upon his own patent against a party who derives title to that patent through 
 him. It is clearly inequitable for a patentee to sell or assign his patent, and 
 then, in a suit against him for infringement by his assignee, to set up that 
 the patent is void for want of invention. The assignor of a patentable inven- 
 tion is estopped from denying the validity of the patent or his own title to 
 the interest transferred. He cannot practise the invention contrary to the 
 provisions of his assignment; and, when sued for infringement, he is not per- 
 mitted to set up in his defense the invalidity of the patent or his own inability 
 to convey it. — Woodward v. Boston, 60 Fed. 283; 8 C. C. A. 622. 
 
 2 Rob. Pat. 555; Walk. Pat. 469: Underwood v. Warren, 21 Fed. 573; 
 Telegraph v. Carey, 22 Blatchf. 34, 19 Fed. 322; Parker v. McKee, 24 Fed. 808; 
 Morey v. Jagger, 1 Blatchf. 372; Curran v. Burdsall, 20 Fed. 835; Burdsall v. 
 Curran, 31 Fed. 918; Ramsey v. Buck, 20 Fed. 697. 
 
 The fact that the infringing machines were designed by the inventor of the 
 patent in suit, and constructed according to his designs, and that they were 
 made, used experimentally, and offered for sale by a co-defendant, in the 
 absence of any further evidence creates such a presumption^ of privity 
 between the parties that all are estopped from disputing the validity of the 
 patent. — Woodward v. Boston, 60 Fed. 283; 8 C. C. A. 622. 
 
 Telegraph Co. v. Carey, 19 Fed. 322. 
 
 We find, therefore, that during the existence of the contract of 1889, 
 Headley made banks precisely like those now complained of, marked them 
 " Patented March 13th, 1888," and sold them to complainant's predecessor 
 at a price per bank which included, not only the cost of production, but also 
 a considerable royalt_v; that, upon application of this contract, he sold the 
 same party a considerable number of the same banks, stamped in the same 
 way, and received a price; that he gave to the same party a license to go on 
 and manufacture the same bank which had been theretofore made by his 
 firm, and received royalty on banks manufactured under that license. We 
 are satisfied that now, when complainant has obtained title to this patent 
 of ]\Iarch 13th, 1888, it does not lie in the mouth of Headley to assert, as 
 against complainant, that the banks he used to stamp and sell as being 
 within said patent are not infringement. — Piaget v. Headley, 108 Fed. 
 870; 48 C. C. A. 116. 
 
 Granting, they say, that Duncan is estopped from asserting that the 
 claims are void for lack of invention or lack of novelty, he may nevertheless 
 bring in the prior art to limit the claims and thus defeat the suit. Why one 
 defense and not the other? They are of as like blood as brothers. One is 
 somewhat larger than the other, is all. Lack of novelty defeats the com- 
 plainant's title to the whole of the property within the metes and bounds of 
 the claims. Limitation destroys his title, in part. If a stranger were occupy- 
 ing part, but not all, of the property described in the deed, he could answer, 
 " I am not concerned with your title to the residue, but what I am occupying 
 is not yours." The contention that Duncan can do likewise brings .the 
 estoppel to nothingness. Duncan's assignment, in fact and likewise by its 
 very terras, was a conveyance not only of the franchise to exclude strangers,
 
 §§ 452-453 INFRINGEMENT 409 
 
 but was also a conveyance of the inventions described in the claims. — 
 Siemens-Halske v. Duncan, 142 Fed. 157; 73 C. C. A. 375. 
 
 § 452. Avoidance — Adding Elements or Functions. 
 
 If appellees are using Fisk's invention as it is defined in the patent, it 
 is immaterial how much of the prior art they also employ. — Western v. 
 American, 131 Fed. 75; 65 C. C. A. 313. 
 
 That the fact that a device performs another function in addition to the 
 function of the patent infringed does not avoid infringement, see American 
 V. Wyeth, 139 Fed. 389; 71 C. C. A. 485. 
 
 It is, of course, immaterial that the defendant's device is operated through 
 intermediate mechanism. Under these circumstances, to hold that the 
 defendant's device does not infringe, we must limit the Felt device to mere 
 details of construction. If the Felt invention were for a mere improvement, 
 such a narrow construction might be warranted. — Comptograph v. Me- 
 chanical, 145 Fed. 331; 76 C. C. A. 205. 
 
 § 453. Avoidance — Concealment and Subterfuge. 
 
 Ingenuity displayed in evading the salient feature of a patent and ingenuity 
 displayed in covering up such salient point in an alleged improvement will 
 be considered favorably in determining novelty. — Hoyt v. Home, 145 
 U. S. 302; 36 L. Ed. 713; 12 S. Ct. 922. 
 
 Winans v. Denmead, 56 U. S. 330. 
 
 Infringement is not averted merely because the machine alleged to infringe 
 may be differentiated from the patented machine, even though the invention 
 embodied in the latter be not primary. — Continental v. Eastern, 210 U. 
 S. 405; 51 L. Ed. 922; 28 S. Ct. 748. 
 
 The fact that a defendant uses a particular device to avoid infringement 
 does not of itself constitute grounds of complaint. — Rose v. Hirsh, 77 Fed, 
 469; 23 C. C. A. 246. 
 
 A mere subterfuge resorted to to avoid infringement does not avail as a 
 defense. — Rose v. Hirsh, 77 Fed. 469; 23 C. C. A. 246. 
 
 The court will look through the disguises, however ingenious, to see 
 whether the inventive idea of the original patentee has been appropriated, 
 and whether the defendant's device contains the material features of the 
 patent in suit, and will declare infringement even when those features have 
 been supplemented and modified to such an extent that the defendant may 
 be entitled to a patent for the improvement. — Crown v. Aluminum, 108 
 Fed. 845; 48 CCA. 72. 
 
 Clough V. Mfg. Co. 106 U. S. 166: and 106 U. S. 178; Consolidated v. Crosby, 
 113 U. S. 157. 
 
 When the court is convinced that a meritorious invention has been made, 
 it should not permit infringers to evade the patent on narrow and technical 
 grounds. — Cimiotti v. American, 115 Fed. 498; 53 C C. A. 230. 
 
 Proctor V. Bennis, 36 Ch. Div. 740; Machine Co. v. Murphv, 97 U. S. 120; 
 Cantrell?;. Wallick, 117 U. S. 689; Reece v. Globe, 61 Fed. 959; Blanchard v. 
 Reeves, Fed. Cas. 1,515. 
 
 One may not escape infringement by adding to or subtracting from a 
 patented device, by changing its form, or making it more or less efficient.
 
 410 THE FIXED LAW OF PATENTS § 454 
 
 while he retains its principle and mode of operation, and attains its result 
 by the use of the same or equivalent mechanical means. — Lourie v. Lea- 
 hart, 130 Fed. 122; 64 C. C. A. 456. 
 
 Sewall V. Jones, 91 U. S. 171; Coupe v. Weatherhead, 16 Fed. 673. 
 
 All the elements of the patent combination are employed with substantial 
 identity in their use, and departure appears from the letter of the claims 
 only, in the arrangement of these elements, without substantial difference 
 in the principle of operation. The policy and rules of the patent law require 
 that the patentee be protected against such evasions of the wording of a 
 claim in form of nonessential details, when the substance of the invention 
 is thus used and is unmistakably shown in the specification and claims. — 
 Columbia v. Kokomo, 143 Fed. 116; 74 C. C. A. 310. 
 
 Winans v. Denmead, 15 How. 330; Ives v. Hamilton, 92 U. S. 426; Machine v. 
 Murphy, 97 U. S. 120; Elizabeth v. Paving, 97 U. S. 126; Hoyt v. Home, 145 
 U. S. 302; Westinghouse v. Boyden, 170 U. S. 537; International v. Brammer, 138 
 Fed. 396. 
 
 There is a constant tendency by those who seek to evade the claims of a 
 patent to dwell too much on verbal refinements, and not enough on the reality 
 and substance of the things to which the language of the claim refers. This 
 tendency must be avoided in order to do justice to inventors, and it sometimes 
 must be avoided in order to protect the pubHc from too great scope of the 
 monopoly claimed by the patentee. It is true that the law requires that 
 precise invention of the patent should be described adequately in the claims, 
 and, if the patentee has claimed less than he is obviously entitled to, as 
 manifested in the specifications and drawings, he must suffer the conse- 
 quences. But this requirement of the law only makes the caution above 
 expressed the more necessary, and mere verbal refinement must not be 
 allowed to obscure the real nature of the patented invention, if it can be 
 fairly gathered from the language of the claims. — Robins v. American, 
 145 Fed. 923; 76 C. C. A. 461. 
 
 § 454. Avoidance — Impairing Efficiency. 
 
 While the appellant has avoided a mere servile copy of form, he has appro- 
 priated the substance of the Dodge invention. That in doing so he has 
 rendered inoperative the function of one groove will not suffice to relieve him 
 from the charge of infringement. — Mitchell v. Ewart, 81 Fed. 390; 26 
 C. C. A. 443. 
 
 The fact that the set of several pulleys differs, in that it is more cumber- 
 some, and involves delays, is only an ordinary feature of colorable infringe- 
 ments, which are characterized by a mere imitative capacity without the 
 spirit of invention. — Heap v. Tremont, 82 Fed. 449; 27 C. C. A. 316. 
 
 An infringer cannot evade liability for his invention by deliberately 
 diminishing its utility without changing materially its form, its chief function, 
 or its manner of operation. — Penfield v. Chambers, 92 Fed. 630; 34 C. C. 
 A. 579. 
 
 Sewing Machine v. Frame, 24 Fed. 596. 
 
 This is an instance, not infrequent in patent litigation, where the infringer 
 has sought to evade the claims of a patent, the substance of which he is 
 appropriating, by deliberately impairing the function of one element, without 
 destroving the substantial identity of structure, operation and result. — 
 King V. Hubbard, 97 Fed. 795; 38 C. C. A. 423.
 
 5 § 455-456 INFRINGEMENT 411 
 
 Sewall V. Jones, 91 U. S. 171; Coupe v. Weatherhead, 16 Fed. 673; Machine Co. 
 V. Binney, 24 Fed. Cas. 653. 
 
 § 455. Avoidance — Improving Efficiency. 
 
 Superiorit)' of quality or operation is not an avoidance of infringement. — 
 Marsh V. Seymour, 97 U. S. 348; 24 L. Ed. 963. 
 
 § 456. Avoidance — Omitting Element. 
 
 The law is well settled that there is no infringement of a patent which 
 claims mechanical powers in combination, unless all the parts have been 
 substantially used. The use of a part less than the whole is no infringement. 
 — Eames v." Godfrey, 68 U. S. 78; 17 L. Ed. 547. 
 
 Prouty I'. Ruggles, 16 Pet. 341. 
 
 Where the patent in suit covered, and the reissue limited it to, a specific 
 process ; and the alleged infringing process omitted the essential feature and 
 element of said process, there is no infringement. — California v. SchaUcke, 
 119 U. S. 401; 30 L. Ed. 471; 7 S. Ct. 391. 
 
 The fact that the defendant was able, by a skilful contrivance, to dispense 
 with one of the elements of plaintiff's claim, the plaintiff's patent not bemg 
 generic, does not make the device an infringement. — Derby v. Thompson, 
 146 U. S. 476; 36 L. Ed. 1051; 13 S. Ct. 181. 
 
 The stationary card shown at " E " in the drawing, is made in the eighth 
 claim an essential part of the mechanism described. It may be that this card 
 is unnecessary, but as Judge Wallace in his dissenting opinion in Cimiotti 
 V. Nearseal, 115 Fed. 507 said: " the patent industriously makes^the station- 
 ary cards, substantially as described, an element of the claim." — Cimiotti 
 V. American, 198 U. S. 399; 49 L. Ed. 1100; 25 S. a. 697. 
 
 Unless the defendant's device contains the elements claimed or their 
 mechanical equivalents, it is clear that the charge of infringement is not 
 made out. — Wheaton v. Norton, 70 Fed. 833; 17 C. C. A. 447. 
 
 ]\Iodfg. Norton v. Jensen, 49 Fed. 859. 
 
 McCormick v. Talcott, 20 How. 402; Vance v. Campbell, 1 Black, 427; Schu- 
 macher V. Cornell, 96 U. S. 554. 
 
 That omitting to use parts of a structure, but using the combination, does 
 not avoid infringement, see Clinton v. Hendrick, 86 Fed. 137; 29 C. C. A. 612. 
 
 This principle, however, is qualified by another principle, which is that 
 the absent element must be an essential one, and that the substitute for it 
 must not be a mechanical equivalent for it. — Dowagiac v. Minnesota, 118 
 Fed. 136; 55 C. C. A. 86. 
 
 McSherry v. Dowagiac, 101 Fed. 716. 
 
 The defendant used the combination of the patent, but claimed that one of 
 the elements necessary to the combination of the patent did not contribute 
 to the function of the machine, and thus no infringement existed in fact. 
 Held: Unnecessary to consider whether its idler wheel can be taken out and' 
 leave the machine operative minus the function of the idler. If infringement 
 thus appears, the owner of the patent cannot be denied relief, though pro- 
 tection may be limited bv the terms of the claims to such three-wheel form. 
 — Columbia v. Kokomo,'l43 Fed. 116; 74 C. C. A. 310. 
 
 Du Bois V. Kirk, 158 U. S. 58.
 
 412 THE FIXED LAW OF PATENTS § 457 
 
 It was urged that, as the infringing machine did not embody certain 
 functional advantages recited in the specifications and urged in the Patent 
 Office, infringement could not be established. Held: No doubt this func- 
 tional advantage was claimed in argument in the Patent Office, and not a 
 little made of it there. And it was also put into the specifications, where it 
 now appears, before the patent was allowed. But at the most it is merely 
 descriptive of the supposed action of the machine, and not a limitation upon 
 it, to which the inventor committed himself; there being no amendment or 
 restatement of the claims by which the invention was defined. It is the 
 mechanical combination there specified which is patented, and not the par- 
 ticular functions or advantages claimed for the different parts; and infringe- 
 ment is not escaped where there is a substantial appropriation of the mechani- 
 cal construction, even though, by slight variations, unimportant changes in 
 the mode of operation may be made, — American v. Mills, 149 Fed. 743; 
 79 C. C. A. 449. 
 
 If for any reason the defendants are enabled to dispense with one of the 
 elements of the claim, or, to speak more accurately, with one step of the 
 process, they cannot be held as infringers. — Universal v. Sonn, 154 Fed. 
 665; 83 C. C. A. 422. 
 
 As we have seen, this restraining shoulder of the annular plate is of the 
 very gist of the device. Discard it or its function in substantial form, and 
 we do not obtain the result that makes Nolan's device useful and patentable. 
 — Westinghouse v. Prudential, 158 Fed. 987; 86 C. C. A. 434. 
 
 But while the requirement of an additional passage-way may have been 
 necessary, the patentee does not make it an "element of his claims. The 
 defendant's device does not possess it, or its equivalent. Consequently, 
 while the defendant's construction may accomplish the same purpose as 
 that of the complainant's, it does not infringe. — Consolidated v. Landers, 
 610 Fed. 79; 87 C. C. A. 235. 
 
 Wright V. Yuengling, 155 U. S. 52. 
 
 A combination is not infringed unless all of its elements as they are claimed 
 are used, whether they are essential or not. — Portland v. Hermann, 160 Fed. 
 91; 87 C. C. A. 247. 
 
 Royer v. Schultz, 28 Fed. 850; Snow v. Lake Shore, 18 Fed. 602. 
 
 No device can be held to infringe a combination claim unless it employs 
 all the elements of it. — Union v. Diamond, 162 Fed. 148; 89 C. C. A. 172. 
 Cimiotti v. American, 198 U. S. 399; Brammer v. Witte, 159 Fed. 726; Port- 
 land V. Hermann, 160 Fed. 91. 
 
 § 457. Avoidance — Transposition of Parts. 
 
 The appellants have transposed the position of the parts. Do they escape 
 infringement thereby? We think not. The appellants have appropriated 
 the gist of the invention. The changes found in their device do not at all 
 affect either the principle of operation or the result. — Devlin v. Paynter, 
 64 Fed. 398; 12 C. C. A. 188. 
 
 Winans v. Denmead, 15 How. 330; Machine v. Murphy, 97 U. S. 120; Hoyt v. 
 Home, 145 U. S. 302. 
 
 The transposition of resiliency between stud and socket would surely 
 suggest itself to a mind of ordinary intelligence. Such a trivial alteration, the 
 fundamental structure of the socket member remaining unchanged, would
 
 §§ 458-459 INFRINGEMENT 413 
 
 not avoid infringement, — Consolidated v. Hays, 100 Fed. 984; 41 
 C. C. A. 142. 
 
 A transposition of parts or of motion will not negative infringement when 
 the same result is obtained in substantially the same way. — International 
 V. Bundy, 159 Fed. 464; 86 C. C. A. 494. 
 
 Consolidated v. Hays, 100 Fed. 984. 
 
 § 458. Avoidance — Miscellaneous Conditions. 
 
 Therefore it follows that, while the complainant has a title to old elements 
 as combined in his particular device, to accomplish certain results, the 
 respondents have an equal right to avail themselves of all the same elements 
 in their particular device to accomplish other special results, so long as it is 
 apparent, as is the fact in the case at bar, that what they did could not 
 justly be held to be an intended piracy under the color of apparent differ- 
 ences. — Davey v. Prouty Co. 107 Fed. 505; 46 C. C. A. 439. 
 
 That the fact that an infringer uses an inferior form of construction, so 
 long as the combination of the patent is employed, does not avoid the act, 
 see Cazier v. Mackie-Lovejoy, 138 Fed. 654; 71 C. C. A. 104. 
 
 § 459. Change of Form — Colorable. 
 
 It is a well settled principle of law, that the mere change in the form 
 of the machinery (unless a particular form is specified as the means by which 
 the effect described is produced) or an alteration in some of its essential 
 parts, or in the use of known equivalent powers, not varying essentially the 
 machine, or its mode of operation or organization, will not make the new 
 machine a new invention. It may be an improvement upon the former ; 
 but that will not justify its use without the consent of the first patentee. — 
 O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 The patentee ha^^ng described his invention and shown its principles, 
 and claimed it in that form which most perfectly embodies it, is deemed to 
 claim every form in which his invention may be copied. — Winans v. Den- 
 mead, 15 How. 330; 14 L. Ed. 717. 
 
 The property of inventors would be valueless if it were enough for the 
 defendant to say, your improvement consisted in a change of form; I have 
 not taken that, and so do not infringe. — Winans v. Denmead, 15 How. 
 330; 14 L. Ed. 717. 
 
 Upon well established principles of patent law, a change of form and not of 
 substance constitutes no defense to a bill for an infringement. — Morey v. 
 Lockwood, 75 U. S. 230; 19 L. Ed. 339. 
 
 Curt. Pat. 260, 261, 264. 
 
 If he has taken the same plan and applied it to the same purpose, not- 
 withstanding he may have varied the process of appHcation, his manufacture 
 will be substantially identical with that of the patentee. — Sewall v. Jones, 
 91 U.S. 171; 23 L. Ed. 275. 
 
 Curtis, sec. 312 ; Walton v. Potter, Web. P. C. 385, 607. 
 
 It is difficult to read the schedules of the parties in the presence of the 
 models, and resist the con\'iction that the appellant has carefully studied the 
 invention of the appellees as described in their reissue, not with any view
 
 414 THE FIXED LAW OF PATENTS §459 
 
 to its improvement, but solely for the purpose of evasion. — Hyndman v. 
 Roots, 97 U. S. 224; 24 L. Ed. 975. 
 
 No one can avoid infringement simply by means of ingenious diversities 
 of form and proportion, presenting simply the appearance of something 
 unlike the patented machine. It is well settled that a copy of the pnnciple 
 or mode of operation described in the prior patent is an infringement of it. 
 If the patentee's ideas are found in the construction and arrangement of the 
 subsequent device, no matter what may be its form, shape or appearance, 
 the parties making or using it are deemed appropriators of the patented 
 invention, and are infringers. An infringement takes place whenever a 
 party avails himself of the invention of the patentee without such a variation 
 as constitutes a new discovery. — Norton v. Jensen, 49 Fed. 859; 1 C. C. 
 A. 452. 
 
 Blanchard v. Beers, 2 Blatchf. 416; Tatham v. LeRoy, 2 Blatchf. 486; Winans 
 V. Denmead, 15 How. 343; Potter v. Schenck, 1 Biss. 518. 
 
 Yet, notwithstanding these changes and some others, the defendant 
 really has copied the substance of the inventions in different forms. In prin- 
 ciple the two machines are alike, and they accomphsh the same result. — 
 Rogers v. Mergenthaler, 64 Fed. 799; 12 C. C. A. 422. 
 
 The owner of a patent, though the claim be limited, is to be protected 
 from mere colorable changes in matter of pure form. — McDowell v. Kurtz, 
 77 Fed. 204; 23C. C.A. 119. 
 
 The substitution of one for the other in this combination, works no new 
 or different result whatever. The first claim of the patent does not name 
 " fixed " switch-tracks. The change in the mere form of the switching 
 device which the defendants have adopted is altogether immaterial. The 
 changed form embodies the invention described and claimed. There is sub- 
 stantial identity between these two coasting structures. In this class of 
 cases, we have repeatedly held that such mere formal changes are unavailing 
 to avoid infringement. — Thompson v. Second Avenue, 93 Fed. 824; 35 
 C. C. A. 620. 
 
 Winans v. Denmead, 15 How. 330; Devlin v. Paynter, 64 Fed. 398; Hillbom v. 
 Mfg. Co. 69 Fed. 958; McDowell v. Kurtz, 77 Fed. 206. 
 
 Bundy prints by pressing his record strip against the type, while defendant 
 prints by pressing the type down upon the recording strip. That the printing 
 is done by a blow delivered by Bundy 's " hammer," and by pressure only in 
 the device of the defendant, is not material. Both methods of printing were 
 well known and one is the full equivalent of the other. — Bundy v. Detroit, 
 94 Fed. 524; 36 C. C. A. 375. 
 
 Neither was it invention to cause the printing to be done by pressing tlie 
 type down upon the paper strip instead of pressing the paper strip against the 
 type. The one was the plain equivalent of the other. That defendant's 
 impression mechanism is not in the form or shape of a hammer, is of no con- 
 sequence unless the form itself is of the essence of the invention. — Bundy 
 V. Detroit, 94 Fed. 524; 36 C. C. A. 375. 
 
 Winans v. Denmead, 15 How. 330; Machine Co. v. Murphy, 97 U. S. 120. 
 
 The mere change of the location of the parts of a combination, if the parts 
 still perform the same duty, and by the same mode of operation, will not take 
 the structure out of the bounds of the patent. — Union v. Battle Creek, 
 104 Fed. 337; 43 C. C. A. 560.
 
 5 459 INFRINGEMENT 415 
 
 Northwestern v. New Haven, 28 Fed. 234; Roller Mill v. Coombs, 39 Fed. 25; 
 Knox V. Mining Co. 6 Sawy. 430; Devlin v. Paynter, 64 Fed. 398. 
 
 If, however, such change of size, form or location effect a change in the 
 principle or mode of operation, such as breaks up the relation and coopera- 
 tion of the parts, this results in certain change in the means as displaces the 
 conception, and takes the new structure outside of the patent. — Union v. 
 Battle Creek, 104 Fed. 337; 43 C. C. A. 560. 
 
 Brooks V. Fisk, 15 How. 212; Mfg. Co. v. BriU, 54 Fed. 380; Gould v. Rees, 
 15 WaU. 187. 
 
 The fact that the two machines differ slightly as to the distance from each 
 other of the intermeshing teeth cannot, we think, be very material. — 
 Krajewski v. Pharr, 105 Fed. 514; 44 C. C. A. 572. 
 
 Potts V. Creager, 155 U. S. 597; Roller-Mill Co. v. Coombs, 39 Fed. 25; Schroe- 
 der V. Brammer, 98 Fed. 880; Beach v. Box-Machine Co., 63 Fed. 597; Mfg. Co. 
 V. Beach, 18 C. C. A. 165; Westinghouse v. Power-brake Co., 170 U. S. 537. 
 
 Mere changes of the form of a device or of some of the mechanical elements 
 of a combination secured by patent will not avoid infringement, where the 
 principle or mode of operation is adopted, unless the form of the machine 
 or of the elements changed is the distinguishing characteristic of the inven- 
 tion. — National v. Interchangeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Watch Co. V. Robbins, 64 Fed. 384; New v. Be\'in, 64 Fed. 859. 
 
 Mere changes in the form of a device or of some of the mechanical elements 
 of a combination secured by a patent will not avoid infringement, where the 
 principle or mode of operation is adopted, unless the form of the machine or 
 of the elements changed is the distinguishing characteristic of the invention. 
 — Kinloch v. Western, 113 Fed. 652; 51 C. C. A. 369. 
 
 National v. Interchangeable, 106 Fed. 693; Watch Co. v. Robbins, 64 Fed. 
 384; New Departure v. Bevin, 64 Fed. 859. 
 
 It is a rule of law that one does not escape liability for infringement by 
 changing the form or dimensions of the parts of a patented combination, 
 where such change does not break up or essentially vary the principle or 
 mode of operation pervading the original invention. — Dowagiac v. Superior, 
 115 Fed. 886; 53 C. C. A. 36. 
 
 Cochrane v. Deener, 94 U. S. 787; Morey v. Lockwood, 8 Wall. 230; Elizabeth 
 V. Pavement, 97 U. S. 126; Loom Co. v. Higgins, 105 U. S. 585; Penfield v. Cham- 
 bers. 92 Fed. 630; Bundy v. Detroit, 94 Fed. 524; King v. Hubbard, 97 Fed. 795; 
 McSherry v. Dowagiac, 101 Fed. 716; Taylor v. Spindle Co. 75 Fed. 301; Na- 
 tional V. Interchangeable, 106 Fed. 693. 
 
 Mere change in the form of a device, or of some of the mechanical elements 
 of a combination, will not avoid infringement, where the principle or mode of 
 operation is adopted, except in those rare cases where the form of the im- 
 provement or of the element changed is the distinguishing characteristic of 
 the invention. — Ide v. Trorlicht, 115 Fed. 137; 53 C. C. A. 341. 
 
 National v. Interchangeable, 106 Fed. 693; Watch Co. v. Robbins, 64 Fed. 
 384; New Departure v. Bevin, 64 Fed. 859. 
 
 Note: This is a loose statement. If the changed element were a non- 
 equivalent the infringement would be avoided. 
 
 By changing the form of the parts of complainant's combination, and not 
 essentially varying the principle or mode of operation pervading the original 
 invention, defendant cannot escape infringement. — Dowagiac v. Minnesota, 
 118 Fed. 136; 55 C. C. A. 86.
 
 416 THE FIXED LAW OF PATENTS § 460 
 
 Dowaeiac v Superior, 115 Fed. 886; Cochrane v. Deener, 94 U. S. 787; Morey 
 V Lockwood 8 Wall. 230; Elizabeth v. Pavement, 97 U. S. 126; Loom Co. v. 
 Hiedns lOo'u. S. 585; Penfield v. Chambers, 92 Fed. 630; Bundy v. Detroit, 
 94 Fed 524; Ax v. Hubbard, 97 Fed. 795; McSherry v. Dowagiac, 101 Fe 1. 716; 
 Taylor v. Spindle, 75 Fed. 301; National v. Interchangeable, 106 Fed. 693. 
 
 Form, location or sequence of elements are all immaterial, unless form 
 or location or sequence is essential to the result, or indispensable, by reason 
 of the state of the art, to the novelty of the claim. — Adam v. Folger, 120 
 Fed. 260; 56 C. C. A. 540. 
 
 Winans v. Denmead, 15 How. 330; Reece v. Globe, 61 Fed. 958; Bundy v. 
 Detroit 94 Fed. 524; Extraction Co. v. Brown, 104 Fed. 345; Norton v. Jensen, 
 49 Fed.'859; Consolidated v. Crosby, 113 U. S. 157; Hoyt v. Home, 145 U. S. 302. 
 
 A valid patent monopoly cannot be evaded by such substitution or change 
 of form, except through the terms of the grant, express or implied, limiting 
 the invention to the special means and form shown in the patent. — Austin 
 V. American, 121 Fed. 76; 57 C. C. A. 330. 
 
 Mere changes in the form of a patented device, where the principle or mode 
 of operation is adopted, will not avoid infringement, unless the form of the 
 machine is the distinguishing characteristic of the invention. — Lourie v. 
 Lenhart, 130 Fed. 122; 64 C. C. A. 456. 
 
 National v. Interchangeable, 106 Fed. 693; Kinloch v. Western, 113 Fed. 659. 
 
 The making of the arm in a more bulging shape and less useful does not 
 avoid infringement. — Milner v. Yesbera, 133 Fed. 916; 67 C. C. A. 210. 
 
 Penfield v. Chambers, 92 Fed. 630; Chicago v. Bush, 2 Biss. 472; Roberts v. 
 Harnden, 2 Cliff. 506. 
 
 That a mere change of form does not avoid infringement even if the change 
 of form is a distinct improvement, see American v. Sexton, 139 Fed. 564; 
 71 C. C. A. 548. 
 
 This shaping of the packing is done deliberately by the seller, and by so 
 doing he secures all the advantages of the Bradley packing, or, at least, all 
 the advantages which can be secured by apparently inferior material. If the 
 same result was produced by forming the packing in a press constructed on 
 the same lines as the coupling, removing the packing therefrom and riveting 
 it to the jaw of the coupling, it is manifest that infringement would be estab- 
 lished. And yet, in effect, this is precisely what is done; the necessity of a 
 separate press being avoided by using the couphng for that purpose. — 
 Eccles V. Bradley, 158 Fed. 98; 85 C. C. A. 566. 
 
 It matters not that the devices may differ in form, in appearance and in the 
 manner of operation ; if they combine to do the same work in substantially 
 the same way it is enough. — Hillard v. Fisher, 159 Fed. 439 ; 86 C. C. A. 
 469. 
 
 This court has repeatedly held that mere formal changes where there is 
 substantial identity are unavailing to escape infringement. — Delaware v. 
 Shelby, 160 Fed. 928; 88 C. C. A. 110. 
 
 Mitchell V. Ewart, 81 Fed. 390; Thompson v. Second Ave., 93 Fed. 824; Smeeth 
 V. Perkins, 125 Fed. 285; Ives v. Hamilton, 92 U. S. 431; Elizabeth v. Pavement, 
 97 U. S. 137; Hoyt v. Home, 145 U. S. 302. 
 
 § 460. Change of Form — Location. 
 
 A segment has been omitted. That which remains performs the function of 
 the complete ring, perhaps not so well as if the ring had been completed.
 
 §§ 461-463 INFRINGEMENT . 417 
 
 But the impairment of the function of this hollow ring by omitting a short 
 segment will not escape infringement. — Nathan v. Howard, 143 Fed. 889; 
 75 C. C. A. 97. 
 
 King V. Hubbard, 97 Fed. 795; Winans v. Denmead, 15 How. 330. 
 
 A person making, using, or selling the patented device (a hose supporter) 
 would infringe, and he would not be permitted to escape on the plea that it 
 was intended for use on an underwaist or a belt. It follows, as a necessary- 
 corollary, that such a structure in the prior art will anticipate irrespective 
 of its connection, use or lack of use. — Parramore v. Siege l-Cooper, 143 Fed. 
 516; 74C. C. A. 386. 
 
 § 461. Change of Form — Modification. 
 
 Infringement cannot ordinarily be escaped by merely cutting in two a 
 device made in one piece, or by making integral an article formerly made in 
 two. — Standard v. Caster, 113 Fed. 162; 51 C. C. A. 109. 
 
 Bundy v. Detroit, 94 Fed. 524. 
 
 The Peckham invention is not obscured by the change, which does not 
 affect its distinguishing feature or the leading purpose thereof, — that of 
 keeping the furrow clear, — though it modifies to some extent the manner of 
 effecting the distribution of the seed in the furrow. — Dowagiac v. Superior, 
 115 Fed. 886; 53C. C. A. 36. 
 
 Electric v. LaRue, 139 U. S. 601; Cochrane v. Deener, 94 U. S. 780. 
 
 §462. Change of Form — Number of Parts. 
 
 The device goes further than to make mere formal changes in the com- 
 plainants' patent. Its deviations therefrom do not consist in the mere 
 transposition of parts, but it introduces such change in the construction of 
 parts as to avoid the elements of complainants' invention, limited as we have 
 found the same to be by the pre-existing devices. These differences, slight 
 as they may be, are, in our judgment, as great as the changes, which the 
 complainant made in adopting the former devices, and are sufficient to relieve 
 the defendant of the charge of infringement. — Vulcan v. Smith, 62 Fed. 
 444; 10 C. C. A. 493. 
 
 But the rule that changes of form do not avoid infringement has at least 
 two exceptions — when the form of the mechanical element is the distin- 
 guishing characteristic of the invention, and when the change in the form of 
 the element changes the principle or mode of operation of the combination. 
 — Jewell V. Jackson, 140 Fed. 340; 72 C. C. A. 304. 
 
 §463. Change of Material. 
 
 Where applicant claimed use of soft metal pin specifically, the use of safety 
 pins being old, not infringement to employ a hard cast iron safety pin to 
 perform same function. — Gates v. Fraser, 153 U. S. 332; 38 L. Ed. 734; 
 
 14 S. Ct. 883. 
 
 Now, the fibrous asbestos wool which the defendant employed in making 
 his sealing compound may not be produced by grinding mechanism; but it is 
 a finely di\aded fibrous material, not differing in appearance or otherwise from 
 the fibrous material of the Coddington invention. To all intents and pur- 
 poses, it is the " finely-ground fibrous material " of the patent. — Propfe v. 
 Coddington, 108 Fed. 86; 47 C. C. A. 218.
 
 418 THE FIXED LAW OF PATENTS §§464-466 
 
 § 464. Combinations — Adding Elements. 
 
 When several elements, no one of which is novel, are united in a com- 
 bination which is the subject of a patent, and these several elements are 
 thereafter united with another element into a new combination, and this 
 new combination performs a work which the patented combination could not, 
 there is no infringement. — U. S. v. Berdan, 156 U. S. 552; 39 L. Ed. 530; 
 15 S. Ct. 420. 
 
 One who appropriates a new and valuable patented combination cannot 
 escape infringement by uniting or operating those elements by means of 
 appropriate mechanical devices which differ from those which are pointed out 
 for that purpose, but which are not claimed in the patent. — Brammer v. 
 Schroeder, 106 Fed. 918; 46 C. C. A. 41. 
 
 Deering v. Harvester Works, 155 U. S. 286; City of Boston v. Allen, 91 Fed. 
 248. 
 
 § 465. Combinations — Concealment or Subterfuge. 
 
 The purpose, principle and operation of the machines are the same, and the 
 defendant escapes exact similitude of construction to the plaintiff's only by 
 a few alterations. It is not a case of using the elements of a combination 
 less than all. It is a case of using the same number of elements, and altermg 
 the form of one and not materially altering the relation of any of the others. 
 — Consolidated v. Pacific, 53 Fed. 385; 3 C. C. A. 570. 
 
 § 466. Combinations — Construction of. 
 
 While under sec. 9, ch. 45, act 1837 (see amended law sec. 4922 R. S. Act 
 1870) excessive claims do not defeat a suit, this provision cannot be applied 
 to the present case, for, unless the combination is maintained, the whole of 
 the invention fails. The combination is an entirety; if one of the elements 
 is given up, the thing claimed disappears. — Vance v. Campbell, 66 U. S. 
 427; 17 L. Ed. 168. 
 
 A combination of elements, not the equivalents of his, would be a different 
 machine, and consequently not an infringement. By his patent he appro- 
 priated to himself only as much of the field of invention which his idea 
 embraced, as the machine he described in his specification and claimed in his 
 application covered. — Wicke v. Ostrum, 103 U. S. 461 ; 23 L. Ed. 409. 
 
 A claim must be limited to the elements claimed, or their equivalents. — 
 Gage V. Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. 
 
 Water v. Desper, 101 U. S. 332; Eames v. Godfrey, 1 Wall. 78; Murray v. 
 Clayton, L. R. 10 Ch. 675; Clark v. Adie, L. R. 10 Ch. 667. 
 
 The claims of the patents sued on in this case are claims for combinations. 
 In such a claim if the patentee specifies any element as entering into the 
 combination, either directly by the language of the claim or by such a 
 reference to the descriptive part of the specification as carries such elements 
 into the claim, he makes such element material to the combination, and the 
 court cannot declare it to be immaterial. It is his province to make his own 
 claim and his privilege to restrict it. If it be a claim to a combination and be 
 restricted to specified elements, all must be regarded as material, leavmg 
 open only the question, whether an omitted part is supplied by an equivalent 
 device or instrumentality. — Fay v. Cordesman, 109 U. S. 408; 27 L. Ed. 
 979; 3 S. Ct. 236. 
 
 Water v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640.
 
 §§ 467-468 INFRINGEMENT 419 
 
 § 467. Combinations — Different Combination, Same Result. 
 
 Combinations effecting similar results by similar means, but employing 
 different precedent conditions, are not necessarily identical or equivalent. 
 — National v. Wheeler, 79 Fed. 432; 24 C. C. A. 663. 
 
 If the combination of a defendant shows a mode of operation substantially 
 different from that of the complainant, infringement is avoided even though 
 the result of the operation of each is the same. — Brammer v. Witte, 159 
 Fed. 726; 86 C. C. A. 207. 
 
 Cimiotti v. American, 198 U. S. 399; Brooks v. Fiske, 15 How. 211; Union v. 
 Battle Creek, 104 Fed. 337. 
 
 § 468. Combinations — Equivalents. 
 
 Mere formal alterations of a combination in letters patent do not con- 
 stitute any defense to the charge of infringement, as the inventor of a com- 
 bination is as much entitled to suppress every other combination of the same 
 ingredients to produce the same result, not substantially different from what 
 he had invented and caused to be patented, as the inventor of any other 
 patented improvement. Such inventors may claim equivalents as well as 
 any other class of inventors. — Rees v. Gould, 82 U. S. 187 ; 21 L. Ed. 39. 
 
 Seymour v. Osborne, 11 Wall. 555. 
 
 Whether one device is or is not an equivalent for another, is usually a 
 question of fact, and often becomes a difficult issue to decide. Grave doubts 
 were at one time entertained whether the patentee of an invention consisting 
 of a combination of old ingredients was entitled to equivalents, but it is now 
 well settled that he is just as much as the patentee of any other class of 
 inventions; but it is very important to understand what is meant by an 
 equivalent of an ingredient in such a combination. Questions of this kind 
 usually arise in comparing the machine of the defendant, in a suit for infringe- 
 ment, with that of the plaintiff, and the rule is that if the defendant omits 
 entirely one of the ingredients of the plaintiff's combination, without sub- 
 stituting any other, he does not infringe, and if he substitutes another in the 
 place of the one omitted, which is new or which performs a substantially 
 different function, or even if it was old but was not known at the date of the 
 plaintiff's patent as a proper substitute for the omitted ingredient, it does not 
 infringe. — Gill v. Wells, 89 U. S. 1 ; 22 L. Ed. 699. 
 
 Carver v. Hyde, 16 Pet. 514; Brooks v. Fiske, 15 How. 212; Stimpson, v. R. R. 
 10 How. 329; Prouty i'. Ruggles, 16 Pet. 341. 
 
 Alterations in a combination which are merely formal do not constitute a 
 defense to the charge of infringement, as the inventor of a new and useful 
 combination of old ingredients is as much entitled to claim equivalents as 
 any other class of inventors, but they cannot suppress subsequent improve- 
 ments which are substantially different from their combinations, whether 
 the new improvement consists in a new combination of the same ingredients 
 or of some newly discovered ingredient, or even of some old ingredient per- 
 forming some new function not known at the date of the letters patent as a 
 proper substitute for the ingredient withdrawn. — Gill v. Wells, 89 U. S. 
 1 ; 22 L. Ed. 699. 
 
 Taken by themselves, as separate pieces of machinery, they are not the 
 same, and the one is not an infringement of a patent for the other. — Coch- 
 rane V. Deener, 94 U. S. 780; 24 L. Ed. 139. 
 
 Curtis, sec. 332; Foster 1;. Moore, 1 Curt. C. C. 279.
 
 420 THE FIXED LAW OF PATENTS § 408 
 
 Alterations or modifications of combinations by substitution of equivalents 
 does not avoid infringement. — Fuller v. Yentzer, 94 U. S. 299; 24 L. Ed. 
 107. 
 
 A party who merely substitutes an old ingredient for one of the ingredients 
 of the patent is an infringer if the substitute performs the same function 
 as the ingredient for which it was substituted, and it appears that it was 
 well known at the date of the patent that it was applicable to that use. — 
 Imhauser v. Buerk, 101 U. S. 647; 25 L. Ed. 945. 
 
 Gill V. Wells, 22 Wall. 1, 28. 
 
 An inventor is entitled to the benefit of all the mechanical equivalents of 
 his several elements, known at the time of his invention, if used in the same 
 combination. — Wi eke v. Ostrum, 103 U. S. 461; 26 L. Ed. 409. 
 
 Clough was the first person who applied a valve regulation of any kind to 
 the combination to which he applied it ; and the first person who made such 
 combination; and he is entitled under the decisions heretofore made by this 
 court to hold as infringements all valve regulations applied to such a com- 
 bination, which performs the same office in substantially the same way as, 
 and were known equivalents for, his form of valve regulation. — Clough 
 V. Gilbert, 106 U. S. 166; 27 L. Ed. 138; 1 S. Ct. 198. 
 
 A combination may be infringed when some of the elements are employed 
 and for the others mechanical equivalents are used' which were known to be 
 such at the time when the patent was granted. — Rowell v. Lindsey, 113 
 U. S. 97; 28 L. Ed. 906; 5 S. Ct. 507. 
 
 Seymour v. Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 187; Imhauser v. 
 Buerk, 101 U. S. 647. 
 
 When complainant's claim covers a specific construction and claims as 
 an element of a combination a groove, and defendant employs an artificial 
 ridge to perform the same function, the narrowness of complainant's invention 
 precludes equivalency. — Forncrook v. Root, 127 U. S. 176; 32 L. Ed. 97; 
 8 S. Ct. 1247. 
 
 Gage V. Herring, 107 U. S. 640. 
 
 The claim is in terms, for mechanism " combined with " other mechanisms. 
 It is true that certain particular mechanism is mentioned, but it does not 
 necessarily result that the patentee intended to limit the claim to any special 
 devices, or that the law will so restrict it. — National v. American, 53 Fed. 
 367; 3C. C. A. 559. 
 
 It is a combination of five elements. The infringing device is also a com- 
 bination of five elements, and four of them, it is conceded, resemble four 
 elements of the plaintiff's combination. In the fifth element, the bell crank 
 lever acting as a toggle joint was the equivalent of the friction rollers. — 
 Consolidated v. Pacific, 53 Fed. 385; 3 C. C. A. 570. 
 
 It is urged that a combination claim composed of old elements is not in- 
 fringed by using one of its elements less than all. But the qualification must 
 be added that no equivalent be substituted for the omitted element. — 
 Consolidated v. Pacific, 53 Fed. 385; 3 C. C. A. 570. 
 
 A charge of infringement cannot be overcome by the substitution of a 
 well-known equivalent for one element in a patented combination, although 
 the result of the working of the combination as a whole may be slightly dif-
 
 § 468 INFRINGEMENT 421 
 
 ferent, especially when no new or useful result is obtained, and the only effect 
 is the production of an inferior device. — Standard v. Osgood, 58 Fed. 583: 
 7 C. C. A. 382. 
 
 The rule, prima facie, is that, while the use of equivalents for an element 
 in a combination is not lawful, yet a combination which does not include all 
 the elements does not infringe. There may be exceptions where the nature 
 of the invention is of such a primary or broad character that it is plain some 
 of the elements named are unessential; in other words, where the invention 
 is so broad that the range of equivalents wilt be correspondingly broad, 
 under the liberal construction which the courts give to such inventions. — 
 DeLoriea v. Whitney, 63 Fed. 611 ; 11 C. C. A. 355. 
 
 Miller v. Mfg. Co. 151 U. S. 207; Meter Co. v. Desper, 101 U. S. 332; Fay v. 
 Cordesman. 109 U. S. 408; Knapp v. Morss, 150 U. S. 221; Dunham v. Mfg. Co. 
 154 U. S. 103. 
 
 This is not a case of an integral thing made in parts, and then combined so 
 as to constitute but one integer, operating in the same way as if constructed 
 as a unit. In this connection it is necessary to observe the wide distinction 
 which prevails between inventions of specific devices and inventions of com- 
 binations. In the former a much wider range of equivalents is recognized. 
 In the latter the range is limited, and an element is not an equivalent unless 
 it is substantially the same thing as the patentee has described, operating 
 in the same way. We do not say what the result might be if the patentee 
 makes his description of the elements of his combination broad enough to 
 include in each or any of them an}^ kind of mechanism adapted to produce 
 the same results as a step in the operation. — Wells v. Curtis, 66 Fed. 318; 
 13 C. C. A. 494. 
 
 Rob. Pat. sec. 254; Caster Co. v. Spiegel, 133 U. S. 360. 
 
 In combinations, the doctrine of equivalents is construed most strongly 
 against him who alleges infringement, and each party is held to his own ele- 
 ment or device, or a positive and exact equivalent which performs the same 
 function in the same manner; the burden being upon the complainant to 
 show this. — Erie v. American, 70 Fed. 58 ; 16 C. C. A. 632. 
 
 To support the charge of infringement of a combination it must show use 
 substantially of the same combination, including every one of the elements, or 
 a mechanical equivalent for every one that is omitted. — Erie v. American, 
 70 Fed. 58; 16 C. C. A. 632. 
 
 One who appropriates a new and valuable patented combination cannot 
 escape infringement by uniting or operating its elements by means of mere 
 mechanical devices which differ from those which are pointed out for that 
 purpose, but which are not claimed in the patent. — National v. Inter- 
 changeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Deering: v. Harvester Works, 155 IT. S. 286; City of Boston v. Allen, 91 Fed. 
 248; Schroeder v. Brammer, 98 Fed. 880. 
 
 One who merely makes and secures a patent for a slight improvement on an 
 old device or combination, which performs the same function before as after the 
 improvement, is protected against those only who use the very device or 
 improvement he describes and claims or mere colorable evasions of it. In 
 other words, the term ^' mechanical equivalent " when applied to the inter- 
 pretation of a pioneer patent, has a broad and generous signification; but 
 where it is applied to a slight and almost immaterial improvement, in the
 
 422 THE FIXED LAW OF PATENTS § 468 
 
 progress of an art, it has a very narrow and limited meaning. — Brammer v. 
 Schroeder, 106 Fed. 918; 46 C. C. A. 41. 
 
 Adams v. Lindell, 77 Fed. 432; Stirrat v. Mfg. Co., 61 Fed. 980; McCormick v. 
 Talcott, 20 How. 402; Railway Co. v. Sayles, 97 U. S. 554. 
 
 One who claims and secures a patent for a new machine or combination, 
 thereby necessarily claims and secures a patent for every mechanical equiva- 
 lent for that device or combination, because, within the meaning of the patent 
 law, every mechanical equivalent of a device is the same thing as the device 
 itself. Moreover, in determining what is a mechanical equivalent of a given 
 device, where, as in the case at bar, form is not the essence of the invention, 
 forms and names are of little significance. The similarities and differences of 
 machines and combinations are to be determined by the offices or functions 
 which they perform, by the principles on which they are constructed, and by 
 the modes which are used in their operation. A device which is constructed 
 on the same principle, which has the same mode of operation, and whiph 
 accomplishes the same result as another by the same or by equivalent me- 
 chanical means, is the same device, and a claim in a patent of one such device 
 claims and secures the other. — Kinloch v. Western, 113 Fed. 652; 51 C. 
 C. A. 362. 
 
 Machine Co. v. Murphy, 97 U. S. 120. 
 
 The patents are not for methods, but for particular mechanisms. As such, 
 like all machine patents, they are entitled to a fair construction, and to one 
 that will fully secure to the inventor the monopoly of his real invention, 
 any device or combination which accomplishes the same result, by sub- 
 stantially the same means, will be held an invasion of that monopoly. Care 
 must be taken, however, in all cases, that we do not by an uncalled for appli- 
 cation of the doctrine of equivalents, practically give to the patentee a 
 monopoly of the function of the mechanism. This, of course, we are not 
 permitted to do, directly or indirectly. — Bryce v. National, 116 Fed. 186; 
 53 C. C. A. 611. 
 
 The use of a different, but mechanically equivalent, method or material 
 to construct some of the elements of a patented combination will not avoid 
 infringement where the principle or mode of operation is adopted, and the 
 elements, when completed, perform the functions by the same means as, or 
 by mechanically -equivalent means to, those described in the patent. — 
 Anderson v. Collins, 122 Fed. 451; 58 C. C. A. 669. 
 
 Ide V. Trorlicht, 115 Fed. 137; National v. Interchangeable, 106 Fed. 693; 
 Watch V. Robbins, 64 Fed. 384; New Departure v. Bevin, 64 Fed. 859. 
 
 The patent is granted for the combination, as " the particular means devised 
 by the inventor by which that result is attained," and the patentee is en- 
 titled to protection against any use of the same combination of elements, 
 combined in the same way, so that each element performs the same function, 
 or against substantially the same use with deviations which are merely 
 colorable. But each of these well-known elements remains open to the use 
 of subsequent inventors for a different combination for like results. — 
 Milwaukee v. Brunswick-Balke, 126 Fed. 171; 61 C. C. A. 175. 
 
 Electric v. Hall, 114 U. S. 87. 
 
 He has devised an organism by which the desired result can be attained 
 without the employment of this essential constituent of the patented con- 
 struction; and to deny him the right to make, use, or vend that organism 
 would be to accord to the appellees a monopoly, not only of the means which 
 they described and claimed, but also of the end which they effected, even
 
 § 469 INFRINGEMENT 423 
 
 when achieved by means materially different. Such a monopoly, of course, 
 is not obtainable under the patent laws. — Mahoney v. Jenkins, 138 Fed. 
 404; 70 C. C. A. 662. 
 
 If no one can be held to infringe a patent for a combination unless he uses 
 all the parts of the combination and the same identical machineiy as that of 
 the patentee, then will no patent for a combination ever be infringed; for 
 certainly no one capable of operating a machine could be incapable of adopt- 
 ing some formal alteration in the machine or of substituting mechanical 
 equivalents. It is true no one infringes a patent for a combination who does 
 not employ all the ingredients of the combination ; but if he employs all the 
 ingredients, or adopts mere formal alterations, or substitutes for one in- 
 gredient another which performs substantially the same function as the one 
 withdrawn, he does infringe. — International v. Brammer, 138 Fed. 396 ; 
 71 C. C. A. 633. 
 
 We have had frequent occasion in this court to pass upon the equivalency 
 of mechanical devices, and we have never held that so slight a change (a mere 
 change of form) as that indicated above in one of the parts of the machine 
 would deprive the owner of the benefit of his patent. — American v. Sexton, 
 139 Fed. 564; 71 C. C. A. 548. 
 
 Columbus V. Robbins, 64 Fed. 384; McSherry v. Dowagiac, 101 Fed. 716; 
 McCormick v. Aultman, 69 Fed. 371; Bundv v. Detroit, 94 Fed. 524; Dowagiac v. 
 Superior, 115 Fed. 886; Eames v. Worcester, 123 Fed. 67. 
 
 § 469. Combinations — Identity. 
 
 In order to constitute an infringement, the whole combination must be 
 used, because he claims not the various parts, but the whole combination 
 together. — Case v. Brown, 69 U. S. 320; 17 L. Ed. 817. 
 
 Where the device of the patent in suit showed a duplication of parts, viz, 
 a double time movement to control the lever which controls the dog, and the 
 infringing device uses the single combination, such omission does not avoid 
 infringement. — Yale v. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 
 884. 
 
 Every element of the combination must be used as patented, or the entire 
 result is changed, and the machine sought to be held as infringing is a different 
 one. — Jones v. Munger, 49 Fed. 61; 1 C. C. A. 158. 
 
 Vance v. Campbell, 1 Black, 427. 
 
 We find the patent to be for a combination of well-known devices, but 
 producing a new and useful result, and entitled to letters patent. But while 
 the law recognizes the patentability of such combination of known devices, 
 it patents the entire combination of the elements and not any single element 
 of it, or any combination containing any other or different elements. The 
 patent must be considered to be for the entire apparatus, and in order to 
 claim damage for infringement, it is necessary to show that each and every 
 element, or its equivalent, entered into respondents' machine. — Jones v. 
 Munger, 49 Fed. 61 ; 1 C. C. A. 158. 
 
 Loom Co. V. Higgins, 105 U. S. 591; Gill v. WeUs, 22 Wall. 1; Collar Co. v. 
 Van Deusen, 23 Wall. 538; Fuller v. Yentzer, 94 U. S. 297. 
 
 The appellers' expert in effect testified, and we think with accuracy, that there 
 had not previously existed any combination including each of the elements 
 of either claim, and, accepting this statement, it follows that, if the con- 
 struction of the appellees does embody those elements in the same com-
 
 424 THE FIXED LAW OF PATENTS §§ 470-472 
 
 bination, it is an infringement. — McMichael v. Ruth, 128 Fed. 706; 03 
 C. C. A. 304. 
 
 National v. American, 53 Fed. 367. 
 
 Where it appears from the proceedings in the Patent Office and a considera- 
 tion of the state of the art that a patent is not a pioneer patent, its claims 
 must be limited in their scope to the actual combination of essential parts 
 as shown, and cannot be construed to cover other combinations of elements, 
 of different construction and arrangements. In such cases there should be 
 identity of means and identity of operation combined with identity of result, 
 in order to constitute infringement. — Greene v. Buckley, 135 Fed. 520; 
 68 C. C. A. 70. 
 
 Kokomo V. Kitselman, 189 U. S. 19. 
 
 Note: Taken alone and by itself, this statement is too broad. Between a 
 pioneer patent and mere servile improvements there is a field of legitimate 
 invention which requires the highest inventive genius and which is entitled 
 to equivalency in proportion to the quality of invention disclosed. 
 
 § 470. Combinations — Impairing Efficiency. 
 
 The tubular coupler of the appellant is employed strictly as a coupler 
 and wholly fails to perform the unitary construction of the appellee, what- 
 ever other advantage the appellant may derive from its use. — Peerless v. 
 White, 118 Fed. 827; 55 C. C. A. 502. 
 
 Sewall V. Jones, 91 U. S. 171. 
 
 Note: Clearly this is a dangerous pronouncement ; and it will be noted that 
 Judge Acheson vigorously dissents. 
 
 §471. Combinations — Improvements. 
 
 The plaintiff's patent being a patent for a combination of old devices, the 
 question of the infringement depended upon whether or not the changes from 
 that combination adopted in defendant's device, were merely changes in 
 form, or such as arose from the substitution of equivalents. The defendant 
 had the right to make improvements upon the plaintiff's combination, and 
 defendant's patent cannot be held to be an infringement if it presents a 
 new combination of the elements that are found in plaintiff's patent, or 
 substitutes for one or more of the same a new ingredient, performing a new 
 function. — Singer Mfg. Co. v. Brill, 54 Fed. 380; 4 C. C. A. 374. 
 
 § 472. Combinations — Old Elements, New Functions. 
 
 Actual inventors of a combination of two or more ingredients, are entitled 
 though the ingredients are old, if they produce a new and useful result, to 
 restrain others from using the same. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 Pitts V. Whiteman, 2 Story, 619; Ames v. Howard. 1 Sumn. 487. 
 
 Valid letters patent undoubtedly may be granted for an invention which 
 consists entirely in a new combination of old elements or ingredients, provided 
 it appears that the new combination of the ingredients produces a new and 
 useful result, but the rule is equally well settled that the invention in such a 
 case consists merely in the new combination, and that a suit for infringement 
 cannot be maintained against a party who constructs or uses a substantially 
 different conibination, even though it includes the exact same elements or 
 mgredients, if the combination is, in fact, new and useful and substantially
 
 473 
 
 INFRINGEMENT 423 
 
 different from the one which preceded it. — Fuller v. Yentzer, 94 U. S. 288; 
 24 L. Ed. 103. 
 
 Gill r. Wells, 22 WaU. 14. 
 
 Dissenting: Strong, Waits, Miller and Bradley. 
 
 If, however, one invents and secures a patent for a new combination of eld 
 mechanical elements which first performs a useful function, he is protected 
 against all machines and combinations which perform the same function by 
 equivalent mechanical devices to the same extent and in the same way as 
 one who invents and patents a machine or composition of matter of like 
 primary character. — Brammer v. Schroeder, 106 Fed. 918; 46 C. C. A. 41. 
 
 § 473. Combinations — Omitting Element. 
 
 The patent is for a combination and consists in arranging the different 
 portions and combining them in the manner stated in the specification for 
 the purpose of producing a certain effect. None of the parts referred to are 
 new, and none are claimed as new, nor is any portion of the combination 
 less than the whole claimed as new, or stated to produce any given result. 
 The end in view is proposed to be accomplished by the union of all, arranged 
 and combined together in the manner described. The use of any two of 
 these parts only, or of two combined with a third, which is substantially 
 different, in form or in the manner of its arrangement or construction with 
 others, is therefore not the thing patented. It is not the same combuiation 
 if it substantially differs from it in any of its parts. — Prouty v. Ruggles, 
 16 Pet. 336; 10 L. Ed. 985. 
 
 The patent is for a combination. None of the parts are new or claimed as 
 new. The use of any two of these parts only, or of two combined with a 
 third which is substantially different in form or in the manner of its arrange- 
 ment' and connection with the others, is therefore not the thing patented. 
 It is not the same combination, if it substantially differs from it m any of 
 its parts. — Stimpson v. Railroad, 10 How. 329; 13 L. Ed. 441. 
 
 Prouty V. Ruggles, 16 Pet. 341; Carver v. Hyde, 16 Pet. 513. 
 
 The rule is, that if a combination has, as here, three different known parts, 
 and the result is proposed to be accomplished by the union of all three parts, 
 arranged with reference to each other, the use of two of these parts only, 
 combined with a third, which is substantially different in the manner 
 of its arrangement and connection with the others, is not the same com- 
 bination, and not infringement. — Brooks v. Fiske, 15 How. 212; 14 L. 
 Ed. 665. 
 
 A claim for a combination of mechanical devices or parts, is not infringed 
 by one who uses a part of the combination. — McCormick v. Talcott, bl 
 U.S. 402; 15 L. Ed. 930. 
 
 The omission of a material element of a combination avoids it. — Vance 
 V. Campbell, 66 U. S. 427; 17 L. Ed. 168. 
 
 The law is well settled that there is no infringement of a patent which 
 claims mechanical powers in combination, unless all of the parts have been 
 substantially used. The use of the part less than the whole is no infringement. 
 — Eames v. Godfrey, 68 U. S. 78; 17 L. Ed. 547. 
 
 Prouty V. Ruggles, 16 Pet. 341. 
 
 Where the defendant in constructing his machine omits entirely one of the 
 ingredients of the plaintiff's combination without substituting any other, he
 
 426 THE FIXED LAW OF PATENTS § 473 
 
 does not infringe, and if he substitutes another in the place of the one oniitted, 
 which is new or performs a substantially different function, or if it is old, 
 but was not known at the date of plaintiff's invention as a proper substitute 
 for the omitted ingredient, then he does not infringe. — Rees v. Gould, 82 
 U.S. 187; 21 L. Ed. 39. 
 
 Carver v Hyde, 16 Pet. 514; Vance v. Campbell, 1 Black, 427; Roberts v. 
 Hemdon 2 CM. 504; Mabie v. Haskell, 2 Cliff. 511; Brooks v. Fiske, 15 How 
 219- Stimpson v. R. R. 10 How. 329; Prouty v. Ruggles, 16 Pet. 341; Barrett v. 
 HaU, 1 Mas. 477; Howe v. Abbott, 2 Story, 194. 
 
 It is undoubtedly the law, that if the subject of a patent is a combination 
 of several processes, parts or devices, the use of any portion of the com- 
 bination less than the whole cannot be infringement. There may indeed 
 be a patent for a combination of many parts, and at the same time for an 
 arrangement of some of the parts constituting another combination, but 
 still a part of the larger. Yet if there be no patent for the constituents, 
 they are open to the public for use in combination, provided all the elements 
 of the patented combination be not employed. — Garratt v. Siebert, 131 
 U. S. cxxvi, app. ; 21 L. Ed. 956. 
 
 It is substantially for a combination of the material parts of the entire 
 machine, and no one can be said to infringe it who does not use the entire 
 combination. — Brown v. Guild, 90 U. S. 181; 23 L. Ed. 161. 
 
 The rights of a patentee for a mere combination of old ingredients are not 
 infringed unless it appears that the alleged infringer made, used or sold the 
 entire combination. — Fuller v. Yentzer, 94 U. S. 288; 24 L. Ed. 103. 
 
 Gould V. Rees, 15 Wall. 194; Prouty v. Ruggles, 16 Pet. 341; Vance v. Camp- 
 bell, 1 Black, 427. 
 
 Dissenting: Strong, Waite, Miller, Bradley. 
 
 Omission of an essential element avoids infringement. — Dunbar v, 
 Meyers, 94 U. S. 187; 24 L. Ed. 34. 
 
 Gould V. Rees, 15 Wall. 194; Prouty v. Ruggles, 16 Pet. 341; Vance v. Camp- 
 bell, 1 Black, 427; Gill v. Wells, 22 Wall. 28. 
 
 If more or less than the whole of his ingredients are used by another, such 
 party is not liable as an infringer, because he has not used the invention or 
 discovery patented. With the change of elements the identity of the product 
 disappears. — Schumacher v. Cornell, 96 U. S. 549; 24 L. Ed. 676. 
 
 Vance v. Campbell, 1 Black, 427. 
 
 It is a well known doctrine of patent law, that the claim of a combination 
 is not infringed if any of the material parts of the combination are omitted. 
 It is equally well known that if any one of the parts is only formally omitted, 
 and is supplied by a mechanical equivalent, performing the same office and 
 producing the same result, the patent is infringed. — Union v. Desper, 
 101 U. S. 332; 25 L. Ed. 1024. 
 
 It is not the same combination if it differs from it in any of its parts. — 
 McMurray v. Mallory, 111 U. S. 97; 28 L. Ed. 365; 4 S. Ct. 375. 
 Prouty V. Ruggles, 16 Pet. 336. 
 
 The omission of an essential element in a specific claim, without equiva- 
 lency avoids infringement. — Blake v. San Francisco, 113 U. S. 679; 28 
 L. Ed. 1070; 5 S. Ct. 692.
 
 § 473 INFRINGEMENT 427 
 
 It is clear that if the patent is to be construed as a combination, the appel- 
 lant does not infringe, because he does not use one of the elements of the 
 combination. — Voss v. Fisher, 113 U. S. 213; 28 L. Ed. 975; 5 S. Ct. 511. 
 
 Prouty V. Ruggles, 16 Pet. 336; Gould v. Rees, 15 WaU. 187; Rowell v. Lindsay, 
 113 U. S. 97. ^' 
 
 The patent being for a combination, there can be no infringement unless the 
 combination is infringed. — Rowell v. Lindsay, 113 U. S. 97; 28 L. Ed. 906; 
 5 S. Ct. 507. 
 
 Prouty V. Ruggles, 16 Pet. 336; Stimpson v. R. E. 10 How. 329; Eames v. 
 Godfrey, 1 Wall. 78; Seymour v. Osborne, 11 Wall. 516; Dunbar v. Meyers 94 
 U. S. 187; Fuller v. Yentzer, 94 U. S. 288. 
 
 The defendant does not use the same combination, and employs no device 
 as an equivalent and substitute for the omitted element. It is not therefore 
 Hable as an infringer. — Yale v. Sargent, 117 U. S. 373; 29 L. Ed. 950; 6 
 S. Ct. 931. 
 
 Meter v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640. 
 
 When the device of the patent in suit shows duplicate parts, viz. a double 
 time movement to control the lever which controls the dog, and the infringing 
 device uses the single combination, such omission does not avoid infringe- 
 ment. —Yale V. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 884. 
 
 In conformity with the ruling of the Supreme Court in the case of Corn 
 Planter Patent, 23 W^all. 181, it was right, we think, to construe the claims of 
 the patent in question as embracing the devices shown in the specifications, 
 each claim being regarded as including such devices and combination as a 
 necessary element to meet the requirements of the general terms in which it 
 is expressed. When the claims are so construed, it may be said of each of 
 them, in the language of that case: " The claim thus limited is considerably 
 narrowed in its operation. It is substantially for a combination of the 
 material parts of the entire machine, and no one can be said to infringe 
 it who does not use the entire combination." This, of course, does not exclude 
 the doctrine of equivalents. — Illinois v. Robbins, 52 Fed. 215 ;' 3 C. C. A. 42. 
 
 It is well settled that the omission in the alleged infringing device, of 
 an element named in a combination claim of a patent said to be infringed is a 
 complete defense to the charge of infringement. — Brown v. Stilwell, 57 
 Fed. 731; 6 C. C. A. 528. 
 
 Rowell V. Lindsay, 113 U. S. 97. 
 
 It is well settled that, in order to constitute the infringement of a combina- 
 tion, it must appear that the alleged infringing device included every element 
 of the combination as claimed. It is immaterial that the elements claimed 
 in the patent of plaintiff and omitted in the defendant's device are not of the 
 essence of the real invention. — Kinzel v. Luttrell, 67 Fed. 926 ; 15 C. C. A. 
 82. 
 
 Electric v. Hall. 114 U. S. 87; Voss v. Fisher, 113 U. S. 213; Gage v. Herring, 
 107 U. S. 640; Water v. Desper, 101 U. S. 332; Dunbar v. Meyers, 94 U. S. 187; 
 Reedy v. Scott, 23 Wall. 352. 
 
 But the appellant is met here by the unquestioned rule that the absence 
 from a device or construction, that is alleged to infringe, of a single essential 
 element of a patentable combination of old elements, is fatal to the claim of 
 infringement. — Murphy v. Excelsior, 76 Fed. 965 ; 22 C. C. A. 658. 
 
 Building Co. v. Eustis, 65 Fed. 804; Hailes v. VanWormer, 20 Wall. 353; 
 Bragg V. Fitch, 121 U. S. 478.
 
 428 THE FIXED LAW OF PATENTS § 473 
 
 The absence, from a device that is alleged to infringe a patented combina- 
 tion of old elements, of a single essential element of that combination, is 
 fatal to the claim of infringement. — Adams Elec. Ry. v. Lindell, 77 Fed. 
 432; 23 C. C. A. 223. 
 
 Hailes v. VanWormer, 20 Wall. 353; Bragg v. Fitch, 121 U. S. 478; Building 
 Co. V. Eustis, 65 Fed. 804; Murphy v. Excelsior, 70 Fed. 491. 
 
 " There is no infringement of a patent which claims mechanical powers in 
 combination, unless all the parts have been substantially used." Eames v. 
 Godfrey, 1 Wall. 78. A combination of the mechanical parts of an entire 
 machine is not infringement, except by the use of the entire combination. 
 Brown v. Guild, 23 Wall. 181. — Carter v. Hanes, 78 Fed. 346; 24 C. C. A. 
 128. 
 
 The defendant ought not to escape because it does not use subordinate or 
 unimportant elements of the combinations described in other claims, which 
 were undoubtedly omitted from this claim that the inventor might more 
 perfectly secure the essential elements of his invention. — Mast v. Dempster, 
 82 Fed. 327; 27 C. C. A. 191. But see 177 U. S. 485. 
 
 Mfg. Co. V. Wharton, 28 Fed. 189; Tondeur v. Stewart, 28 Fed. 561; Coupler v. 
 Pratt, 70 Fed. 622. 
 
 While it is true that the machine used by the appellant brings together 
 several of the old devices which formed part of the Streat combination, still 
 it is also true that it omits other important parts thereof, and consequently 
 there is no infringement. — American v. Streat, 83 Fed. 700; 28 C. C. A. 18. 
 
 Schumacher v. Cornell, 98 U. S. 549; Palmer v. Corning, 156 U. S. 342. 
 
 The combination is not infringed unless all of the elements of the combina- 
 tion are found in the infringing device. — St. Louis v. National, 87 Fed. 885; 
 31 C. C. A. 265. 
 
 The new Jensen machine manifestly does not infringe, as it does not con- 
 tain all the elements of the combination patent of Norton, or their mechanical 
 equivalents. — Norton v. Jensen, 90 Fed. 415; 33 C. C. A. 141. 
 
 Prouty V. Ruggles, 16 Pet. 337; Stimpson v. Railroad, 10 How. 329; Eames v. 
 Godfrey, 1 Wall. 78; Seymour v. Osborne, 11 Wall. 516; Dunbar v. Meyers, 94 
 U. S. 187: Fuller v. Yentzer, 94 U. S. 298; Merrill v. Yeomans, 94 Fed. 568; Meter 
 Co. V. Desper, 101 U. S. 332; Miller v. Brass Co. 104 U. S. 350; Rowell v. Lindsay, 
 113U. S. 97. 
 
 Plaintiff's patent being for a combination, it necessarily follows that there 
 cannot be any infringement unless the defendant's elevator contains all of 
 the elements of the combination in plaintiff's patent, or their mechanical 
 equivalent. — Overweight v. Improved, 94 Fed. 155; 36 C. C. A. 125. 
 
 Norton v. Jensen, 90 Fed. 415; DeLoriea v. Whitney, 63 Fed. 611. 
 
 The absence from a device that is alleged to infringe a patented combina- 
 tion of a single element of that combination is fatal to the claim of infringe- 
 ment. — National v. Interchangeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Adams v. Lindell, 77 Fed. 432. 
 
 Nothing in the law of patents is better settled than the rule that a claim 
 for a combination is not infringed if any one of the described and specified 
 elements is omitted, without the substitution of anything equivalent thereto. 
 — Pittsburg V. Pittsburg, 109 Fed. 644; 48 C. C. A. 580. 
 
 Water-Meter v. Desper, 101 U. S. 332; Weatherhead v. Coupe, 147 U. S. 322; 
 Wright V. Yuengling, 155 U. S. 47.
 
 § 474 
 
 INFRINGEMENT ,, 429 
 
 It IS well settled that there is no infringement if any one of the material 
 parts of the combination is omitted, and that a patentee will not be heard 
 to deny the materiality of any element included in his combination claim 
 
 — Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. 
 
 Vance v. Campbell, 1 Black, 427; Meter v. Desper, 101 U. S. 337; McClain v 
 Ortmayer, 141 U. S. 423. 
 
 The nonuse of any specific element of a combination claim or its equiva- 
 lent avoids infringement. — American v. Cimiotti, 123 Fed. 869- 59 C C 
 A. 357. ' 
 
 Water-Meter v. Desper, 101 U. S. 332; Weatherhead v. Coupe, 147 U S 322- 
 Wright V. Yuengling, 155 U. S. 47. t , ^- o. o^^, 
 
 "While the parts of the last are separable, the invention is unitary, and 
 incapable of being divided into patentable parts; and therefore the use of 
 the heel part or of the fore part cannot be said to be a use of a part of the 
 Clark invention within the reasonable meaning of the license. — Wrieht v 
 Fitz, 133 Fed. 394; 66 C. C. A. 456. 
 
 As one element of appellees' combination has thus been replaced by a 
 device that is materially different, the appellant's lantern does not infrmge 
 
 — Keystone v. Spear, 136 Fed. 595; 69 C. C. A. 369. 
 
 Since at least one element of each of the combinations secured by the claims 
 is wanting, they cannot be held to infringe. The absence from a device that 
 is alleged to infringe a patented combination of a single mechanical element of 
 that combination is fatal to the claim of infringement. — Mallon v. Gregg 
 137 Fed. 68; 69 C. C. A. 48. 
 
 Adams v. Lindell, 77 Fed. 432; National v. Interchangeable, 106 Fed. 693. 
 
 The combination is an entirety. If one of its elements is omitted, it ceases 
 to exist. It is well settled, therefore, that the omission of any one ingredient 
 of the combination covered by the claim averts any charge of infringement 
 
 — Central v. Coughlin, 141 Fed. 91 ; 72 C. C. A. 93. 
 
 Prouty V. Draper, 16 Pet. 3-36; Black Diamond v. Excelsior, 156 U. S. 611. 
 
 The absence from a combination that is alleged to infringe of a single 
 essential element is fatal to the claim for infringement. — Brammer v. 
 Witte, 159 U. S. 726; 86 C. C. A. 207. 
 
 Cimiotti v. American, 198 U. 3. 399; Adams v. Lindell, 77 Fed. 432: National 
 V. Interchangeable, 106 Fed. 693. 
 
 § 474. Contributory — Furnishing Material. 
 
 That the complainants were entirely within the boundary of their patent 
 rights in permitting the use of their invention only in connection with 
 wire sold by themselves is not an open question in this court. — Rupp v 
 Elliott, 131 Fed. 730; 65 C. C. A. 544. 
 
 Heaton-Peninsular v. Eureka, 77 Fed. 288: Bement v. National, 186 U. S. 70; 
 Cortelyou v. Lowe, 111 Fed. 1005; Victor v. The Fair, 123 Fed. 424; Tubular v 
 O'Brien, 93 Fed. 200; Edison r. Pike, 116 Fed. 833. 
 
 It is, th?"efore, the use of such powder which constitutes infringement 
 and when a manufacturer of acid phosphates sells a manufacturer of baking 
 powder a barrel of granular acid phosphate the presumption is not unfair that 
 he expects it to be used for baking powder. — Rumford v. Hygienic, 159 
 Fed. 436; 86 C. C. A. 416. Reversed, 215 U. S. 156.
 
 430 THE FIXED LAW OF PATENTS §§ 475-476 
 
 § 475. Contributory — Intent. 
 
 The intention to assist in infringement must be shown affirmatively and 
 cannot be inferred from the mere fact that the articles are in fact used in the 
 patented combinations or may be so used. But where the article can only be 
 used in the patented combination, the inference and intent of the maker and 
 seller is certain, and the right of the patentee to injunction ought, we think, 
 to be equally certain. — Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. 
 A. 107. 
 
 Thomson-Houston v. Kelsey, 75 Fed. 1005. 
 
 Of course, if it made or sold scales having peculiar provision for the in- 
 tended incorporation therein of a valid patented device of the appellee, it 
 would be liable as a contributor, if the expected incorporation should there- 
 after be made by another. But if it makes and sells scales having simply 
 adaptations for a proper adjustment, such as was known in the art, it would 
 not be liable if another person should of his own volition put into the scales 
 a form of adjustment patented by the appellee. — Standard v. Computing, 
 126 Fed. 639; 61 C. C. A. 541. 
 
 § 476. Contributory — Making Elements. 
 
 What contributory infringement is, and why it should be enjoined, was 
 clearly shown in Wallace v. Holmes, 9 Blatchf. 65, the earliest case in this 
 country upon the subject, and upon which the subsequent cases of contrib- 
 utory infringement rest. The wiUingness of the defendant in this case 
 to aid other persons in any attempts which they may be disposed to make 
 towards infringement is also apparent. It sufficiently appears from the de- 
 fendant's advertisements and affidavits that it was ready to sell to any and 
 all purchasers, irrespective of their character as infringers. A proposed 
 concert of action with infringers, if they present themselves, is fairly to be 
 inferred from the obvious facts of the case; and an injunction order is the 
 proper remedy against wrongful acts which are proposed, or are justly to be 
 anticipated. — Thomson-Houston v. Kelsey, 75 Fed. 1005; 22 C. C. A. 1. 
 
 We would not be understood as deciding that the defendant company has 
 the right to manufacture the knuckles which form a part of the complainant's 
 device, and to sell them indiscriminately to all persons who see fit to buy 
 them ; for, clearly, such is not the law. We have no doubt that the defendant 
 would be liable as an infringer if it so happened that the knuckles by it made 
 and sold should be used by the purchasers in the construction of complete 
 couplers such as are described in the complainant's patents. Wallace v. 
 Holmes, Fed. Cas. No. 17,100. Therefore, if the defendant continues to 
 manufacture the coupling head or knuckles, and keeps them in stock, it must 
 see to it that they are sold, for the purpose of repairing the patent coupling 
 device, to persons or corporations who have acquired the right to make and 
 use them for that purpose. — Shickle v. St. Louis, 77 Fed. 739 ; 23 C. C. 
 A. 433. 
 
 The principle governing infringement of combination patents by furnishing 
 a necessary element in the combination is applicable to the case at bar. To 
 make or sell a single element may be quite an innocent act, for a combination 
 is not infringed except by uniting all of the necessary elements. But " to 
 make or sell a single element with the intent that it shall be united to the 
 other elements, and so complete the combination is infringement." Rob. 
 Pat. sec. 924, and cases cited. Judge Shepley stated the rule quite clearly 
 in Saxe v. Hammond, Fed. Cas. No. 12,411, when he said: 
 
 " Different parties may all infringe by respectively making or selling, each 
 of them, one of the elements of a patented combination, provided these
 
 § 476 INFRINGEMENT 431 
 
 separate elements are made for the purpose and with the intent of their 
 being combined by a party having no right to combine them. But the mere 
 manufacture of a separate element of a patented combination, unless such 
 manufacture be proved to have been conducted for the purpose and with the 
 intent of aiding infringement, is not in and of itself infringement." — Heaton 
 V. Eureka, 77 Fed. 288; 25 C. C. A. 267. 
 
 Wallace v. Holmes, 9 Blatchf. 65; Holly v. Machine Co. IS Blatchf. 327, 4 Fed. 
 74; Traverser. Beyer, 26 Fed. 450; Willis v. McCullen, 29 Fed. 641; Alabastine v . 
 Payne, 27 Fed. 559; Celluloid v. American. 30 Fed. 437; Boyd v. Cherry, 50 Fed. 
 279; Supply Co. v. McCready, 4 B. & A. 588; Morgan v. Albany, 152 U. S. 425; 
 Wilson V. Simpson, 9 How. 109. 
 
 It is well settled that where one makes and sells one element of a com- 
 bination covered by a patent with the intention and for the purpose of bring- 
 ing about its use in such a combination, he is guilty of contributory infringe- 
 ment and is equally liable to the patentee with him who in fact organizes 
 the complete combination. — Thomson-Houston v. Ohio, 80 Fed. 712; 26 
 C. C. A. 107. 
 
 Wallace v. Holmes, Fed. Cas. 79; Tie Co. v. Simmons, 106 U. S. 89; Heaton v. 
 Eureka, 77 Fed. 288; Bowker v. Daws, 3 Fed. Cas. 1070; Richardson v. Noyes, 
 20 Fed. Cas. 723; Traverse v. Beyer, 26 Fed. 450; Willis v. McCuUen, 29 Fed. 641; 
 Alabastine v. Payne, 27 Fed. 559; Celluloid v. American, 30 Fed. 437; Morgan v. 
 Albany, 152 U. S. 425. 
 
 They make and sell pumps in all the essential respects hke that of the 
 patent. They do not, indeed, make the lower cylinder but they manufacture 
 pumps to be used in tubular wells, the tube and valve placed therein supply- 
 ing the lower cylinder and valve of the patent. Their pumps are inoperative 
 and useless unless so constructed, the case presented is therefore one of 
 contributory infringement. — Red Jacket v. Davis, 82 Fed. 432; 27 C. C. 
 A. 204. 
 
 Wallace v. Holmes Fed. Cas. 17,100; Renwick v. Pond, Fed. Case, 11,702. 
 
 It would seem clear enough that the judge who granted this injunction 
 made no mistake in holding that the making and selling these filters, adapted 
 to and intended as they were, for no other use than filtering beer or similar 
 fluids, should be held as contributing to such use by brewers, and as standing 
 on the same liability as the parties actually using them. — Loew v. German 
 American, 107 Fed. 949; 47 C. C. A. 94. 
 
 Heaton-Peninsular v. Eureka, 77 Fed. 288; Edison v. Peninsular, 101 Fed. 
 831; Thomson-Houston v. Kelsey, 75 Fed. 1005. 
 
 If the defendant constructed and sold an essential part of the infringing 
 structure for the purpose of enabling another person to infringe the patent 
 by adding something else to make the entire infringing article, it made itself 
 a contributory infringer to, and liable for, the infringement. And we have no 
 doubt that this was the fact. The casings without bottoms which the de- 
 fendant made and sold were good for nothing else. Their form and charac- 
 teristics plainly indicated their purpose. The case is not like one where the 
 thing made is also adapted to use in other waj'-s. It would be wholly inad- 
 missible to shut out the manufacture or sale of things adapted to a proper 
 and lawful use. That would interfere with the rights and privileges of the 
 public. But it has been held that, even in that case if it were proven that the 
 thing, although adapted to other uses, was nevertheless intended by the 
 seller to go into, and contribute to, the infringement by another, the furnisher 
 could not escape the consequences of the infringement. — Canda v. Michi- 
 gan, 124 Fed. 486; 61 C. C. A. 194. 
 
 Heaton v. Eureka, 77 Fed. 288; Edison v. Peninsular, 95 Fed. 669.
 
 432 THE FIXED LAW OF PATENTS § 476 
 
 He who makes and sells one or more elements of a patented combination, 
 with the intention and for the purpose of bringing about its or their use 
 in an infringing combination, is guilty of contributory infringement, and is 
 equally liable with him who in fact organizes and uses the complete com- 
 bination. — Heekin v. Baker, 138 Fed. 63; 70 C. C. A. 559. 
 
 Wallace v. Holmes, Fed. Cas. 17,100; Heaton v. Eureka, 77 Fed. 288; 
 Thomson-Houston v. Ohio, 80 Fed. 712; Red Jacket v. Davis, 82 Fed. 432; Loew 
 V. German, 107 Fed. 949. 
 
 They have infringed the process of Johnson because they suppUed the 
 apparatus adapted to employ Johnson's process with intent that the plant 
 should be or would be operated with that process. It was therefore guilty 
 of contributing to the infringement. — Johnson v. Foos, 141 Fed. 72; 72 
 C. C. A. 105. 
 
 Heaton v. Eureka, 77 Fed. 288; Thomson-Houston v. Ohio, 80 Fed. 712. 
 
 The arrangement of the different parts was therefore of the essence of 
 the invention, and the Foos Company had a legal right to continue to make 
 and sell attrition mills and other parts of the mechanism which were old, 
 provided only that they did so with no purpose to contribute to the plans 
 of one intending an infringement by combining the parts. — Johnson v. 
 Foos, 141 Fed. 73; 72 C. C. A. 105. 
 
 Heaton v. Eureka, 77 Fed. 288; Thomson-Houston v. Ohio, 80 Fed. 712; 
 German v. Loew, 103 Fed. 303; Loew v. German, 107 Fed. 949. 
 
 On ample evidence, the court below found that most of the sales of Leeds 
 & Cathn records were knowingly made by the plaintiff in error to enable 
 the owners of Victor Talking Machines to reproduce such musical pieces as 
 they wished by the combination of Leeds & Catlin records with said machines. 
 Upon these facts it is clear that the Leeds & Catlin Company have made and 
 sold a single element of the claims of the Berliner patent with the intent that 
 it should be united to the other element and complete the combination ; and 
 this is infringement. — Leeds v. Victor, 154 Fed. 58; 83 C. C. A. 170. 
 
 Heaton v. Eureka, 77 Fed. 297; Cortelyou v. Lowe, 111 Fed. 1005. 
 
 Plaintiff in error seeks to avoid that result by asserting that the records 
 under consideration are but temporary, perishable, and unpatented parts of 
 the patented combination, and therefore under Morgan v. Albany, 152 U. S. 
 425, free to be manufactured and sold by anyone. This contention is not 
 supported by the evidence. Disk records are fragile (i. e. brittle and easily 
 broken) but they are not perishable, (i. e. subject to decay by their inherent 
 qualities, or consumed by a few uses or a single one). Neither are they 
 temporary, i.e., not intended to endure; on the contrary we find them 
 capable of remaining useful for an indefinite period. — Leeds v. Victor, 154 
 Fed. 58; 83 C. C. A. 170. 
 
 The doctrine of contributory infringement has never been applied to a 
 case where the thing contributed is one of general use, or suitable to a variety 
 of other uses, especially where there is no definite purpose that the thing 
 sold shall be employed with others to infringe a patent right. Rumford v. 
 Hygienic, 148 Fed. 866. But this plaintiff in error is shown to have manu- 
 factured and sold records for the express purpose of supplying users of 
 Victor machines; nor are such records staple articles of commerce. Cortel- 
 you V. Johnson, 145 Fed. 935. — Leeds v. Victor, 154 Fed. 58 ; 83 C. C. A. 170.
 
 § 477 INFRINGEMENT 433 
 
 § 477. Contributory — Rules. 
 
 General rule by Taft, J. 
 
 It being established that defendant is offering for sale articles, intending 
 them to be used in combinations which, if unlicensed by complainant, 
 would be infringements of complainant's patents, we think that it is the duty 
 of the defendant to see to it that such combinations which it is intentionally 
 inducing and promoting shall be confined to those which may be lawfully 
 organized. We are unable to see why any different rule shoiild be applied 
 in such a case from that applicable to a case in which a defendant makes a 
 patented machine to order. He may make such a macliine upon the order 
 of the patentee or a licensee, but not otherwise. Upon him is the peril of a 
 mistake as to the lawful authority of him who gives the order. So, he may 
 knowingly assist in assembling, repairing, and renewing a patented combina- 
 tion by furnishing some of the needed parts ; but, when he does so, he must 
 ascertain, if he would escape liability for infringement, that the one buying 
 and using them for this purpose has a license, express or implied, to do so. 
 What we have said has application only to cases in which it affirmatively 
 appears that the alleged infringer is offering the parts with the purpose that 
 they shall be used in the patented combination. — Thomson-Houston v- 
 Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Underlying principles stated by Judge Taft. 
 
 From the earhest times, all who take part in a trespass, either by actual 
 participation therein or by aiding and abetting it, have been held to be 
 jointly and severally hable for the injury inflicted. There must be some 
 concert of action between him who does the injury and him who is charged 
 with aiding and abetting, before the latter can be held liable. When that 
 is present, however, the joint liability of both the principal and the accom- 
 plice has been invariably enforced. If this healthful rule is not to apply to 
 trespass upon patent property, then, indeed, the protection which is prom- 
 ised by the constitution and laws of the United States to inventors is a poor 
 sham. Many of the most valuable patents are combinations of non-pat- 
 entable elements, and the only effective mode of preventing infringement 
 is by suits against those who, by furnishing the parts w^hich distinguish the 
 combination, make it possible for others to assemble and use the combination, 
 and w'ho, by advertisement of the sale of such parts and otherwise, inten- 
 tionally solicit and promote such invasions of the patentee's rights. — Thom- 
 son-Houston V. Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Morgan v. Envelope Co. 152 U. S. 425 explained and distinguished (Taft). 
 
 The Morgan-Envelope Co. case, so far from departing from the doctrine 
 of contributory infringement, expressly recognizes it and the authorities 
 in which it is announced and enforced. The court held, however, that the 
 doctrine of contributory infringement could not apply in a case in which 
 the claim of the patent embraces a machine and something to be treated 
 thereby, which is perishable in its nature, and the alleged infringer furnishes 
 the latter element to be used with the machine and consumed. Whether 
 this holding is really a limitation upon the doctrine of contributory infringe- 
 ment, or is to be regarded only as in effect deciding that such combinations 
 are impossible in a patent, may admit of question. — Thomson-Houston v. 
 Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Heaton v. Eureka, 77 Fed. 288. 
 
 It does appear that defendant is offering for sale articles that can be used 
 only in combinations covered by complainant's claims. This is an effort 
 to secure a concert of action by which the combinations of oomplainant's
 
 434 THE FIXED LAW OF PATENTS §477 
 
 patents may be assembled. If successful, infringement will follow ; hence 
 the preliminary steps which are intentionally taken to bring about the 
 injury may be enjoined. — Thomson-Houston v. Ohio, 80 Fed. 712; 26 
 C. C. A. 107. 
 Wallace v. Holmes, 29 Fed. Cas. 79. 
 
 Infringement is the unlawful making or selling or using of a patented in- 
 vention. Contributory infringement is " the intentional aiding of one person 
 by another in the unlawful making or selling or using of the patented in- 
 vention ; " and this is usually done by making or selling a part of the pat- 
 ented invention with the intent and purpose of so aiding. The essence of 
 contributory infringement lies in concerting or planning with others in an 
 unlawful invasion of the patentee's rights. — Goodyear v. Jackson, 112 Fed. 
 146; 50C. C. A. 159. 
 
 Howson, Contrib. Inf. Pat. 1; Thomson-Houston v. Kelsey, 72 Fed. 1016; 
 Thomson-Houston v. Ohio, 78 Fed. 139; Wallace v. Holmes, 9 Blatchf. 65; Ren- 
 wick V. Pond, 10 Blatchf. 39; Saxe v. Hammond, 1 B. & A. 629; Richardson v. 
 Noyes, 2 B. & A. 398; Schneider v. Pountney, 21 Fed. 399; Traverse v. Beyer, 26 
 Fed. 450; Snyder v. Bunnell, 29 Fed. 47; Celluloid v. American, 30 Fed. 437; 
 Singer v. Springfield, 34 Fed. 393; Schneider v. Missouri, 36 Fed. 582; Heaton v. 
 Eureka, 77 Fed. 288. 
 
 The intent and purpose that the element made and sold shall be used in 
 a way that shall infringe the combination in which it is an element consti- 
 tutes the necessary concert of action between him who furnished the single 
 part and he who actually does the injury by the assembling and using of all 
 the parts in such a way as to be an infringement. This principle runs through 
 all the cases upon contributory infringement. — Bullock v. Westinghouse, 
 129 Fed. 105; 63 C. C. A. 607. 
 
 Heaton v. Eureka, 77 Fed. 288; Saxe v. Hammond, Fed. Cas. 12,411; Wallace 
 V. Holmes, 9 Blatchf. 65; Thomson-Houston v. Kelsey, 75 Fed. 1005; German- 
 American V. Loew, 103 Fed. 303, affd. 107 Fed. 949; Snyder v. Bunnell, 29 Fed. 
 47; Thomson-Houston v. Ohio, 80 Fed. 712. 
 
 It is the sale of material adapted to the infringing use, with the intent and 
 purpose that it shall be so used, which constitutes contributory infringement. 
 It is the intent and purpose to aid and assist in bringing about an infringe- 
 ment which is the essence of the tort. — Rupp v. Elliott, 131 Fed. 730; 
 65 C. C. A. 544. 
 
 Loew V. German- American, 107 Fed. 949; Thomson-Houston v. Ohio, 80 Fed. 
 712. 
 
 The majority of the court (Coxe and Townsend JJ.) is of the opinion that 
 the decree at bar pushes the doctrine of contributory infringement to its 
 extreme limits. The doctrine originated in a desire to secure to a patentee 
 complete protection in all the rights granted to him by the patent, but it 
 was confined to those rights; it went no farther. One who sold an element of 
 a patented combination, which could not be used except in an infringing 
 combination or device, was not permitted to reap the benefits of such sale. 
 He did not directly infringe, but he promoted the infringement of others by 
 putting in their hands a device which could only be used in violation of the 
 patent. When confined to articles, whether covered by the patent or not, 
 which are made for the express purpose of inducing infringement and are 
 not intended for any legitimate use, the doctrine of contributory infringe- 
 ment is logical, just and salutary. But we doubt the wisdom of extending 
 it to the ordinary commodities of life, used in connection with a patented 
 machine, because the patentee sells or hcenses the machine upon the condi- 
 tion that he alone is to furnish these commodities. Care should be taken
 
 § 478 INFRINGEMENT 435 
 
 that the courts, in their effort to protect the rights of patentees, do not 
 invade the just rights of others, engaged in legitimate occupations, by- 
 creating new monopolies not covered by patents and by placing unwarrant- 
 able restrictions upon trade. We incline to the opinion that the line should 
 be drawn to include those articles which are either parts of a patented com- 
 bination or device or which are produced for the sole purpose of being so 
 used and to exclude the staple articles of conamerce. — Cortelyou v. Johnson, 
 145 Fed. 933; 76 C. C. A. 455. 
 
 The true inquiry is whether the owner of a patented combination, the 
 elements of which are durable, unbroken, and in good repair, may buy from 
 the patentee one specimen of a single element, from an outsider an indefinite 
 number of identical specimens of the same element, and keep and use them 
 all, under cover of the word " substitution; " it further appearing that the 
 element so procured and used is useful and commercially known only in 
 respect of said combination. — Leeds v. Victor, 154 Fed. 58; 83 C. C. A. 170. 
 
 Thomson-Houston v. Kelsey, 75 Fed. 58; Chaffee v. Belting Co. 22 How. 223. 
 
 § 478. Contributory — Miscellaneous Rules. 
 
 When it is or is not infringement to supply or to use fully discussed with 
 cases. — Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 500; 14 S. Ct. 627. 
 
 That a manufacturer who sold ink to be used in a patented device, the 
 device being sold with restrictions that it be used only with ink made by 
 the owner of the patent and notice of such restriction being printed on the 
 bottom of such device; that such ink manufacturer having no other notice 
 than that communicated to a selling agent who took the ink order and who 
 did not communicate such notice to his princij^als; and that filling such 
 order, and not entering into the manufacture and sale of ink to be so used 
 with the patented device, is not contributory infringement, see Cortelyou v. 
 Johnson, 207 U. S. 196; 52 L. Ed. 167; 28 S. Ct. 105. 
 
 The decree dismissing the bill against the Lowell Light & Power Company 
 was clearly right. It sold the current which it generated to the Peninsular 
 Company. That current was as well adapted for use in one mode of distribu- 
 tion as in another and was adapted equally well for furnishing power as for 
 illuminating purposes. — Edison v. Peninsular, 101 Fed. 831 ; 43 C. C. A. 479. 
 
 That one who designs and constructs an infringing machine for others, 
 under contract and pay for his ser\'ices, is a contributory infringer, see Trent 
 V. Risdon, 102 Fed. 635 ; 42 C. C. A. 529. 
 
 That where a sale constituting contributory infringement is solicited by 
 the complainant, said complainant is not in a position to charge defendant 
 with injury, see Cortelyou v. Johnson, 145 Fed. 933; 76 C. C. A. 455. 
 
 But the purchaser of the No. 78 machine acquired no right to infringe the 
 patentee's right to manufacture said combination known as No. 79. When 
 tiiese defendants therefore, supplied said attachment and added it to said 
 No. 78 machine, and therefore converted it into a No. 79 machine b\^ uniting 
 it to the patented attachment which made up the complete combination 
 of No. 79, they infringed said right of manufacture of the patented combina- 
 tion, with which complainant had not parted by the sale of a No. 78 machine. 
 
 The well settled rule is that the purchase of a patented article from the 
 patentee acquires the absolute right to the unrestricted use of said article; 
 that by the sale it passes beyond the limit of the monopoly. But it would
 
 436 THE FIXED LAW OF PATENTS §§ 479-481 
 
 be perversion of this rule to say that such a purchaser may use a portion 
 of said article for the purpose of enabling the owner of a machine sold by 
 the patentee, without said portion to construct a patented combination which 
 he is not licensed to manufacture or use. — National v. Grobet, 153 Fed. 905; 
 82 C. C. A. 651. 
 
 The evidence warrants the finding that in at least one instance defendants 
 sold rolls to be used in one of complainant's Pianolas after it had been in- 
 formed by the purchaser that his instrument contained the notice (pro- 
 hibiting such purchase) . . . injunction was properly issued. — iEolian Co. 
 V. Juelg Co. 155 Fed. 119; 86 C. C. A. 205. 
 
 § 479- Corporations — Common Carriers. 
 
 ^Vhen one engages in such public business it is of no consequence whether 
 the means or instruments whereby it is conducted are patented or not. It 
 is the business that is regulated. A patent secures title to the thing patented 
 and its use, just as the law secures title to other description of property. 
 The owTier need not apply his property of either description to such public 
 employment, but if he does, the employment itself will be subject to the 
 rules which the law has prescribed for its government, without respect to 
 the means or instrument by which it is conducted. — Delaware & A. Tel. v. 
 Delaware, 50 Fed. 677; 2 C. C. A. 1. 
 
 Defendant was sued as infringer and set up its duty as a common carrier 
 and disclosed the ownership of the alleged infringing cars. On petition by 
 the owners, they were allowed to intervene and defend. — Standard Oil Co. 
 V. Southern, 54 Fed. 521 ; 4 C. C. A. 491. 
 
 § 480. Corporations — Joint Stock. 
 
 It does not appear that the statutes of New York require that the president 
 and treasurer of a joint-stock association should be a shareholder therein, 
 and there is no proof in the record that defendant is, or ever was, a share- 
 holder or associate in such association. Held: that suit could not be main- 
 tained against such officer for infringement on authority of Tyler v. Gallo- 
 way, 13 Fed. 477. — National v. Stolts, 135 Fed. 534; 68 C. C. A. 84. 
 
 § 481. Corporations — OflEicers of. 
 
 It is well settled that a mere workman or servant who makes, uses or 
 vends for another, and under his immediate supervision, a patented article, 
 is not liable in an action at law for damages. This rule is an apparent excep- 
 tion to the general principle of law which makes all who participate in a tort 
 of misfeasance principals, and liable for damages therefor; and we do not 
 think it should be so extended as to exempt from liability the general man- 
 ager of a business which infringes upon the exclusive right of a patentee. — 
 Graham v. Earl, 92 Fed. 155; 34 C. C. A. 267. 
 
 Creamer v. Fry, 68 Fed. 201; Lightner v. Brooks, Fed. Gas. 8,344. 
 
 It is sufficient to say that a director's liability to an injunction does not 
 conclusively establish his liability in an action at law for damares, and, 
 conversely, that his liability in an action at law does not conclusively es- 
 tablish that he may properly be enjoined or ordered to account for profits. 
 We are of opinion, that by the general principles of law, and by analogy with 
 other courts, a director of a corporation, who, as director, by vote or other- 
 wise, specifically commands ths subordinate agents of the corporation to 
 engage in the manufacture and sale of an infringing article, is liable indi\'id- 
 ually in action at law for damages brought by the owner of the patent so
 
 §481 INFRINGEMENT 437 
 
 infringed. As with other infringers, it is immaterial whether the director 
 knew or was ignorant that the article manufactured and sold, did infringe 
 a patent. We think that the request was sufficiently explicit to require the 
 judge to charge the jury that a defendant who directed the infringing ma- 
 chines should be manufactured and put upon the market, and that their 
 sale should be pushed, was not reheved from habihty by reason of the fact 
 that he was acting as a director of a corporation, or in its behalf. — National 
 V. Leland, 94 Fed. 502; 37 C. C. A. 372. 
 
 Mitchell V. Harmony, 13 How. 115; Pol. Tort. 5 ed. 190; Weir v. Bell, 3 Exch. 
 Div 238; Brown r. Lent, 20 Vt. 529; Wilson r. Peto, 6 Moore 47; Power Co. r. 
 Allen, 120 Mass. 252; Peck v. Cooper, 112 111. 192; Weir v. Bamett, 3 Exch. Div. 
 32; Amy v. Supervisors, 11 Wall. 136; Ferguson v. Earl, 9 Clark. & F. 251; 
 Belknap v. Schild. 161 U. S. 10; National r. Boston, 156 U. S. 502; (reversing) 
 Nickel V. Worthington, 13 Fed. 392. 
 
 Note: On the question of UabiUty of the directors and officers of a cor- 
 poration, Brown, D. J., dissents. This rule of the first circuit is contrary to 
 the rule well estabhshed in the second circuit, and also in a number of the 
 other circuits. It is doubtful whether an officer of a corporation per se is 
 personally liable unless the conduct of such corporation or such officer is 
 such as to constitute an open, personal and flagrant invasion of an established 
 and known right. 
 
 We have no doubt, if there is infringement, that Lamb (an officer of the 
 defendant, the inventor and assignor of the patent in suit, and formerly 
 with complainant) should be held to be a contributor to it. — Lamb v. Lamb, 
 120 Fed. 267; 56 C. C. A. 247. 
 
 With respect to the matter of infringement, the defendants North and 
 Steele are not shown to have been individually guihy of any infringing act. 
 There is therefore no excuse for joining them as parties, unless it be that 
 they were offending officers of the corporation, and this is no excuse. It 
 may be, however, that the complainant mistakenly supposed the officers were 
 active participants in the infringement, and has been disappointed in the 
 proofs. However this may be, the bill was properly dismissed as to them, 
 and so far the decree of the circuit court will be affirmed, with cosjs of both 
 courts to those defendants. — Western v. North, 135 Fed. 79; 67 C. C. A. 
 553. 
 
 The appellee company, a corporation, can act only through its officers and 
 agents. We find nothing in the record to show that the appellee Deknatel 
 acted bevond the ordinary scope of his office. No cause of action against 
 him is made out. — Cazier v. Mackie-Lovejoy, 138 Fed. 654; 71 C. C. A. 104. 
 
 Inasmuch as it does not appear that the defendant Kerman has any con- 
 nection with the infringement, except as an officer of said corporation, the 
 bill should be dismissed as to him with costs. — Scott v. Fisher, 145 Fed. 91o; 
 76 C. C. A. 447. 
 
 Hutter V. De Q. Bottle, 128 Fed. 283. 
 
 That officers of a corporation are not personally liable as tort feasors in 
 damages and profits when the corporation received the benefit of their acts, 
 wholly regardless of the inequitable conduct of such officers, see McSherry v. 
 Dowagiac, 160 Fed. 94S: SO C. C. A. 26. 
 
 The bill prays, as usual, an injunction and account against both the Ameri- 
 can Loom Co.'and the officer referred to. The circuit court dismissed the bill, 
 and the complainant has appealed to us. So far as the officer of the re-
 
 438 ' THE FIXED LAW OF PATENTS §§482-484 
 
 spondent corporation is concerned, the case is not brought within the rule 
 of National v. Leland, 94 Fed. 502. Therefore, as to him, the final decree 
 will provide that the bill be dismissed ; and, as he has been brought in as one 
 against whom substantial relief is asked, he will recover his costs in the 
 circuit court. — Draper v. American, 161 Fed. 728; 88 C. C. A. 588. 
 
 § 482. Corporations — Miscellaneous Holdings. 
 
 As a corporation cannot absolve itself from liability without the consent 
 of the legislature, its liability is fixed by the acts of persons using the cor- 
 porate name with the assent of the corporate authorities. — Railroad v. 
 Winans,58U.S.31; 15 L. Ed. 27. 
 
 Beman v. Rufford, 1 Simon N. S. 550; Winch v Ry. 13 L. & E. 506." 
 
 § 483. Defenses — Anticipation. 
 
 For further treatment of this subject the titles Abandonment, Anticipation, 
 Defenses and Invention should be examined. It is not possible, without undue 
 repetition, to assemble all of the rulings under this title. 
 
 Letters patent, though not set up in the answer, may be received in evi- 
 dence to show the state of the art and to aid in the construction of the plain- 
 tiff's claim, though not to invalidate the claim on the ground of want of 
 novelty when properly construed. — Grier v. Wilt, 120 U. S. 412; 30 L. Ed. 
 712; 7 S. Ct. 718. 
 
 Vance v. Campbell, 66 U. S. 427; Railroad v. Dubois, 79 U. S. 47; Brown v. 
 Piper, 91 U. S. 37; Eachus v. Broomall, 115 U. S. 429. 
 
 Where defendant obtained his idea from the patent in suit he is none the 
 less entitled to claim anticipation by setting up a prior patent, especially 
 when such prior device appears to show full anticipation of his own. — 
 Hoff V. Iron Clad, 139 U. S. 326; 35 L. Ed. 179; 11 S. Ct. 580. 
 
 Defendant may show that the invention claimed was patented or described 
 in some printed publication (not before the American Patent was granted 
 — nor before the application for it was filed) but before the patentee's sup- 
 posed invention or discovery thereof. — Clark v. Willimantic, 140 U. S. 481 ; 
 35L. Ed. 521; 11 S. Ct. 846. 
 
 U. S. R. S. 4920. 
 
 § 484. Defenses — Miscellaneous. 
 
 It is not easy to perceive why the defendant who uses a patented machine 
 should not have the benefit of a like presumption in his favor, arising from 
 a like investigation of the originality of his invention, and the judgement 
 of the public officers, that his machine is new and not an infringement of 
 the patent previously granted to the plaintiff. It shows at least that the 
 defendant has acted in good faith, and is not a wanton infringer. — Corning 
 V. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 Reversed in Blanchard v. Putnam, 8 Wall. 420; Reaffirmed in Ransoms v. 
 Hyatt, 69 Fed. 148. 
 
 We are not at all satisfied that, in equity, the defendant can be permitted 
 to set up the defense of non-infringement; while it makes no attempt by 
 cross bill or even in the answer to show that the agreements were obtained 
 by fraud, surprise or imposition. — Eureka v. Bailey, 78 U. S. 488; 20 L. Ed. 
 209. 
 
 Defendants were innocent infringers. When they discovered the fact they 
 purchased a legal title to the patent for their territory. Held: that such
 
 § 484 INFRINGEMENT 439 
 
 purchase converted their act into a legal right and was equivalent to an 
 original lawful purchase or manufacture of the machine. — Eunson v. Dodge 
 85U. S. 414; 21 L. Ed. 766. 
 
 When the thing patented is an entirety, consisting of a separate device 
 or of a single combination of old elements incapable of division or separate 
 use, the respondent cannot make good the defense in question by proving 
 that a part of the entire invention is found in one prior patent, printed pub- 
 lication or machine and another part in' another, and so on indefinitely, 
 and from the whole or any given number expect the court to determine the 
 issue of novelty adversely to the complainant. 
 
 Common justice forbids such a defense, as it would work a virtual repeal 
 of so much of the Patent Act as gives to inventors the right to a patent 
 consisting of old elements, when the combination itself is new and produces 
 a new and useful result. New elements in such a patent are not required, 
 and if such a defense were allowed, not one patent of the kind in a thousand 
 of modern date could be held valid. Nor is such a defense consistent with 
 the regulations enacted by Congress in respect to the procedure in litigations 
 in respect to patent rights. — Parks v. Booth 102 U. S. 96; 26 L. Ed. 54. 
 
 Imhauser v. Buerk, 101 U. S. 647. 
 
 The contention that the device of the patent sued on was not successful, 
 where the failure appears to have been due to other defects in the machine 
 will not be regarded as important. — Gordon v. Warder, 150 U. S. 47; 37 
 L. Ed. 992; 14 S. Ct. 32. 
 
 Although the original machine was wanting in accuracy of operation and 
 could not always be depended on, the machine did practical work. It was 
 an operative machine, and demonstrated to the world the practicability 
 and utility of the invention. It matters little that there was a lack of mathe- 
 matical accuracy, and certainly the defect affords no defense here. — Rogers 
 t;.Mergenthaler,64Fed. 799; 12C.C. A. 422. 
 
 The patent in suit specified " chamotte " as a specific, required element to 
 the compound. The defendant contended that " chamotte " was merely 
 one form of fire-clay, and as the use of fire-clay for the process of the patent 
 was old the claim was bad. Held: Inasmuch as the term " fire-brick " if 
 used in the patent would not have sufficiently identified the peculiar product 
 to enable one skilled in the art to produce the patented product, but would 
 have obliged him to experiment with the various materials known under 
 said name, we think the patentee was justified in the use of said word; that 
 it may even have been necessary to a full disclosure of his alleged invention ; 
 and that, in view of the evidence, the court correctly found that fire-brick 
 was not necessarily the equivalent of chamotte. — Panzl v. Battle Island, 
 138 Fed. 48; 70C. C. A. 474. 
 
 It is urged on us that the complainant made no commercial use of the 
 patented device; but, utility and patentabihty being otherwise established, 
 we are not required to investigate the excuse given by complainant for non- 
 user. — Draper V. American, 161 Fed. 728; 88 C. C. A. 588. 
 
 It is objected that no machine, conforming to the specification of the 
 first patent, was ever used or put upon the market. During the life of his 
 monopoly, a patentee is under no obligation to use or place upon the market 
 a device or machine embodying his invention. — Lewis v. Premium, 163 Fed. 
 950; C. C. A. 
 
 Continental v. Eastern, 210 U. S. 405.
 
 440 THE FIXED LAW OF PATENTS §§ 485-486 
 
 § 485. Division or Union of Parts or Elements. 
 
 It does not void infringement to make an element of the patent infringed 
 integral with another part. — Capital v. National, 70 Fed. 709; 17 C. C. A. 
 
 355. 
 
 Approving, 53 Fed. 367. 
 
 One may not escape infringement by the mere joinder of two elements into 
 one integral part. If the united parts affect the same result, in substantially 
 the same way as the separate parts before the union, the change is colorable. 
 — Bundy v. Detroit, 94 Fed. 524; 36 C. C. A. 375. 
 
 McDonald v. Whitney, 24 Fed. 600; Ballard v. McCluskey, 58 Fed. 880; Dish 
 Co. V. Sandy, 60 Fed. 285. 
 
 That subdividing a part or combining two parts in one without change of 
 function is not ordinarily invention, see Kalamazoo v. Duff, 113 Fed. 264; 
 51 C. C. A. 221. 
 
 Bundy v. Detroit, 94 Fed. 524; Sessions v. Gould, 49 Fed. 855. 
 
 That forming an article in two parts which, under the patent was made in 
 one piece, does not avoid the infringement, see Kahn v. Starrels, 135 Fed. 
 532; 68 C. C. A. 82. 
 
 Lepper v. Randall, 113 Fed. 627. 
 
 Neither the joinder of two elements into one integral part accomplish- 
 ing the purpose of both and no more, nor the separation of one integral 
 part into two, together doing precisely or substantially what was done by 
 the single element, will evade a charge of infringement. This principle is 
 even more applicable when the change made relates to mere matter of form 
 not of the essence of the invention. — Nathan v. Howard, 143 Fed. 889; 
 75 C. C. A. 97. 
 
 Bundy v. Detroit, 94 Fed. 524; Dowagiac v. Brennen, 127 Fed. 150; Winans v. 
 Denmead, 15 How. 330. 
 
 The mere joinder of two elements into one integral part or the separation 
 of one part into two may be an infringement if the change in the structure 
 accomplishes the same results in substantially the same way. — Dunlap v. 
 Willbrandt, 151 Fed. 223; SO C. C. A. 575. 
 
 Of course there are cases in which, in determining whether a subsequent 
 device infringes, it is unimportant whether it is made in two pieces instead 
 of three, or whether a member is mechanically attached to the remainder 
 of the structure or made integral with it. They are, however, inapplicable 
 to a case in which the very divisibility into parts or in which the particular 
 method of attachment constitutes the law of the structure or is declared 
 or appears to be of the essence of the supposed invention. — Dunlap v. 
 Willbrandt, 151 Fed. 223; 80 C. C. A. 575. 
 
 Clough V. Barker, 106 U. S. 166; Standard v. Caster, 113 Fed. 162; Mabie v. 
 Haskall, 2 Cliff. 507. 
 
 § 486. Duplication. 
 
 If the inventor has sufficiently described and pointed out his improvement 
 to meet the requirement of the patent law, then he is not to be deprived 
 of the benefit of this feature because, by a duplication of his wheels, this 
 advantage can be obtained to a greater degree. Appellant cannot escape 
 liability as an infringer by a mere duplication of the combination. That is a
 
 § 487 INFRINGEMENT 441 
 
 mere carrying forward of his idea, duplicating the parts, doing the thing in 
 identically the same way, with better results. — Goshen v. Bissell, 72 Fed. 
 67; 19C. C. A. 13. 
 
 Roberts v. Ryer, 91 U. S. 150; Belding v. Challenge, 152 U. S. 107. 
 
 It seems clear to us that Anderson took the principle of Bonnette's in- 
 vention, and merely doubled the parts. It is well settled that the mere 
 doubling of parts to produce the same result does not prevent infringement, 
 even though it may involve tributary invention. — Bonnette v. Koehler, 82 
 Fed. 428; 27 C. C. A. 200. 
 
 The defendant's spike point embodies all that was of value in the Goldie 
 device, and the mere duplication of the point does not enable the defendants 
 to evade the charge of infringement. — Diamond v. Goldie, 84 Fed. 972; 
 28 C. C. A. 589. 
 
 Hoyt V. Home, 145 U. S. 302. 
 
 There is, moreover, a class of cases to which we cannot broadly apply the 
 rule that results which may be gained by a device are protected although 
 not foreseen by the patentee; in other words, cases in which the rule of 
 " double use," as it is often called, does not apply in behalf of the inventor. 
 They all turn on the fact that, under peculiar circumstances, the application 
 to some particular purpose of an element used generally throughout the arts 
 or an improvement in various details as in the present case, amounts to 
 invention, on account of the particular end accomplished, although the pat- 
 ent issues for the device, and not for the process, product, or result. Or- 
 dinarily, such inventions are of a limited or low order, and must be restricted 
 to the express purposes pointed out by the inventor, or they obstruct the 
 advance of the beneficial arts, rather than assist it. — Davey v. Prouty Co. 
 107 Fed. 505; 46 C. C. A. 439. 
 
 Electric v. LaRue, 139 U. S. 601; Watson v. Stevens, 15 Fed. 757; Consoli- 
 dated V. West End, 85 Fed. 664; Electric v. Fuller, 59 Fed. 1005. 
 
 § 487. Evidence of — Acts of Defendant. 
 
 The conduct of defendant, by way of evasive pleading and testimony 
 and unsatisfactory answer to interrogatories, evidences infringement. — 
 Agawam v. Jordan, 74 U. S. 583 ; 19 L. Ed. 177. 
 
 Infringement by defendant is evidence as against him of the utility of the 
 thing patented. — Gandy v. Main, 143 U. S. 582; 36 L. Ed. 272; 12 S. Ct. 
 598. 
 
 Ingenuity displayed in the evasion of the salient feature of an invention 
 and in concealing the same as an element in a subsequent application will 
 be considered favorably in determining novelty. — Hoyt v. Home, 145 U. S. 
 302; 36 L. Ed. 713; 12 S. Ct. 922. 
 
 Winans v. Denmead, 56 U. S. 330. 
 
 Actions often speak louder, and frequently more truthfully than words. 
 It is not impossible that the reason why the appellees are not using the old 
 devices they plead is that the improvements described in this patent have 
 made them useless and unmerchantable. If this is not so, they can 
 abandon the improvements of these patentees, and go back to the devices 
 they plead. — Griswold v. Harker, 62 Fed. 389; 10 C. C. A. 435. 
 
 Apparently defendants used the patented device, denied infringement, 
 and refused to disclose the exact use and workings of the device. Held:
 
 442 THE FIXED LAW OF PATENTS §§ 488-490 
 
 The course of defendants naturally subjects them to unfavorable comment, 
 and throws a certain suspicion on the device, which it is impossible to en- 
 tirely cast aside. But this circumstance cannot influence the judgment of 
 the court. Its duty still remains to decide these cases simply upon the 
 evidence presented. — Goodyear v. Spaulding, 110 Fed. 393; 49 C. C. A. 88. 
 Note: True, in this case, the court did so decide; but I think that if the 
 question had been a very close one, the conduct of the defendant would have 
 unconsciously led the court against him. 
 
 The persistency with which the defendant clings to the vertical rotatable 
 plug (the device of the patent in suit) furnishes one of the principal reasons 
 which leads us to reject the defense of non-patentability. — Empire v. Sears, 
 160 Fed. 668; 87 C. C. A. 556. 
 
 § 488. Evidence of — Burden. 
 
 The burden is upon plaintiff to establish both the allegation of invention 
 and that of infringement. — Mitchell v. Tilghman, 86 U. S. 287; 22 L. Ed. 
 125. 
 
 Seymour v. Osborne, 11 Wall. 538. 
 
 The burden of proof of infringement is upon the complainant. — Price v. 
 Kelly, 154 U. S. 669; 26 L. Ed. 634; 14 S. Ct. 1208. 
 
 § 489. Evidence of — Expert. 
 
 Expert witnesses on both sides have been examined also upon the issue 
 of infringement, but they differ so widely in opinion that their testimony 
 affords the court but httle aid in determining the question, which, after all, 
 must depend chiefly upon the comparison of the descriptive portions of the 
 two specifications. — Mitchell v. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 Hill V. Thompson, 1 Web. P. C. 232; Turner v. Winter, 1 Web. P. C. 77. 
 
 § 490. Evidence of — Function. 
 
 On a legal construction of this claim, anything which does not possess this 
 function and this action, no matter to what extent in other particulars it 
 may answer its cause, does not infringe it. — Eppler v. Campbell, 86 Fed. 141 ; 
 29 C. C. A. 616. 
 
 That the defendant's meter and the meter of the Youngs patent may 
 effect the same result is not determinative of the question of infringement. 
 — Pittsburg V. Pittsburg, 109 Fed. 644; 48 C. C. A. 580. 
 
 Water-Meter v. Desper, 101 U. S. 332; Westinghouse v. Brake Co. 170 U. S. 
 537. 
 
 That their apparatus has the capacity of readjusting the position of the 
 packer in the well, and resetting it above or below its original position, is 
 not conclusive of the question of infringement. — Masseth v. Larkin, 119 
 Fed. 171 ; 56 C. C. A. 167. 
 
 O'Reilly v. Morse, 15 How. 62; Westinghouse v. Brake Co. 170 U. S. 537. 
 
 The element of " a ^^Tapping mechanism " in appellee's machine cannot 
 also be the element of a " twisting mechanism " in the sense of appellarit's 
 claims merely because the wrapping mechanism inevitably tends to give 
 a slight twist to the pliable strands. — American v. Choate, 159 Fed. 429; 
 86 C. C. A. 409. 
 
 Ajax V. Pettibone, 125 Fed. 748.
 
 §§ 491-494 INFRINGEMENT 443 
 
 §491. Evidence of — Identity. 
 
 If the patent in suit is limited by the state of the art to a specific con- 
 artruction, a claim, to be valid, cannot be construed to cover a device employ- 
 ing a mechanism not the equivalent thereof. — Grier v. Wilt; 120 U. S. 412; 
 SOL. Ed. 712; 7 S. Ct. 718. 
 
 The jury will not consider any former device to be an anticipation unless 
 they believe such former de\nce developed the same mode of operation as 
 the device described in the plaintiff's patent. — Haines v. McLaughlin, 135 
 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. 
 
 § 492. Evidence of — Law Actions. 
 
 The claim in the specification was for a combination of such parts of the 
 described mechanism as were necessary to the operation of the device. The 
 defendants had not infringed the patent unless they had used all the parts 
 embraced in the plaintiff's combination. It was a question for the jury 
 to find what those parts were, and whether the defendants had used them, 
 — Silsby V. Foote, 14 How. 218; 14 L. Ed. 394. 
 
 The question of anticipation is purely a question of fact, and is exclusively 
 for the jury to determine. — Haines v. McLaughlin, 135 U. S. 584; 22 L, Ed. 
 241 ; 10 S. Ct. 876. 
 
 We think the circuit court erred in not submitting to the jury the question 
 of infringement, under proper instructions. If the patented invention was 
 within the rule in Morley v. Lancaster, 129 U. S. 263, " one of a primary 
 character," and the patent was " a pioneer patent," which were questions 
 of fact to be passed upon by the jury, then the question, on a proper con- 
 struction of the patent, whether the defendant's machine infringed its claims, 
 was a question of fact for the jury to determine, on all the evidence which 
 the case might present. — Royer v. Schultz, 135 U. S. 319; 34 L. Ed. 214; 
 10 S. Ct. 833. 
 
 Tucker v. Spalding, 80 U. S. 453. 
 
 It was not a matter of mere judicial knowledge that the mechanical differ- 
 ences between the two machines were material, in view of the character 
 of the patented invention and of the claims of the patent ; and we are unable 
 to concur with the view of the circuit court (29 Fed. 281) that this is a case 
 where, if the jury had found a verdict for the plaintiff, on the evidence put 
 in by him on the question of infringement, aU of which evidence the bill of. 
 exceptions states is set forth therein, it would have been proper for the court 
 to set aside such verdict. — Royer v. Schultz, 135 U. S. 319; 34 L. Ed. 214; 
 10 S. Ct. 833. 
 
 Keyes v. Grant, 118 U. S. 25. 
 
 § 493. Evidence of — ParoL 
 
 Oral testimony, unsupported by patents or exhibits, tending to show prior 
 use of a device regularly patented is, in the nature of the case, open to grave 
 suspicion. — Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 Washburn v. Beat Em All, 143 U. S. 275. 
 
 § 494. Evidence of — Sufficiency. 
 
 The proper evidence from which to determine the infringement is the 
 patent in suit and the device made by the defendant. — Blanchard v. Put- 
 nam, 75 U. S. 420; 19 L. Ed. 433.
 
 444 THE FIXED LAW OF PATENTS § 495 
 
 Persons seeking redress for the unlawful use of letters patent, in which 
 they have an interest, are obliged to allege and prove that they, or those 
 under whom they claim, are the original and first inventors of the improve- 
 ment embodied in the letters patent on which the suit is founded, and that 
 the same has been infringed by the party against whom the suit is brought. 
 The burden of proof is upon the party instituting the suit. The letters patent, 
 if in due form, and introduced in evidence are prima facie proof of the first 
 allegation, and in the absence of proof to the contrary afford a presumption 
 sufficient for a recovery. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Infringement must not only be alleged but must be specifically proved by 
 the complainant. — Imhauser v. Buerk, 101 U. S. 647; 25 L. Ed. G45. 
 
 Where denial of infringement is made in the answer under oath, infringe- 
 ment must be shown by satisfactory proof. — Lehigh v. Mellon, 104 U. S. 
 112; 26 L. Ed. 639. 
 
 To establish infringement there must be a preponderance of evidence in 
 complainant's favor. — Bene v. Jeantet, 129 U. S. 683; 32 L. Ed. 803; 9 
 
 S. Ct. 428. 
 
 As this is not the only way in which the parts may be attached, it was 
 incumbent on the plaintiff to show that the defendant used castings and 
 bottom plates of that fashion ; otherwise infringement is not proved. — 
 Cauda i;. Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 A single sale made in circumstances which indicate a readiness to make 
 other similar sales upon application is sufficient to make out a prima facie 
 case. — Hutter v. De Q. Bottle, 128 Fed. 283; 62 C. C. A. 652. 
 
 That the proof of infringement must be positive, and that testimony of 
 infringing articles " substantially identical " and " good representations " 
 is insufficient, see Gray v. Grinberg, 159 Fed. 138; 86 C. C. A. 328. 
 
 The burden of proof rested upon the complainant to show a completed act 
 of infringement. The defendant's alleged threatened infringement was in- 
 sufficient. — Gray v. Grinberg, 159 Fed. 138; 86 C. C. A. 328. 
 
 Westinghouse v. Stanley, 116 Fed. 641. 
 
 § 495. Evidence of — Utility — Use by Defendant. 
 
 It does not lie in the mouth of an infringer to deny the utility of the device 
 of the patent in suit. The presumptions at least are against him. — DuBois v. 
 Kirk, 158 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Western v. LaRue, 139 U. S. 601; Gandy 
 V. Main, 143 U. S. 577. 
 
 The facts that its usefulness is not denied, and that the appellant has 
 seen fit to depart from the many devices open to his use, and to adopt that 
 of the appellee, strongly indicate that it marks a distinct and useful advance 
 in the progress of this art. — Brammer v. Schroeder, 106 Fed. 918; 46 
 C. C. A. 41. 
 
 We may add that the evidence warrants the conclusion that complainant's 
 lantern never went into practical use, whereas the defendant's lantern has 
 gone into extensive public use. Of course, these facts as to use are by no 
 means decisive, but they tend to negative the charge of infringement. — • 
 Raymond v. Keystone, 134 Fed. 866 ; 67 C. C. A. 492.
 
 5 496 INFRINGEMENT 445 
 
 § 496. Evidence of — Miscellaneous Holdings. 
 
 The question of infringement is a mixed question of fact and of law. — 
 California v. Molitor, 113 U. S. 609; 28 L. Ed. 1106; 5 S. Ct. 618. 
 
 Where there is evidence contradictory of the infringement, we cannot, 
 in the absence of ocular inspection, take it upon ourselves to say that the 
 circuit court erred m finding infringement. — Dobson v. Dornan, 118 U. S. 
 10; SOL. Ed. 603; 6 S. Ct. 946. 
 
 If the method pursued by the patentee for the performance of the function 
 discovered by him would naturally have suggested the device adopted by 
 the defendant, that is in itself evidence of an intended infringement; but 
 although Mr. Boyden may have intended to accomplish the same results, 
 the Westinghouse patent if he had had it before him, would scarcely have 
 suggested the method he adopted to accomplish these results. Under such 
 circumstances, the law entitles him to the rights of an independent inventor. 
 — Westinghouse v. Boyden, 170 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 The question of infringement or no infringement is one of law, and sus- 
 ceptible of determination on this writ of error. — Singer v. Cramer, 192 U. S. 
 265 ; 48 L. Ed. 437 ; 24 S. Ct. 291. 
 
 Heald v. Rice, 104 U. S. 737; Market v. Rowley, 155 U. S. 621. 
 
 The action was upon a patent for a current regulator. Anticipation was set 
 up under a former patent to the same parties upon a sparking regulator. Ex- 
 pert proof determined that a device made according to either patent could 
 be determined to perform the function of the other only by expermiental 
 tests. Held: This alone ought to be conclusive of the dispute. When such 
 tests are necessary to distinguish one device from another, it is a manifestly 
 impracticable, not to say dangerous, proposition that the making or using 
 of either under a given patent may be declared to be an infringement of a 
 different patent upon the other. — Thomson-Houston v. Western, 70 Fed. 
 69; 16 C. C. A. 642. 
 
 It is manifest on the face of the patent that the specification was prepared 
 by one perfectly familiar with the Shuman invention, and that there is 
 a studied effort throughout the patent to differentiate the alleged invention 
 thereof from his. — Streator v. Wire-Glass Co. 97 Fed. 950; 38 C. C. A. o73. 
 
 The applications for both patents were pending in the Patent Office at the 
 same time, and the decision of that office that no interference was found in 
 the claims on the part of the appellee, and the subsequent draft of both 
 patents, with the modifications in the Leslie claims as shown m the record, 
 are strongly corroborative of this view of non-infringement. — Mann v. 
 Hoffmann, 104 Fed. 245; 43 C. C. A. 514. 
 
 The evidence was not admitted for the purpose of showing what was the 
 intention of the corporation. It was admitted for the purpose of explaining 
 the language of the articles. The articles referred to the manufacture of 
 directory machines, without describing or specifying them. It is evident that 
 the incorporators had some particular machine in view. Such being the 
 case, any witness who knew what was referred to was competent to testify 
 as to that fact. — National v. Polk, 121 Fed. 742; 58 C. C. A. 24. 
 
 When the question of infringement depends entirely upon the construction 
 of a patent, either upon its face or in connection with facts of such a nature
 
 446 THE FIXED LAW OF PATENTS § 496 
 
 and effect as not to be reasonably disputed, the question is one of law for 
 the court. — Western v. Robertson, 142 Fed. 471 ; 73 C. C. A. 587. 
 
 De Loriea v. Whitney, 63 Fed. 611; Black Diamond v. Excelsior, 156 U. S. 
 611; Singer v. Cramer, 192 U. S. 265. 
 
 There is no dispute of fact in regard to the features of the cans manu- 
 factured by the defendant, and the opinions of the experts upon the question 
 whether or not they embody all the essential parts of the claim are of no 
 assistance to the court, because their value depends altogether upon the 
 construction to be given to the claim, and this is a matter wholly for the 
 court. — Ironclad v. Dairyman's, 143 Fed. 512; 74 C. C. A, 372. 
 
 The defendant filed application for patent on the device here in infringe- 
 ment and the claims were rejected on the patent here sued on. Held: This 
 acquiescence is persuasive evidence of an admission on the part of the pat- 
 entee of the defendant's car that the O'Leary device was an anticipation, 
 or at least a disclosure, of certain of the elements of defendant's construction, 
 and therefore is persuasive evidence of an admission that if the means 
 covered by said claims were later than those covered by the patent in suit, 
 they would be an infringement thereof. — O'Leary v. Utica, 144 Fed. 399; 
 75 C. C. A. 377. 
 
 The issuance of a patent to the appellee creates a prima facie presumption 
 of a patentable difference from the invention of the patent sued on. — 
 Hardison v. Brinkman, 156 Fed. 962; 87 C. C. A. 8. 
 
 Miller V. Eagle, 151 U. S. 186. 
 
 It is not disputed that there is no proof in the record that such cables 
 were made, sold, or used by defendant before Feb. 1900, a year and a half 
 after the bill was filed. This alleged sample, therefore, cannot be considered 
 in determining the question of infringement. — National v. Roebling's, 158 
 Fed. 99; 85 C. C. A. 567. 
 
 The complainant introduced " Complainant's Exhibit Scott Bustle," 
 the counsel for the respective parties having previously agreed " that the 
 same is a fair specimen of the device of the patent in suit." This is, in effect, 
 an admission that the bustle purchased of the defendant is substantially 
 identical with the one made under the patent, or, in other words, it is an 
 admission of infringement. However, as counsel for the defendants insist 
 that the stipulation was made inadvertently and under a misapprehension 
 of the facts, we think the defendants should not be foreclosed thereby. — 
 Scott V. Lazell, 160 Fed. 472 ; 87 C. C. A. 456. 
 
 That the grant of a subsequent patent to the same inventor is presumptive 
 evidence that the first patent is not infringed by manufacture under the 
 second patent, see D'Arcy v. Staples, 161 Fed. 733; 88 C. C. A. 606. 
 
 Miller V. Eagle, 151 U. S. 186. 
 
 It is urged upon us that inasmuch as the bill of complaint was brought 
 in a district in which the defendants are not inhabitants, the burden of 
 proof was upon the complainant to show a complete act of infringement in 
 such district — otherwise the Circuit Court for that district would be without 
 jurisdiction to hear the cause; and the case of Gray v. Grinberg, 159 Fed. 
 138, along with other cases is cited. The usual rule is that whether a de- 
 fendant shall be required to defend in a court other than the Circuit Court 
 for the district of which he is an inhabitant is a question of privilege that he 
 may insist upon or waive, at pleasure. Gray v. Grinberg is not opposed
 
 § 497 INFRINGEMENT 447 
 
 to this rule. The question in that case was, whether as a matter of procedure, 
 the defendant had waived that privilege — whether by the bill alleging that 
 infringing acts had been committed within the district, an issue of fact 
 involving the question of privilege was not thereby tendered — aii averment 
 of fact that the defendant, wishing not to waive, but to exercise his privilege, 
 had not the right to traverse by answer. We need not enter, however, into 
 this question of procedure, for the proof before us satisfies us — all the 
 circumstances being taken into consideration — that acts of infringement 
 were actually committed within the district where the suit was brought, 
 and before the suit was brought. — American Mattress v. Springfield 165 Fed 
 191; CCA. 
 
 § 497. Generic Patent. 
 
 Those claims are not for a result or effect, irrespective of the means by 
 which the effect is accomplished. It is open to a subsequent inventor to 
 accomplish the same result, if he can, by substantially different means. 
 The effect of the rule before laid down is merely to require that, in deter- 
 mining whether the means employed in the defendant's machine, are sub- 
 stantially the same means as those employed in complainant's machine, the 
 complainant's patent is to receive a liberal construction, in view of the fact 
 that he was a pioneer in the construction of an automatic button-sewing 
 machine, and that his patent, especially in view of the character and terms 
 of the four claims in question, is not to be limited to the particular devices 
 or instrumentalities described by him, used in the three main elements 
 of his machine, which, combined together make it up. This is the principle 
 applied by this court in Consolidated v. Crosby, 113 U. S. 157. — Morley v. 
 Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 Where an invention is one of a primary character, and the mechanical 
 functions performed by the machine are, as a whole, entirely new, all sub- 
 sequent machines which employ substantially the same means to accomplish 
 the same result are infringements, although the subsequent machine may 
 contain improvements in the separate mechanisms which go to make up 
 the machine. — Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 
 299. 
 
 McCormick v. Talcott. 61 U. S. 402; Chicago v. Sayles, 97 U. S. 554; Clough v. 
 Barker, 106 U. S. 166; Duff v. Sterling, 107 U. S. 636; Consolidated v. Crosby, 
 113 U. S. 157; Tilghman v. Proctor, 102 U. S. 707; Nelson v. Hartford, 1 Web. 
 P. C. 295. 
 
 If the plaintiff had invented an entirely new process, which had revolu- 
 tionized the art, it might be that the court ought to give that broad con- 
 struction to the patent which was justified in the case of a foundation patent; 
 but when, as in this case, all the substantial steps in the process were old, 
 the utmost that the plaintiff was entitled to was protection against those 
 who used, in substance, his precise forms. — Royer v. Coupe, 146 U. S. 524; 
 36 L. Ed. 1073; 13 S. Ct. 166. 
 
 Norton being the original inventor, he, and those claiming under him, 
 would have the right to treat as infringers all persons who make devices or 
 machines operating on the same principle and performing the same func- 
 tions by analogous means or equivalent combinations, even though the 
 infringing machine may be an improvement of the original, and patentable 
 as such. — Norton v. Jensen, 49 Fed. 859; 1 C. C. A. 452. 
 
 McCormick v. Talcott, 20 How. 405; Wells v. Gill, 1 Ban. & A. 77; Kendrick v. 
 Emmons, 2 Ban. & A. 208; Turrell v. Spaeth, 3 Ban. & A. 458; Colt v. Arms Co.
 
 448 THE FIXED LAW OF PATENTS § 497 
 
 1 Fish. P. C. 108; Winans v. Railroad, 4 Fish. P. C. 2; Whipple v. Mfg. Co. 4 
 Fish. P. C. 29; Fruit Co. v. Curran, 8 Fed. 150. 
 
 With respect to such a patent (a pioneer) the well-settled rule is that the 
 patentee v ho has, by the success of his patent, pointed out the combination 
 of functions needed to reach the new result, and has claimed the combination 
 of mechanical parts performing those functions, may enjoin the use of an- 
 other machine producing the same result where the second machine differs 
 from the first only in a substitution, for parts or elements in the patented de- 
 vice, of parts or elements which though different in form and kind, perform 
 the same functions in substantially the same way. It may be that the sub- 
 stituted parts are well known equivalents of those shown in the patent for the 
 performance of the functions to which they are respectively applied, in which 
 case there is manifestly no inventive faculty shown in the change; or it may 
 be that, being shown by the successful operation of the patent the exact 
 nature of the functions to be performed by a part of the patented device, 
 the infringer, by the use of his inventive faculty, hits upon something as a 
 substitute which will perform the same functions more completely and sat- 
 isfactorily. In the latter case he is a tributary inventor; but he is none the 
 less an infringer if he uses the whole machine, with his substituted parts to 
 accomplish the same new result. The rule as to infringement of pioneer 
 inventions which point the way to new products or results is analogous to 
 that applied in cases of infringements of process patents in which the dis- 
 coverer is only required to point out one practical method of using his proc- 
 ess, and is permitted to claim tribute from all who thereafter use the process, 
 whether with his apparatus or with a different or improved means. In 
 Machine Co. i\ Lancaster, 129 U. S. 263, the Supreme Court said: 
 
 Where an invention is of a primary character and the mechanical 
 functions performed by the machine as a whole are entirely new, all sub- 
 sequent machines which employ substantially the same means to accom- 
 plish the same result are infringements, although the subsequent machine 
 may contain improvements in the separate mechanisms which go to make 
 up the machine. — McCormick v. Aultman, 69 Fed. 371 ; 16 C. C. A. 259. 
 
 Consolidated v. Crosby, 113 U. S. 157; Royer v. Belting Co. 135 U. S. 319; 
 Machine Co. v. Murphy, 97 U. S. 120; Sessions v. Romadka, 145 U. S. 29; Clough 
 V. Barker, 106 U. S. 160; Winans v. Denmead, 15 How. 330; McCormick v. Tal- 
 cott, 20 How. 402; Railway v. Sayles, 97 U. S. 554. 
 
 All subsequent machines which employ substantially the same means to 
 accomplish the same results are infringements, notwithstanding the subse- 
 quent machine may contain improvements in separate mechanism which 
 go to make up the machine. — VonSchmidt v. Bowers, 80 Fed. 121 ; 25 
 C. C. A. 323. 
 
 McCormick v. Talcott, 20 How. 402; Railway v. Sayles, 97 U. S. 554; Clough v. 
 Barker, 106 U. S. 166; Consolidated v. Crosby, 113 U. S. 517. 
 
 Where a patent represents a marked advance in the art, such a patent is 
 called a " pioneer; " and the courts in its construction, have adopted a lib- 
 eral rule with respect to equivalents. While the Morris patent describes 
 a machine of the " pioneer " type, it did not solve the problem. No prac- 
 tical machine embodying the invention has ever been constructed. The 
 successful solution of the problem was subsequently attained in a 
 patented machine constructed on a different principle. The Morris ma- 
 chine having proved a practical failure, it is manifest that the de- 
 fendant's machine cannot be held to infringe. — Ford v. Bancroft, 98 
 Fed. 309; 39 C. C. A. 91. 
 
 Machine v. Lancaster, 129 U. S. 263; Reece v. Globe, 61 Fed. 958.
 
 § 498 INFRINGEMENT 449 
 
 § 498. By Government. 
 
 If an officer in the military service, not especially employed to make 
 experiments with a view to suggest improvements, devises a new and useful 
 improvement in arms, tents, or any other kind of war material, he is entitled 
 to the benefit of it and to letters patent for the improvement, equally with 
 any other citizen not engaged in such service ; and the Government cannot, 
 after the patent is issued, make use of the improvement any more than a 
 private individual, without license of the inventor or making compensation 
 to him. — United States v. Burns, 79 U. S. 246; 20 L. Ed. 388. 
 
 Unlawful use by a government employee is infringement. — Cammeyerv. 
 Newton, 94 U. S. 225; 24 L. Ed. 72. 
 
 Mitchell V. Harmony, 13 How. 115; U. S. v. Russell, 13 Wall. 623; U. S. v. 
 Burns, 12 Wall. 246. 
 
 The exemption of the United States from judicial process does not protect 
 their officers and agents, civil or military, in time of peace from being per- 
 sonally liable to an action of tort by a private person whose rights of prop- 
 erty they have wrongfully invaded or injured, even by authority of the 
 United States. — Belknap v. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 
 443. 
 
 Little V. Barreme, 6 U. S. 170; Bates v. Clark, 95 U. S. 204; Cammeyer v. 
 Newton, 94 U. S. 225; Feather v. Queen, 6 Best & S. 257; Vavasseur v. Krupp, 
 L. R. 9 Ch. Div. 351. 
 
 The United States have not consented to be liable to suits founded in 
 tort, for wrongs done by their officers, though in the discharge of their 
 official duties. The United States, therefore, are not hable to a suit for an 
 infringement of a patent, that being an action sounding in tort. — Belknap 
 V. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 Gibbons v. U. S. 75 U. S. 269; Morgan v. U. S. 81 U. S. 531; Langford v. U. S. 
 101 U. S. 341; U. S. v. Jones, 131 U. S. 1; German v. U. S. 148 U. S. 573; Hill v. 
 U. S. 149 U. S. 593; Schillinger v.V.S. 155 U. S. 163; U.S.v.Berdan, 156 U. S.552. 
 
 This court has repeatedly and uniformly held that the United States 
 have no more right than any private person to use a patented invention 
 without license of the patentee or making compensation to him. — Belknap 
 V. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 U. S. V. Burns, 79 U. S. 246; Cammeyer v. Newton, 94 U. S. 225; James v. 
 Campbell, 104 U. S. 356; HoUister v. Benedict, 113 U. S. 59; U. S. v. Palmer, 128 
 U. S. 262. 
 
 The United States cannot be sued in their courts without their consent, 
 and they cannot be sued for tort, as for the infringement of a patent. — 
 SchiUinger v. U. S. 155 U. S. 163; 39 L. Ed. 108; 15 S. Ct. 85. 
 
 Gibbons v. Wilson, 75 U. S. 269; Morgan v. U. S. 81 U. S. 531; Hill v. U- S. 149 
 U. S. 593; U. S. v. Palmer, 128 U. S- 262; U. S. v. Russell, 80 U. S. 623; U. S. v. 
 Great Falls, 112 U. S. 645- 
 
 The United States may appropriate and use the invention of an indi- 
 vidual for its necessary uses, the fifth amendment to the constitution re- 
 quiring only that due compensation shall be made. But this provision does 
 not prescribe that the usual method of condemnation of property is es- 
 sential. (In this case the Chief of Ordnances wanted to use a certain breech- 
 loading mechanism, which was patented to complainant's assignor, and he 
 proceeded to use it without license or right.) It does not appear, and it 
 was not the fact that this was the only mechanism available. — Dashiell v. 
 Grosvenor, 66 Fed. 334; 13 C. C. A. 593.
 
 4^Q THE FIXED LAW OF PATENTS §§499-500 
 
 Knh] V TT S 91 U. S. 367; James v- Campbell, 104 U- S. 356; U. S- i;. Great 
 F.n. 112 U S 645- Hollister v. Benedict, 113 U. S. 59; U. S. v. Palmer 128 
 US 262; Schillinger's Case, 24 Ct. CI. 278; Gill's Case, 25 Ct. CI. 415; Berdan's 
 Case, 26 Ct. CI. 48- 
 
 § 499. Identity — Equivalents. 
 
 He is entitled to protect himself from all other modes of making the same 
 anplication- and every question of infringement will present the question 
 whether the different mode, be it better or worse is in substance an applica- 
 tion of the same principle. — SewaU v. Jones, 91 U. S. 171 ; 23 L. Ed. 275. 
 
 Curtis, sec. 320. 
 
 A construction emnloying substantial equivalents of mechanism and per- 
 forming the same function is an infringement. — Gage v. Herring, 107 U. S. 
 640; 27L. Ed. 601; 2 S. Ct. 819. 
 
 Gould V. Rees, 15 Wall. 187; Ives v. HamUton, 92 U. S. 426; Machine v. 
 Murphy, 97 U. S- 120. 
 
 The bolt and the clevis perform the same office in the two structures, 
 and the mechanical differences are merely formal and not substantial. 
 The combination consists of the same four parts, differing only in form. — 
 Lake Shore v. National, 110 U. S. 229; 28 L. Ed. 129; 4 S. Ct. 33. 
 
 Where a defendant employs substantially the same devices as the plain- 
 tiff but seems to have adopted prior and known means rather than to have 
 Wloined the device of plaintiff it will be considered in determining infnnge- 
 meiir- Pope .. Gormully, 144 U. S. 254; 36 L. Ed. 420; 12 S. Ct. 637. 
 
 The specification was coextensive with the actual invention, and described 
 three methods of construction. The defendant took one of the methods 
 of construction described in the specification and included in the claim. 
 It is not of importance that it did not take the best method which was 
 so described. — Judd Co. v. Fowler, 61 Fed. 821 ; 10 C. C. A. 100. 
 
 Two devices doing the same thing in substantially the same way with 
 substantially the same result are the same in the patent sense. — Thomson- 
 Housion V. National, 65 Fed. 427; 12 C. C. A. 671. 
 
 Machine v. Murphy, 97 U. S. 120. 
 
 It is no less true that a copy of the thing described and claimed in a patent 
 either without variation, or with such variations as are consistent , with its 
 being in substance the same thing, is, for all the purposes of the patent law, 
 the same device or combination as that described in the patent. — Kinloch 
 V. Western, 113 Fed. 652; 51 C. C. A. 362. 
 
 Burr V. Duryee, 1 Wall. 531. 
 
 § 500. Identity — Means Employed. 
 
 An infringement involves substantial identity, whether that identity be 
 described by the terms " same principle," same " modus operandi " or any 
 other. — Burr v. Duryee, 68 U. S. 531 ; 17 L. Ed. 750. 
 
 Two things are not the same under the patent law, when one is, in prac- 
 tice, substantially better than the other in a case where the second improve- 
 ment is not gained by the use of the same means or known mechanical 
 equivalents. — Mitchell v. Tilghman, 86 U. S. 287 ; 22 L. Ed. 125. 
 
 Curt. Pat. sec. 330.
 
 §§ 501-502 INFRINGEMENT 451 
 
 Identity of detail in a combination like the one under consideration, is 
 not necessary in order to constitute infringement. The patentee took pains 
 to point out that " the specific construction of the mechanism shown . . . 
 is not essential." This was unnecessary precaution; the law gave him ample 
 protection in this regard. — International v. Dey, 142 Fed. 736; 74 C. C. A. 
 68. 
 
 Machine v. Murphy, 97 U. S. 120. 
 
 §501. Identity — Non-Essentials. 
 
 Slight differences in degree cannot be regarded as of weight in determining 
 the question of substantial similarity or substantial difference, but in all 
 cases the question whether the difference in degree is insufficient to prove 
 the alleged infringement is a question of fact to be determined by the jury 
 in an action at law, or by the court in a suit in ecjuity. — Mitchell v. Tilgh- 
 man, 86 U. S. 287; 22 L. Ed. 125. 
 
 Cahoon v. Ring, 1 Cliff. 621. 
 
 But it is no less an infringement if it performs its primary function in 
 practically the same way. We are not concerned with the subordinate differ- 
 ences in the mechanism, least of all with the different names given by Horton 
 to parts of his machine similar to the corresponding parts in the Beach patent. 
 As the two machines are alike in their functions, combination and elements, 
 it is unnecessary to go farther and inquire whether they are alike or unlike 
 in their detail. — Hobbs v. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 
 409. 
 
 The substantial identity of the Walker and Birkenhead rests is not affected 
 by the circumstance that in that of the former it is composed of one part, 
 while that of the latter is composed of two. — Eames v. Worcester, 123 
 Fed. 67; 60 C. C. A. 37. 
 
 Rob. Pat. sec. 252; Stearns v. Russell, 85 Fed. 218; Brown v. King, 107 Fed. 
 498. 
 
 The rule is well settled that if two machines be substantially the same, 
 and operate in the same manner, though they may differ in form, proportion 
 and utility, they are the same in principle. — Los Angeles v. Aeolian, 143 
 Fed. 880; 75 C. C. A. 88. 
 
 Converse v. Cannon, 2 Woods, 7; Machine v. Murphy, 97 U. S. 120; Cantrell v. 
 Wallick, 117 U. S. 689; Blandy v. Griffith, 3 Fish. P. C. 609; Walker on Pat. sec. 
 376; Rob. on Pat. sec. 30; Curtis on Pat. sec. 320. 
 
 § 502. Identity — Result or Function. 
 
 The fact that by careful workmanship the products are indistinguishable 
 by mere inspection does not establish the identity of the processes; and as 
 the patent for the product must be limited to an article made by the particu- 
 lar process, the inquiry must be determined by a comparison between the 
 methods actually employed. — Plummer v. Sargent, 120 U. S. 442; 30 L. Ed. 
 737; 7 S. Ct. 640. 
 
 This result being different from that in the plaintiff's device, the mechanism 
 is different-and is not an equivalent of that of the plaintiff. — Grier v. Wilt, 
 120 U. S. 412; 30 L. Ed. 712; 7 S. Ct. 718. 
 
 Looking at the improvement in issue in view of the cases cited, it consists 
 of mechanical details accomplishing a useful result, but of a low order ; and 
 the mechanical details of respondent's devices are different, in the sense
 
 452 THE FIXED LAW OF PATENTS § 503 
 
 of the patent law, and accomplish a result also in a large part different, and 
 cannot be held to infringe. — Electric v. Fuller, 59 Fed. 1003; 8 C. C. A. 442. 
 Knapp V. Morss, 150 U. S. 221; Gordon v. Warder, 150 U. S. 47. 
 
 If it be conceded that it will do that work in substantially the same 
 way, infringement is not thereby established. Substantial identity between 
 the combinations must be found in their capacity to do the same work 
 in substantially the same way, and it does not suffice to show that they will 
 do one part of their work. The argument for complainant seems to proceed 
 upon the theory that the combinations are substantially the same because each 
 will perform the several operations of the system, and each is composed of 
 essentially the same devices. The answer is that the differences in organi- 
 zation introduce different modes of operation except in a single instance, 
 and the identity is incomplete, being partial, instead of general. — Westing- 
 house V. N. Y. 119 Fed. 874; 56 C. C. A. 404. 
 
 That the two machines of respondents and complainants both accom- 
 plish the same result may be conceded, but identity of result is not the test 
 of infringement. There must in the ordinary patent^ be identity of means 
 and identity of operation as well. — American v. Cimiotti, 123 Fed. 869; 59 
 C. C. A. 357. 
 
 Kokomo V. Kitselman, 189 U. S. 8. 
 
 § 503. Identity — Tests of. 
 
 Proofs of infringement consist in a comparison of the machine made by 
 respondents with the mechanism described in the patent, and in the testi- 
 mony of scientific experts. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 
 177. 
 
 To infringe a patent it is not necessary that the thing patented should be 
 adopted in every particular. If the patent is adopted substantially by the 
 defendants they are guilty of infringement. — Sewall v. Jones, 91 U. S, 171 ; 
 23 L. Ed. 275. 
 
 Root V. Ball, 4 McLean, 177; -Alden v. Dewey, 1 Story, 336; Howe v. Abbott, 2 
 Story, 190; Parker v. Haworth, 4 McLean, 370- 
 
 It is not only necessary to an infringement that the arrangement which 
 infringes should perform the same service or produce the sarne effect but it 
 must be done in substantially the same way. — Werner v. King, 96 U. b. 
 218; 24 L. Ed. 613. 
 
 Burr V. Duryce, 1 Wall. 531. 
 
 To constitute identity of invention, and therefore, infringement, not only 
 must the result attained be the same, but in case the means used for its at- 
 tainment is a combination of known elements, the elements combined in 
 both cases must be the same, and combined in the same way, so that each 
 element shall perform the same function, provided however, that the 
 differences alleged are not merely colorable, according to the rule for- 
 bidding the use of known equivalents. — Electric v. Hall, 114 U.h. S7, 
 29 L. Ed. 96; 5 S. Ct. 1069. 
 
 The iury will not consider any former device to be an anticipation unless 
 they believe such former device developed the same mode of operation 
 as the device described in plaintiff's patent. — Haines v. McLaughlin, 135 
 U. S. 584; 22 L. Ed. 241 ; 10 S. Ct. 876.
 
 § 503 INFRINGEMENT 453 
 
 The identity or diversity in inherent quality of two devices or manu- 
 factures will be considered in determining identity or diversitv of invention. 
 
 — Dobson V. Cubley, 149 U. S. 117; 37 L. Ed. 67i ; 13 S. Ct. 796. 
 
 We have repeatedly held that a charge of infringement is sometimes 
 made out though the letter of the claims be avoided. The converse is equally 
 true. The patentee may bring the defendant within the letter of his claims, 
 but if the Tatter has so far changed the principle of the device that the 
 claims of the patent, literally construed, have ceased to represent his actual 
 invention, he is as little subject to be adjudged an infringer as one who has 
 violated the letter of a statute has to be convicted, when he has done noth- 
 ing to confiict with its spirit and intent. — Westinghouse v. Boyden, 170 
 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 Machine Co. v. Murphy, 97 U. S. 120; Ives v. Hamilton, 92 U. S. 431; :\Iorey v. 
 Lockwood, 8 Wall. 280; Elizabeth v. Pavement Co. 97 U. S. 137; Sessions v. 
 Romadka, 145 U. S. 29; Hoyt v. Home. 145 U. S. 302; Burr v. Duryee, 1 Wall. 
 531. 
 
 The plaintiff's cutting edge and the defendant's cutting edge perform the 
 same function in substantially the same way and accomplishes the same 
 result. Therefore, in the sense of the patent law, they are the same thing. 
 
 — Sayre v. Scott, 55 Fed. 971 ; 5 C. C. A. 366. 
 Machine Co. v. INIurphy, 97 U. S- 120. 
 
 The appellant's machine is not, it is, true, in everj^ detail identical with that 
 of the patent, but in all material respects it is the same. In substantially 
 the same way, and by substantially the same means, it accomplished the 
 same end. That it constitutes infringement we have no doubt. — Scott v. 
 Hoe, 70 Fed. 781; 17 C. C. A. 410. 
 
 It is more important to observe what are the features of essential identity 
 between devices than to descant upon those which are merely accidental, 
 and might be substituted one for another, or entirely removed without dis- 
 turbing the relation of parts or the principle of construction or operation. 
 
 — Ferguson v. Roos, 71 Fed. 416; 18 C. C. A. 162. 
 
 Temple v- Goss, 58 Fed. 196; De La Vergne v. Brewing Co- 66 Fed. 765. 
 
 Section 4888 requires that an application for a patent (not the claim) 
 shall contain a written description of the supposed invention, and of the 
 manner of constructing and using it, "in such full, clear, concise and exact 
 terms as to enable any person skilled in the art . . . to make and use the 
 same; " and it follows that, in determining whether the invention described 
 in one patent differs from that described in another, evidence may be heard, 
 
 — and, in a difficult case, manifestly ought to be heard — concerning the 
 construction and actual operation of each. — Thomson-Houston v. Western, 
 72 Fed. 530; 19 C. C. A. 1. 
 
 It may be conceded, as asserted that the differences of operation could be 
 brought about by mechanical changes so minute that the most expert tele- 
 phonist in the world, taking an instrument at random out of the line could 
 not tell by mere inspection whether it would be a Reis or a Blake in operation 
 or result ; but a mere hearing would be enough. By way of further illustra- 
 tion, it is said that " there is a cabinet in the Agassiz i\Iuseum at Cambridge, 
 containing a row of mounted skeletons, beginning at one end with a monkey 
 and ending at the other with , a Caucasian. The difference between the 
 extremes is wide enough, but the two half-way chaps look like brothers." 
 But they are not brothers. By neither man nor monkey has a live one of
 
 454 THE FIXED LAW OF PATENTS §§ 504-505 
 
 either kind ever been mistaken for the other, and in skeleton, with all the 
 zeal of the Darwinians to find the missing link, they remain, to the experts, 
 easily distinguishable, and can only be said to resemble. In the light of pres- 
 ent knowledge, the Caucasian, as an invention, is not anticipated by the 
 Simian. — Thomson-Houston v. Western, 72 Fed. 530; 19 C. C. A. 1. 
 
 Each element being one of the operative means, identity depends not 
 merely upon the function performed, but upon the manner in which it is 
 performed. — Imperial v. Crown, 139 Fed. 312; 71 C. C. A. 442. 
 
 § 504. Identity — Miscellaneous Rules. 
 
 It must be remembered it is an absolutely essential ingredient of a double 
 use that the alleged infringing device or mechanism must be identical with 
 the patented invention. — Duff. Mfg. Co. v. Forgie, 59 Fed. 772; 8 C. C. A. 
 261. 
 
 It is clear that the patent as granted is for a mechanism only, and while, 
 under a liberal application of the doctrine of equivalents, " if the device is 
 appropriated in its essential features it will be an infringement, notwith- 
 standing some change in the location and relation of parts," even though 
 a doubtful function of httle comparative worth be eliminated (Western 
 Elec. V. Sperry, 58 Fed. 186) yet the proposition enunciated in Temple v. 
 Goss, 58 Fed. 196, is not inapplicable, namely: 
 
 " That when a device designed merely for the improvement of a well 
 advanced art is described as having particular features of construction, 
 which are adapted to accomplish specific results or modes of operation, 
 and the claim of the patent is for that device, the features so described are 
 covered by the claim, and may not be rejected, or treated as of secondary 
 importance, in order to extend the patent over other forms or features 
 not described." — Brush v. Western, 76 Fed. 761 ; 22 C. C. A. 543. 
 
 § 505. Importation and Exportation. 
 
 A person residing in the U. S. cannot purchase in another country articles 
 patented there, from a person authorized to sell them, and import them 
 to and sell them in the U. S. without the license or consent of the owners 
 of the U. S. patent. — Boesch v. Graff, 133 U. S. 697; 33 L. Ed. 787; 10 
 S. Ct. 378. 
 
 Wilson V. Rousseau, 45 U. S. 646; Bloomer v. McQueewan, 55 U. S. 539; 
 Adaras v. Burky, 84 U. S. 453. 
 
 A purchaser in a foreign country of an article patented in that country 
 and also in the United States, from the owner of each patent, or from a li- 
 censee under each patent, who purchases without any restrictions upon 
 the extent of his use or power of sale, acquires an unrestricted ownership 
 in the article, and can use or sell it in this country. — Dickerson v. Matheson, 
 57 Fed. 524; 6 C. C. A. 466. 
 
 Bloomer v. Millinger, 1 Wall. 340; Mitchell v. Hawley, 16 Wall. 544; Paper 
 Bag cases, 105 U. S. 770; HoUiday v. Mattheson, 24 Fed. 185. 
 
 A purchaser in a foreign country of an article patented in that country 
 and also in the United States, from a licensee under the foreign patent only, 
 does not give the purchaser the right to import the article into, and sell 
 it in, the United States, without the consent or license of the owner of the 
 United States patent. — Dickerson 1;. Matheson, 57 Fed. 524; 6 C. C. A. 
 466. 
 
 Boesch V. Graff, 133 U. S. 697.
 
 §505 
 
 INFRINGEMENT 455 
 
 The cases of Adams v. Burke, 17 Wall. 453; Hobbie v. Jennison, 149 U. S. 
 355; and Keeler v. Folding Bed Co., 157 U. S. in which it was held that one 
 who purchases patented articles of a territorial assignee within the district 
 of the United States assigned to him, may sell them again in the territory 
 owned by another, do not rule the case in hand. They rest upon the principle 
 that one who buys the patented article of a party who is legally empowered 
 to sell it under the patent has once paid tribute to the monopoly, and 
 has thereby acquired the right to use and sell the article he buys elsewhere 
 within the United States. But one who purchases in a foreign country, 
 of others than the owners of the United States patent or their vendees pays 
 nothing, either directly or indirectly to the owners of the patent, and there- 
 fore he'acquires no right to make, use, or vend the article which he buys 
 within the territorial limits of their monopoly. — Dickerson v. Tinling, 84 
 Fed. 192; 28 C. C. A. 139. 
 
 The right to sell the patented article in the United States is not governed 
 by the laws of Germany or of England, but by the laws of this nation ; and 
 under those laws and the patent before us Bayer & Co. has the " exclusive 
 right to make, use and vend " phenacetine in the United States. Thus, in 
 Boesch V. Graff, 133 U. S. 697, a case in which the defendant had purchased 
 in Germany, from one Hecht, who had the legal right to sell them there, cer- 
 tain burners, which had been patented in both Germany and the United 
 States, Chief Justice Fuller said: 
 
 " The right which Hecht had to make and sell the burners in Germany 
 was allowed him under the laws of that country, and purchasers from him 
 could not be thereby authorized to sell the articles in the United States, in 
 defiance of the rights of the patentees under a United States patent." 
 
 Nor does one who buys of the owner of the patent in a foreign country 
 under restriction free the article from the rule. — Dickerson v. Tinling, 84 
 U. S. 192; 28 C. C. A. 139. 
 
 Holliday v. Mattheson, 24 Fed. 185; Dickerson v. Matheson, 57 Fed. 524; Dick- 
 erson V. Matheson, 50 Fed. 73; Dickerson v. Matheson, 47 Fed. 319. 
 
 The complainant was the owner of the patent on phenacetine. A quantity 
 of the drug was smuggled, confiscated by the government, and sold to de- 
 fendant who undertook to sell the same. Complainant sued for infringe- 
 ment. Held: the defendant's main contention appears to be that, by passing 
 through the hands of the federal government, the infringing phenacetine 
 has been in some way freed from the operation of the latter's patent; that 
 the rights of the patentee, so far as they relate to this particular phenacetine, 
 have been abrogated by the action of the acting officers. This proposition 
 is wholly without support in any case cited in the brief. — Dickerson v. 
 Sheldon, 98 Fed. 621 ; 39 C. C. A. 191. 
 
 Belknap v. Schild, 161 U. S. 15; James v. Campbell, 104 U. S. 358. 
 
 The defendant bought a patented article smuggled in and condemned by 
 the government. On suit for infringement, Held: The defendant contends 
 that, by the condemnation proceedings, the statutory notice having been 
 given, the absolute title to the property sold passed to the purchaser 
 freed from any lien, interest, incumbrance, or reservation. This is correct 
 as to property sold. All persons having title to it, or lien upon it, or interest 
 in it, are cut off. But the owner of the patent is in none of these categories. 
 He has no title to, or lien on, or legal or equitable interest in, the infrin- 
 ging property. " The right of property in the physical substance, which is 
 the fruit of the discovery, is altogether distinct from the right in the dis- 
 covery itself." " Title in the thing manufactured does not give the right 
 to use the patented invention. No more does the patent right in the inven-
 
 506 
 
 456 THE FIXED LAW OF PATENTS 
 
 tion give title in the thing made in violation of the patent." — Dickerson v. 
 Sheldon, 98 Fed. 621 ; 39 C. C. A. 191. 
 
 Patersou v. Kentucky, 97 U. S. 506; Belknap v. Schild, 161 U. S. 24. 
 
 While it is true that the monopoly of the plaintiff's patents did not extend 
 beyond the limits of the United States, yet it would be no defense to say that 
 the patented article had been made in the United States only for the purpose 
 of being sold and used in a country to which the protection of the laws of 
 the United States did not extend. The patentee is entitled to monopoUze 
 the making of his device in the United States as well as a monopoly of there 
 selling or using it. — Bullock v. Westinghouse, 129 Fed. 105; 63 C. C. A. 607. 
 
 Dorsey v. Bradley, 12 Blatchf. 202; Ketchum v. Johnson, 8 Fed. 586; Adriance 
 V. McCormick, 55 Fed. 288; Gould v. Sessions, 67 Fed. 163. 
 
 The burden of proof was upon the complainant to show that the products 
 imported by defendants were derived from the sources named in the patent 
 after disclaimer. The testimony of the experts for complainant fails to 
 establish this fact, and it is therefore insufficient. — Societe v. Lueders, 142 
 Fed. 753; 74 C. C. A. 15. 
 
 § 506. Improvement — By an Improvement. 
 
 The patentee of an original invention cannot use a patented improvement, 
 nor can the patentee of an improvement use the original patented machine, 
 the one without the consent of the other. — Evans v. Eaton, 7 Wheat. 356; 
 5 L. Ed. 472. 
 
 The prior patentee cannot use an improvement without the consent of the 
 improver and the latter cannot use the original invention without the con- 
 sent of the former. — Smith v. Nichols, 88 U. S. 112; 22 L. Ed. 566. 
 
 Where an original machine and an improvement upon it are both patented, 
 neither patentee can use what does not belong to him. — Robertson v. Blake, 
 94 U. S. 728; 24 L. Ed. 245. 
 
 An improvement, although it may be a proper subject for a patent, in 
 use may include the prior invention and therefore infringe it. — Morley v. 
 Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 A machine operating on the sahie principle and performing the same func- 
 tions by analogous means or equivalent combinations, even though the 
 infringing machine may be an improvement of the original, and patentable 
 as such, is an infringement. — Norton v. Jensen, 49 Fed. 859; 1 C. C. A. 452. 
 
 McCormick v. Talcott, 20 How. 405; Wells v. Gill, 1 Ban. & A. 77; Kendrick v. 
 Emmons 2 Ban. & A. 208; Turrell v. Spaeth, 3 Ban. & A. 458; Colt v. Arms Co. 
 1 Fish. P. C. 108; Winans v. Railroad, 4 Fish. P. C 2; Whipple v. Mfg. Co. 4 Fish. 
 P. C. 29; Fruit Co. v. Curran, 8 Fed. 150. 
 
 It may be that these alleged infringing machines are an improvement upon 
 the invention covered by the patent in suit, but they still have all the essen- 
 tial elements of the best form of that invention, and therefore must be held 
 to infringe it. — Woodward v. Boston, 60 Fed. 283 ; 8 C. C. A. 622. 
 
 Since the case of O'Reilly v. Morse, 15 How. 61, it has been well settled that 
 a patent may issue for an improvement on an earlier invention either to the 
 original inventor or to a stranger. Of course, no one can use the improve- 
 ment without right or license to use the fundamental invention; but, on the 
 other hand, the right to use the original invention does not confer the right
 
 § 506 INFRINGEMENT 457 
 
 to use the improvement without license from the tributary inventor — 
 Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Even if it required the inventive faculty to make the change, it would 
 nevertheless be an invention tributary to the first, and therefore an in- 
 fringement. — Penfield v. Chambers, 92 Fed. 630; 34 C. C. A. 579. 
 
 It is true, ordinarily, that the mere fact that a machine effects better 
 results than the patented device, or that a patented device is applied to 
 purposes not foreseen by the patentee, does not reMeve against the charge 
 of infringement. — Davey v. Prouty Co. 107 Fed. 505; 46 C. C. A. 439. 
 
 U. S. V. Berdan, 156 U. S. 552. 
 
 In view of the facts that the respondents' device thus accomplishes a sub- 
 stantially different result from the complainant's, and has a substantial 
 function which the latter does not possess, and for which it was not intended, 
 and that, also, the latter can do the fine work for which the former was not 
 adapted, the remark made in the opinion of Judge Hawley, given in behalf 
 of the Circuit Court of Appeals for the Ninth Circuit, in Norton v. Jensen, 
 49 Fed. 859, seems pertinent: " It would be a perversion of the law to hold 
 a machine which can do certain kinds of work to be an infringement on a 
 patent for a different machine, which cannot do the same work." — Davey v 
 Prouty Co. 107 Fed. 505; 46 C. C. A. 439. 
 
 There are changes here and there — oftentimes for its betterment — of the 
 details, but they do not make the appellee's machine, any the less, the direct 
 offspring of Kitselman's thought, and its mechanical embodiment. — Kit- 
 selman v. Kokomo, 108 Fed. 632; 47 C. C. A. 538. 
 
 The fact that defendants' new structure is patented does not relieve them 
 from infringement. — Dowagiac v. Minnesota, 118 Fed. 136; 55 C. C. A. 86. 
 Clough V. Barker, 106 U. S. 166; Consolidated v. Crosby, 113 U. S. 157. 
 
 Conceding the validity of his patent for present purposes, it raises no 
 presumption against the earlier patent, and cannot furnish the defendant a 
 license to use with impunity any combination described in the prior patent. 
 — Ryder v. Schhchter, 126 Fed. 487; 61 C. C. A. 469. 
 
 It would be none the less an infringement, if the defendant, by additional 
 efforts, had produced a better barrel, provided that in the process of making 
 the improved barrel the defendant used any part of that device or method 
 for which East's patent was granted. — Farmers' v. Spruks, 127 Fed. 691; 
 62 C. C. A. 447. 
 
 Where a complainant patentee has accomplished a new result by a new 
 means, a defendant cannot escape the charge of infringement merely by 
 showing a later patent. The field covered by the primary patent is not free 
 for defendant's plowing without the owner's consent. True, the defendant 
 may have devised an independent method of arriving at the same result; 
 but it is also true that he may merely have added supplementary devices, 
 or improved some details of the primary patent. There is no presumption 
 either way. The facts are to be taken from the proofs. — Riesv. Barth, 136 
 Fed. 850; 69 C. C. A. 528. 
 
 Consolidated v. Crosby, 113 U. S. 157; Morley v. Lancaster, 129 U. S. 263; 
 National v. Interchangeable, 106 Fed. 693; Crown v. Aluminum, 108 Fed. 845; 
 Lamson v. Hillman, 123 Fed. 416; Western v. American, 131 Fed. 78.
 
 458 THE FIXED LAW OF PATENTS § 507 
 
 This is a mere addition to the patented machine, supplementing the func- 
 tion of one element, without changing the co-operative function of the wheels 
 in their combination. So, assuming that it is an important improvement, and 
 patentable as an improvement, its association with the means of the prior 
 patent is unauthorized without license from such patentee. — Columbia v. 
 Kokomo, 143 Fed. 116; 74 C. C. A. 310. Reversed, 189 U. S. 8. 
 
 Cochrane v. Deener, 94 U. S. 780; Cantrell v. Wallick, 117 U. S. 689; Hoyt v. 
 Home, 145 U. S. 302; Walker on Pat. sec. 347. 
 
 That an infringer may not justify himself on the ground that his act is 
 in accordance with the claims of a subsequent patent, especially where 
 such patent was declared, in the Patent Office proceedings, to be an improve- 
 ment upon the patent in suit, see Columbia v. Kokomo, 143 Fed. 116; 74 
 C. C. A. 310. 
 
 Possibly the improvement may be patentable, but that circumstance will 
 not relieve it from infringement, if it contains the specific device which Benja- 
 min made and patented. — Benjamin v. Dale, 158 Fed. 617; 85 C. C. A. 439. 
 
 Thomson-Houston v. Ohio, 130 Fed. 549; Perkins v. Buchanan, 129 Fed. 135. 
 
 These modifications and additions may be improvements, meritorious 
 enough to secure a patent for them, but they will not negative infringement 
 if a defendant uses the broad invention which a prior patentee has described 
 and covered in his claims. — International v. Bundy, 159 Fed. 464; 86 
 C. C. A. 494. 
 
 Electric v. Pittsburgh, 124 Fed. 933. 
 
 § 507. Improvement — Of an Improvement. 
 
 We think with the court below, that the patentee, if entitled to anything, 
 is only entitled to the precise device which he has described and claimed in his 
 patent; and as the defendants use a different device, they are not guilty 
 of infringement. — Bridge v. Excelsior, 105 U. S. 618; 26 L. Ed. 1190. 
 
 The defendant adopts another form. Under such circumstances the Todd 
 patent cannot be extended so as to embrace the defendant's form. The 
 latter is not a mere colorable departure from the form of Todd, but is a sub- 
 stantial departure. — Duff v. Sterling, 107 U. S. 636; 27 L. Ed. 517; 2 S. Ct. 
 487. 
 
 Merrill v. Yeomans, 94 U. S. 568- 
 
 As the claim comes down to the merest mechanical details, a change in 
 such details is not a colorable departure, but a substantial one, so far as this 
 patent is concerned. — B. & S. Fastener v. B. G. Fastener, 58 Fed. 818; 
 7 C. C. A. 498. 
 
 Duff V. Pump Co. 107 U. S. 636. 
 
 One who invents and secures a patent for a machine or combination which 
 first performs a useful function is protected thereby against all machines 
 and combinations which perform the same function by equivalent mechanical 
 devices; but one who merely makes and secures a patent for a slight im- 
 provement on a device or combination, is protected against those only who 
 use the very improvement that he describes and claims, or mere colorable 
 evasions of it. " If one inventor precedes all the rest, and strikes out some- 
 thing which includes and underlies all that they produce, he acquires a 
 monopoly, and subjects them to tribute. But if the advance toward the 
 thing desired is gradual, and proceeds step by step, so that no one can claim
 
 § 507 INFRINGEMENT 459 
 
 the complete whole, then each is entitled only to the specific form of device 
 which he produces, and every other inventor is entitled to his own specific 
 form, so long as it differs from those of his competitors, and does not include 
 theirs." — Adams Elec. Ry. v. Lindell, 77 Fed. 432; 23 C. C. A. 223. 
 
 Railway v. Sayles, 97 U. S. 554; McCormick v. Talcott, 20 How. 402; Stirrat v. 
 Mfg. Co. 61 Fed. 980; Griswold v. Harker, 62 Fed. 389. 
 
 If the inventor had been the first to perform the function which his ma- 
 chine did perform, he would be entitled to a liberal construction and a 
 reasonable range of equivalents; but the improvement being narrow and 
 specific infringement, to be established, must lie within his narrow and specific 
 field, see — MacCoU v. Crompton, 95 Fed. 987; 37 C. C. A. 351. 
 
 Where the advance towards the desideratum is gradual, and several in- 
 ventors form different combinations which accomplish the desired result with 
 varying degrees of operative success, each is entitled to his own combination 
 so long as it differs from those of his competitors and does not include theirs. 
 — National v. Interchangeable, 106 Fed. 693; 15 C. C. A. 544. 
 
 Railway Co. v. Sayles, 97 U. S. 554; McCormick v. Talcott, 20 How. 402; 
 Stirrat v. Mfg. Co., 61 Fed. 980; Griswold v. Harker, 62 Fed. 389; Adams v. 
 Lindell, 77 Fed. 432. 
 
 Comparing the two devices, not with respect to the point of exit, but in 
 respect to the means by which the exit is secured, it is clear that the de- 
 fendant's organization involves an original conception, is meritorious and 
 ingenious, and not an infringement. — U. S. Envelope v. Sherman, 122 Fed. 
 464; 58 C. C. A. 624. 
 
 In order to establish the infringement of a mere improvement in a machine 
 of former devices already in use for accomplishing a similar purpose, the 
 means must be substantially the same, operating in the same way, and ac- 
 complishing the same result. — Rich v. Baldwin, 133 Fed. 920; 66 C. C. A. 
 464. 
 
 Ross-Moyer v. Randall, 104 Fed. 355. 
 
 The patentee of a mere improvement cannot treat another as an infringer, 
 who has improved the original machine by use of a different form or combina- 
 tion performing the same function. Where the result is old, and the novelty 
 consists only of improvements in a known machine for producing a known 
 result, the patentee must be tied down strictly to the mode which he has 
 described for effecting such improvements. — Greene v. Buckley, 135 Fed. 
 520; 68 C. C. A. 70. 
 
 McCormick v. Talcott, 20 How. 402; Proctor v. Bennis, 36 Ch. Div. 740. 
 
 Where neither a new result nor a new principle of operation in producing 
 the result has been achieved, and the patentee has merely improved upon 
 the old way of accomplishing the old result, the presumption is that his 
 patent is not infringed by a later patent for improvements upon the same old 
 way of accomplishing the same old result. That is, presumably, each is an 
 independent improver in a field that was as open to one as the other — 
 presumably the thought of the one has not overlapped the thought of the 
 other. But the presumption is not conclusive, and, even in cases of the 
 narrowest patents, it is always open for the complainant to show that the 
 defendant has appropriated his property. — Ries v. Barth, 136 Fed. 850; 69 
 C. C. A. 528. 
 
 The differences between the complainant's patent and the prior art, we 
 think, are no greater than are the differences between the patents of the
 
 460 THE FIXED LAW OF PATENTS §§ 508-510 
 
 complainant and defendants. To these two patents we think is properly 
 aDDlicable under the proofs the rule in McCormick v. Talcott, 20 How. 402. 
 
 — Standard v. Ramsay, 143 Fed. 972; 75 C. C. A. 158. 
 
 It is obvious that since the location of the valve in a distinct recess or 
 chamber alone prevented the Low patent from completely anticipating 
 complainant's, that any device in which the valve is located in a distmct 
 recess or chamber, as in Low, cannot infringe the complainant's patent. — 
 Chicago V. Cleveland, 159 Fed. 143; 86 C. C. A. 51. 
 
 § 508. Intent. 
 
 The proposition that the application of this patent depend upon the in- 
 dividual intent of the operator, overlooks the essential nature of a process 
 patent. The directions and specifications of such a patent are addressed to 
 those engaged and skilled in the art. It professes to disclose a method of 
 procedure not the particular instrumentality employed. — Carnegie v. 
 Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 But the owner of a patent is entitled to protection against the repetition 
 of accidental infringements. — Thompson v. Bushnell, 96 Fed. 238; 37 
 C. C. A. 456. 
 
 If the thing done is wrongful, the lack of intention will not excuse. — 
 Globe- Wernicke v. Macy, 119 Fed. 696; 56 C. C. A. 304. 
 
 2 Greenl Ev. 270- Chatfield v. Wilson, 28 Vt. 49; Heath v. Unwin, 15 Sim. 552; 
 Stead V. Anderson, 4 C B. 806; Parker v. Hulme, 1 Fish. P. C 44. 
 
 The position of both the defendant and his expert seems to be that though 
 the defendant infringes, the infringement is unintentional. This is enough; 
 it is not an excuse that it is less effective than complainant's machine. — 
 Cimiotti v. Bowsky, 143 Fed. 508; 74 C. C. A. 617. 
 
 § 509. License — Implied. 
 
 After a machine has been constructed by any person with the inventor's 
 knowledge and consent before the application for a patent, every other 
 person who either sells or uses that machine is within the protection of the 
 section (4899) and needs no new consent or permission of the inventor. 
 
 — Wade V. Metcalf, 129 U. S. 202; 39 L. Ed. 661; 9 S. Ct. 271. 
 
 § 510. License — By Licensee. 
 
 The defendants first took a license from the patentee, and under it and 
 under his directions erected substantially the same apparatus now used. 
 Receiving what they regarded as additional light, they refused to continue 
 payment of royalty, and put the complainant to his legal remedy. — Tilgh- 
 man v. Proctor, 102 U. S. 707; 26 L. Ed. 279. 
 
 If the licensee's rights have been infringed by the owner, and third persons 
 confederating with the owner, there is no reason why all the infringers should 
 not be joined as defendants. — Waterman v. Shipman, 55 Fed. 982; 5 
 C. C. A. 371. 
 
 Perry v. Littlefield, 17 Blatchf. 272. 
 
 The defendant, while licensee, made a large quantity of electrical fixtures 
 within and under the terms of the license. He terminated the license of 
 his own accord, and thereafter installed the fixtures. Held: It was not the 
 intention of the agreement that goods could be accum.ulated by the hcensee
 
 § 511 INFRINGEMENT 461 
 
 during the continuance of the Hcense and, ahhough not ordered before its 
 voluntary cancellation, could be subsequently sold in competition with other 
 licensees, and such sales made after cancellation were unauthorized. — 
 Pelzer v. Binghamton, 95 Fed. 823; 37 C. C. A. 288. 
 
 The contract licensed defendant to use " lead presses containing any one 
 or more of the devices described and claimed in said letters patent." It is 
 argued that thereby defendant became liable for the use of any part of the 
 patented press, even though such part was only a single element of a pat- 
 ented combination. This contention is without merit. — Western v. Rob- 
 ertson, 142 Fed. 471 ; 73 C. C. A. 587. 
 
 A licensee under the first patent who uses the mechanism therein secured 
 cannot be held an infringer under the second patent. In order to hold him 
 it is necessary to show that he uses the devices of the first patent plus the 
 improvements of the second patent; not any and all improvements calcu- 
 lated to produce similar results, but the precise improvements described and 
 claimed. — Wagner v. Wycoff, 151 Fed. 585; 81 C. C. A. 129. 
 
 (The licensee refused to pay license fees and threatened to reduce price, 
 and refused to mark articles with licensed patent.) 
 
 In addition to an accounting an injunction is prayed to restrain appellee 
 from further making, using, or selling stackers in violation of appellant's 
 rights as stated, or except in strict comphance with the terms of the license. 
 This is not a bill for the specific performance of a contract. The court is 
 not asked to compel appellee to make and sell stackers under the license, 
 and to see to it that appellee maintains the price, puts on the patent marks, 
 and accurately reports its sales. So far as this bill is concerned, appellee 
 may quit the stacker business any minute he sees fit. What is sought is an 
 injunction against appellee's unlawful invasion of appellant's lawful patent 
 monopoly. If appellee had not invaded, or if the monopoly is unlawful, 
 appellant fails. If appellant had chosen to accept appellee's repudiation 
 of the license, a bill to exclude appellee utterly from the domain of the pat- 
 ents would have lain. By declining to recognize the fact or the right of 
 repudiation, appellant did not estop itself from asking to exclude appellee 
 from that part of the domain which had not been granted, namely, the con- 
 trol of prices and methods. Stripped of all averments in relation to appel- 
 lant's business built up on Hcenses, the bill states a good cause of action 
 for infringement of the patents. These averments, as appellant rightly 
 claims, show an aggravation of the injury resulting from the infringement, 
 and constitute, therefore, an additional appeal for injunctive relief. That 
 the bill properly invokes the aid of equity we have no doubt. — Indiana v. 
 Case, 154 Fed. 365; 83 C. C. A. 343. 
 
 Eureka v. Bailey, 11 Wall. 488; Kinsman v. Parkhurst, 18 How. 289; Hardin v. 
 Boyd, 113 U. S. 763; West. Un. v. Un. Pacific, 3 Fed. 423; McKay v. Smith, 29 
 Fed. 295; Hat Co. v. Porter, 34 Fed. 745; Ball v. Ball, 36 Fed. 309; Am. v. 
 Grossman, 57 Fed. 1021; Am. v. Grossman, 61 Fed. 888; Heaton v. Eureka, 77 
 Fed. 294; Victor v. Fair, 123 Fed. 424; Rupp v. Elliott, 131 Fed. 730. 
 
 § 511. License — Patentee. 
 
 That the inventor or licensor may infringe the rights of his grantee and 
 be sued therefor in infringement. — Littlefield v. Perry, 88 U. S. 205; 22 
 L. Ed. 577. 
 
 There is no reason or authority for the proposition that a licensee who has 
 the exclusive right to manufacture and sell a patented article cannot maintain 
 a suit in equity against the owner of a patent ; if the latter is guilty of an
 
 462 THE FIXED LAW OF PATENTS §§ 512-514 
 
 infringement by making or selling himself, to redress the wrong occasioned 
 thereby, or that such a suit does not arise under the patent laws of the United 
 States. — Waterman v. Shipman, 55 Fed. 982; 5 C. C. A. 371. 
 Littlefield v Perry, 21 Wall. 205. 
 
 § 512. License — Territorial. 
 
 The sale of a patented article by an assignee within his territory carries 
 the right to use it everywhere, notwithstanding the knowledge of both 
 parties that a use outside the territory is intended. — Hobbie v. Jennison, 
 149 U. S. 355; 37 L. Ed. 766; 13 S. Ct. 879. 
 
 Adams v. Burks, 84 U. S. 453; Birdsall v. Shaliol, 112 U. S. 485; Wade v. 
 Metcalf, 129 U. S. 202; Boesch v. Graff, 133 U. S. 697. 
 
 § 513. License — Miscellaneous. 
 
 The purchase of a device and the license to use it does not extend to and 
 operate as a license to construct thereon another and infringing device. — 
 Vermont v. Gibson, 56 Fed. 143; 5 C. C. A. 451. 
 
 Infringement by the defendant was not denied, and the validity of the 
 patent could not be disputed by one who undertook to justify his use of 
 it under a license. — Piatt v. Fire Extinguisher, 59 Fed. 897; 8 C. C. A. 357. 
 
 Kinsman v. Parkhurst, 18 How. 289; Brown v. Lapham, 27 Fed. 77. 
 
 An unconditional or unrestricted sale by the patentee, or by a licensee 
 authorized to make such sale, of an article embodying the patented invention 
 or discovery, passes the article without the limits of the monopoly, and 
 authorizes the buyer to use or sell without restriction; but to the extent 
 that the sale is subject to any restriction upon the use or future sale the 
 article has not been released from the monopoly, but is within its limits, and, 
 as against all who have notice of the restriction, it is subject to the control 
 of whoever retains the monopoly. This results from the fact that the monop- 
 oly is a substantial property right conferred by law as an inducement or 
 stimulus to useful invention or discovery, and that it rests with the owner 
 to say what part of the property he will reserve to himself and what part 
 he will transfer to others, and upon what terms he will make the transfer. 
 — National v. Schlegel, 128 Fed. 733; 64 C. C. A. 594. 
 
 Bement v. National, 186 U. S. 70; Victor v. The Fair, 123 Fed. 424; Diekerson 
 V. Tinling, 84 Fed. 192; Heaton v. Eureka, 77 Fed. 288; Cortelyou v. Lowe, 
 111 Fed. 1005; Edison i'. Kaufman, 105 Fed. 960; Edison v. Pike, 116 Fed. 863; 
 Fowle V. Park, 131 U. S. 88; Garst v. Harris, 177 Mass. 72. 
 
 Building additional machines without consent of licensor. For a most 
 remarkable holding in the Ninth Circuit, Ross, J., see — Plotts v. Central, 143 
 Fed. 901 ; 75 C. C. A. 7. 
 
 It is familiar law that articles manufactured under the term of the patent 
 are taken out of the limits of the monopoly and become part of the common 
 property of the country. When they are sold by the patentee or his licensee, 
 the royalty having been previously paid or secured, the patentee, having 
 once received his royalty, cannot treat the seller or user as an infringer. — 
 Goshen v. Single Tube, 166 Fed. 431 ; C. C. A. 
 
 Morgan v. Albany, 152 U. S. 425; National v. Schlegel, 128 Fed. 733. 
 
 § 514. Machine. 
 
 A machine made up and complete before application for patent is not an 
 infringement. (Which statement is to be qualified, I think by the elements
 
 §§ 515-517 INFRINGEMENT 463 
 
 of independent invention and good faith.) — Troy v. Odiorne, 58 U. S. 73; 
 15 L. Ed. 37. 
 
 § 515. Machine and Manufacture. 
 
 Right to use machine carries with it the right to manufacture. — Morgan 
 V. Albany, 152 U. S. 425; 38 L. Ed. 500; 14 S. Ct. 627. 
 
 Title in the thing manufactured does not give the right to use the pat- 
 ented invention; no more does the patent right in the invention give title 
 in the thing made in violation of the patent. — Belknap v. Schild, 161 U. S. 
 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 If the apparatus used by the appellant is so far different from that of the 
 appellee that it does not infringe, the process, which, in mechanics, is merely 
 the exercise of the functions of the machine or apparatus, cannot be an 
 infringement of any right secured by the patent. — American v. Cleveland, 
 158 Fed. 978; 86 C. C. A. 182. 
 
 § 516. Notice. 
 
 In absence of marking articles " patented," notice is necessary. — Dunlap 
 V. Schofield, 152 U. S. 244; 38 L. Ed. 426; 14 S. Ct. 576. 
 
 It is impossible to read the communications warning the complainant's 
 customers against seUing its harrows, with which the defendant seems to 
 have flooded the country, without being led to believe that they were in- 
 spired by a purpose to intimidate the complainant's customers, and coerce 
 the complainant, by injuring its business, into becoming a licensee of the 
 defendant In \new of its failure to bring an infringement action, under 
 circumstances which made an action practically compulsory, the defendant 
 cannot shelter itself behind the theory that its circulars and letters were 
 merely legitimate notices of its rights. We are satisfied that they w-ere sent, 
 not for the purpose of self-protection, but in execution of the defendant s 
 threat to stop the complainant from building harrows by other means than 
 legal remedies. — Adriance v. National, 121 Fed. 827; 58 C. C. A. 163. 
 
 Undoubtedly the owner of a patent is acting within his rights in notifying 
 infringers of his claims, and threatening them with litigation if they continue 
 to disregard them; nor does he transcend his rights when, the infringer being 
 a manufacturer, he sends such notices to the manufacturer s customers, if 
 he does so in good faith, belie^4ng his claims to be valid, and in an honest 
 effort to protect them from invasion. — Adriance v. National, 121 bed. 827; 
 58 C. C. A. 163. 
 
 § 517. Prior Patent. 
 
 The question of infringement or non-infringement must be determined 
 bv the hmitations placed upon this patent by the state of the art when it 
 was issued. - Griswold v. Marker, 62 Fed. 389; 10 C. C. A. 435. 
 
 McCormick v. Talcott, 20 How. 402. 
 
 The question of infringement or non-infringement in this case, as in every 
 case must be determined under this rule by the limitations placed upon the 
 patent by the state of the art when it was issued, and by the specifications 
 and claims of the inventor. — Murphy v. Excelsior, /6 Fed. 965; 22 C. t. A. 
 658.
 
 464 THE FIXED LAW OF PATENTS §§518-519 
 
 § 518. Process — Additions. 
 
 The defendant does not use the process any the less because he uses some- 
 thing in addition to the process. — Clerk v. Tannage, 84 Fed. 643; 28 C. 
 C. a!501. 
 
 Quotg. Lelance v. Habermann, 53 Fed. 380. 
 
 Tilghman v. Proctor, 102 U. S. 730. 
 
 The addition of a step to a process which does not change the result does 
 not avoid infringement. — Ford Co. v. Tannage, 84 Fed. 644; 28 C. C. A. 
 503. 
 
 § 519. Process — Tests of. 
 
 The patentee does not claim to be the inventor of the constituents. The 
 exclusive use of them singly is not secured to him. What is secured is their 
 use when arranged in the process. Unless one of them is employed in making 
 up the process, as an element of it, the patentee cannot prevent others from 
 using it. As well might the patentee of a machine, every part of which is an 
 old and known device, appropriate the exclusive use of each device, though 
 employed singly, and not combined with others as a machine. — Mowry v. 
 Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 Unless it was shown that the process was followed to produce the defend- 
 ant's article, or unless it is shown that the article could not be produced by 
 any other process, the defendant's article cannot be identified as the prod- 
 uct of the process. — Cochrane v. Badische, 111 U. S. 293; 28 L. Ed. 433; 
 4 S. Ct. 455. 
 
 It must be borne in mind that, in the practical determination of questions 
 of alleged infringement, the problem is very different when we are dealing 
 with a chemical compound than it is when we are dealing with a machine. 
 Such observation as the eye can give to the machine at rest and in action, 
 illuminated by a comparison of the co-ordination of its parts with that of 
 like parts in other machines, will be ordinarily sufficient to determine its 
 classification. Far different is it with a chemical compound. No mere ob- 
 servation by the eye, supplemented even by the taste and touch, can go 
 very far towards a solution of the problem. The same mysterious forces 
 through whose action and reaction the compound was produced must be 
 availed of to disintegrate and disrupt, before there can be any assurance 
 of what it is we have before us. Hence it is that so-called " tests "are de- 
 vised by those skilled in the art and science of chemistry, which, in their 
 opinion, as experts, will reveal the secrets of the composition sufficiently to 
 make the answer to the question positive enough to support the judgement 
 of a court. 
 
 An inventor takes certain starting materials, and subjects them to a 
 process he has devised. The result is a product. If he sufficiently describes 
 the starting materials and the process in his patent, he may claim the pro- 
 duct, being new; but, if he simply defines what he claims as the " product of 
 his process," he might find it an extremely difficult matter to prove infrinfre- 
 ment. " Every patent for a product or composition of matter must identify 
 it so that it can be recognized, aside from the description of the process for 
 making it, or else nothing can be held to infringe the patent which is not 
 made by that process," Cochrane v. Badische, 111 U. S. 293. Now, there are 
 many tests that may be applied to two bodies which are being compared in 
 order to determine whether they are or are not identical. The number of these 
 tests may be multiplied indefinitely, for the skill, the experience, the scientific 
 ingenuity of the chemist, will ever devise new ones in the future, as they have
 
 § 520 INFRINGEMENT 465 
 
 the old ones in the past. Some of these tests will be of great significance ; some, 
 almost crucial ; others will be of but minor importance. Their relative value, 
 no doubt, may change as science goes sweeping on from point to point; 
 but it must be sound law, as it is reasonable common sense, to hold that the 
 tests of prime importance in a suit for infringement are those v/hich the 
 patent itself prescribes. The inventor certainly may be assumed to know 
 what it is that he has invented. If any one is able to describe the product 
 of his inventive skill, it is himself. He surely knows the earmarks of the 
 thing he seeks to patent, and when, out of the multitudinous qualities which 
 his product may exhibit under varying conditions and in different relations, 
 he has selected and set forth in his patent a chosen few, surely these should 
 be accepted as the distinguishing earmarks, — the characteristic stigmata 
 of the product his patent is to cover. It may be that, after it is found that 
 the body under investigation responds to all the tests of a patent, science 
 may yet be able to demonstrate by other tests that, nevertheless, it is not 
 the new product therein patented; that the patentee had selected identifying 
 tests broader than he was entitled to, and which would cover products not 
 within the range of his discovery. But when the body under investigation 
 fails to respond to the specific tests the patentee has himself selected, he 
 certainly cannot fairly insist that it is identical with his product. — Matheson 
 V. Campbell, 78 Fed. 910; 24 C. C. A. 284. 
 
 Complete identity is not necessary. As was stated by Mr. Justice Curtis 
 in Winans v. Denmead, 15 How. .3.30: i • j 
 
 " If the machine complained of were a copy, in form, of the machme de- 
 scribed in the specification, of course, it would be at once seen to be an in- 
 fringement. It could be nothing else. It is only ingenious diversities of 
 form and proportion, presenting the appearance of something unhke the 
 thing patented, which give rise to questions; and the property of inventors 
 would be valueless, if it were enough for the defendant to say : ' Your improve- 
 ment consisted in a change of form; you describe and claim but one form; 
 I have not taken that, and so have not infringed.' " ,• , • i 
 
 This was said in a case where the original patent was for a cylindrical 
 ore body in a railroad car, where the structure held to infringe was hexago- 
 nal. But it is equally applicable to inventions for processes. The patentee 
 is entitled to claim, not only that which he precisely claims, but, where he 
 claims for a combination or process embodying the use of certain elements, 
 his claims will include such combinations and processes as adopt substan- 
 tially the same means; where the variation is only such as common intelli- 
 gence in that art would suggest. Incidental appliances m operating the sub- 
 stantial means invented would not prevent a second patented invention from 
 infringing upon the first. The language of some of the Bradley claims is 
 broad enough to admit the admixture of carbon, if his invention was a primary 
 one and the employment of carbon was a mere auxiliary of the current 
 in effecting the reduction, according to the doctrine of Machine Co. -y. Lan- 
 caster 129 U. S. 263; Proctor v. Bennis, 36 Ch. Div. 740; McCormick v. 
 Aultman, 69 Fed. 371 ; and kindred cases. — Cowles v. Lowrey, 79 Fed. 331 ; 
 24 C. C. A. 616. 
 
 Two processes cannot be said to be substantially alike where the successive 
 steps which they involve are different, and where, as in this instance, several 
 of the steps which are requisite to the one are wholly omitted from the other 
 identity of method cannot exist. — U. S. Glass v. Atlas, 90 Fed. 724; 66 
 C. C. A. 254. 
 
 § 520. Process — Miscellaneous. 
 
 The defendants seeing the utility of the process, and believing that they 
 can use a method somewhat similar without infringing, put a little hme into
 
 466 THE FIXED LAW OF PATENTS §§ 521-522 
 
 the mixture, and find that it helps the operation, and that they do not have 
 to use so high a degree of heat as would otherwise be necessary, btill, the 
 degree of heat required is very high, at least a hundred degrees above the 
 boiling point; and a strong boiler or vessel is used in order to restrain the 
 water from rising into steam. Can a bolder case be conceived of an attempted 
 evasion and a real infringement of a patent? — Tilghman v. Proctor, 102 
 U. S. 707; 26 L. Ed. 279. 
 
 A process is not infringed by the use of any number of its stages less than 
 all of them. — Goodyear v. Davis, 102 U. S. 222; 26 L. Ed. 149. 
 
 Where the patent is for specific process, not being generic, it must be shown 
 that the defendants used all the different steps of that process, or there could 
 be no infringement. — Royer v. Coupe, 146 U. S. 524; 36 L. Ed. 1073; 13 
 S. Ct. 166. 
 
 It may be, as suggested, that one person may, and in ignorance of the 
 patented method, make use of a reservoir merely as such (the essential 
 feature of the process) and without any design to avail himself of the pat- 
 ented process; but such a fact would not deprive the discoverer of the 
 process of the protection of his patent. Such a supposed case might present 
 a question of fact for a court or jury, and if it were made to appear that the 
 party charged with infringement had, as in this case, changed the instru- 
 mentalities used by him after a new method had been disclosed, and par- 
 ticularly if he .had for the first time used such a special device necessary to 
 that process, a jury might well refuse to beheve and find that the defendant 
 was only following the old methods of procedure, and not seeking to avail 
 himself of the plaintiff's invention. — Carnegie v. Cambria, 185 U. S. 403; 
 46L. Ed. 968; 22 S. Ct. 698. 
 
 § 521. Product. 
 
 A had a patent on a machine. B made a contract with C for a certain 
 number of articles of the character made by such machine. C made the 
 articles by A's machine. Held: that unless the contracts were merely colorable 
 and evasive, B was not liable in purchasing the articles made by C upon a 
 machine which infringed A's patent. — Keplinger v. De Young, 10 Wheat. 
 358; 6L. Ed. 341. 
 
 If it was a patent for a process, it would not be infringed by selling the 
 product, and no conditions should have been annexed to the exercise of 
 the vendor's rights. The broad proposition that the vendor of a product 
 which has been made in infringement of a patented process is an infringer, 
 or liable to any extent through the patentee, is untenable and does not 
 require discussion. The patentee's remedy is against the manufacturer. 
 Welsbach v. Union, 101 Fed. 131 ; 41 C. C. A. 255. 
 
 Merrill v. Yeomans, 94 U. S. 518. 
 
 § 522. Reissue. 
 
 An infringement cannot be sued for which took place prior to the granting 
 of the reissue. — Stimpson v. Railroad, 4 How. 380; 11 L. Ed. 1020. 
 
 Where reissue contains claim void for expansion and also original claim 
 the expanded claim does not invalidate the original claim. — Leggett v. 
 Standard, 149 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. 
 
 Gage V. Herring, 149 U. S. 640.
 
 i 523 INFRINGEMENT » 467 
 
 § 523. Repairs — Rebuilding. 
 
 Complainant's patent covered a bale tie, consisting of a buckle and band, 
 which they sold marked, " Licensed to use once only." Defendants bought 
 as scrap iron the used buckles and bands, straightened and united them 
 where the band had been cut, and sold them for use. Held: Infringement. 
 — American v. Simmons, 106 U. S. 89; 27 L. Ed. 79; IS. Ct. 52. 
 
 Distinguisliing Wilson v. Simpson, 9 How. 109. 
 
 It is not within the rule of right to make repairs to reconstruct the old 
 device to the extent of making one substantially new. — Davis v. Edison, 
 60 Fed. 276; 8 C. C. A. 615. 
 
 Citg. and explaining Chaffee v. Belting Co. 22 How. 217; Adams v. Burks, 17 
 Wall. 453; Hobbie v. Jennison, 149 U. S. 355; Wilson v. Simpson, 9 How. 109; 
 Cotton Tie v. Simmons, 106 U. S. 89. 
 
 The reconstruction of a destroyed or wornout combination is an infringe- 
 ment. — Thomson-Houston v. Kelsey, 75 Fed. 1005; 22 C. C. A. 1. 
 Disting. Wilson v. Simpson, 9 How. 109. 
 Cotton V. Simmons, 106 U. S. 89; Davis v. Edison 60 Fed. 276. 
 
 The machine referred to in the bill was entirely dismantled, except its 
 legs, and a new machine built thereon. — Pacific v. Alaska, 100 Fed. 462; 
 40 C. C. A. 494. 
 
 When the patented machine has passed outside the monopoly by sale and 
 purchase, the patentee has no right to impose any restrictions on its use for 
 his own benefit. He cannot forbid the further use of the machine because 
 it is out of repair in consequence of the wearing out or breaking of some 
 of its parts, and so oblige the purchaser to buy a new machine. The pur- 
 chased machine has become the individual property of the purchaser, and 
 is like any other piece of property which he owns. He may sell it, or he may 
 use it so long as its usefulness lasts, and then throw it away, or dispose of 
 it for junk. He may prolong its life and usefulness by repairs more or less 
 extensive, so long as its original identity is not lost. He is only prohibited 
 from constructing a substantially new machine. He cannot, under pretext of 
 repairs, build another machine. — Goodyear v. Jackson, 112 Fed. 146; 50 
 C. C. A. 159. 
 
 Wilson V. Simpson, 9 How. 13; Adams v. Burks, 17 Wall. 453; Chaffee v. 
 Belting, 22 How. 217; Mitchell v. Hawley, 16 Wall. 544; Hobbie v. Jennison, 149 
 U. S. 355; Cotton-Tie v. Simmons, 106 U. S. 89; Aikin v. Print, 2 Cliff. 435; 
 Morgan v. Albany, 152 U. S. 425; Gottfried v. Brewing, 5 B. & A. 5; Davis v. 
 Edison, 60 Fed. '276. 
 
 In approaching the question of infringement by the purchaser of a pat- 
 ented machine (infringement by repairing), it is important to bear in mind 
 what the patentee sold and the purchaser bought. The patentee has parted 
 with his machine and the monopoly that goes with it, and the purchaser 
 has bought the machine with the right to use the invention until the machine 
 is worn out. When the machine is worn out or substantially destroyed, 
 his right to use the patented invention ceases; and when he rebuilds his 
 machine, and thereby makes substantially a new machine, it becomes the 
 subject of the patentee's monopoly, the same as in the case of any other 
 person who unlawfully makes the patented machine. — Goodyear v. Jackson, 
 112 Fed. 146; 50 C. C. A. 159. 
 
 It was not seriously contended at the argument that the repair to a single 
 tube would not infringe the claim. It is equally clear that replacing the entire
 
 468 THE FIXED LAW OF PATENTS § 524 
 
 series is an infringement. Between these two extremes lies a debatable ground, 
 the precise limits of which cannot be determined in advance. Whether 
 the bounds of legitimate repair have been exceeded must be determined 
 upon the facts of each case as it is presented. The mere fact that the 
 patentee is willing to replace the injured part and make the repair is 
 not alone sufficient to vest in him a monopoly of this work. If the pur- 
 chaser sees fit to make necessary repairs himself, or employs others for that 
 purpose, he has a right to do so, even though it be shown that he has there- 
 tofore been guilty of infringement. The commission of an unlav/ful act in 
 the past does not warrant the prohibition of lawful acts in the future. — 
 Morrin v. White, 143 Fed. 519; 74 C. C. A. 466. 
 
 To return to use something injured or lost, or to substitute for something 
 defaced or destroyed another thing substantially identical, is to repair. 
 The right of general repairing has not been questioned; but what plaintiff 
 in error has done is not to mend or better broken or other records, nor even to 
 furnish new records identical with those originally offered by the Victor 
 Company, but to place upon new disks such other sound records as are 
 thought to command a market, and to induce users of the patented machine 
 not to replace, but to increase their stock of recorded words and music. 
 The right to repair is measured by the right of the owner of the patented 
 article, and such owner, when doing what is above outHned, is no more 
 repairing his machine than is one repairing a stereopticon by changing the 
 pictures therein. — Leeds v. Victor, 154 Fed. 58; 85 C. C. A. 170. 
 
 § 524. Repairs — What Constitute. 
 
 We admit, for such is the rule in Wilson v. Rousseau, 4 How. that when 
 the material of the combination ceases to exist, in whatever way that may 
 occur, the right to renew it depends upon the right to make the invention. 
 If the right to make does not exist, there is no right to build the combination. 
 But it does not follow when one of the elements of the combination has 
 become so much worn as to be inoperative, or has broken, that the machine 
 no longer exists for the restoration to its original use by the owner, who 
 has bought it to use. When the wearing or injury is partial, then repair is 
 restoration, and not reconstruction. — Wilson v. Simpson, 9 How. 109; 
 13 L. Ed. 66. 
 
 Of course, when we speak of a right to restore a part of a deficient combi- 
 nation, we mean the part of one entirely original, and not of any other pa- 
 tented thing which has been introduced into it, to aid its intended perform- 
 ance. Nor is it meant that the right to replace extends to everything that 
 may be patented. Between repairing and replacing there is a difference. 
 — Wilson V. Simpson, 9 How. 109; 13 L. Ed. 66. 
 
 If the patented article can be repaired by means which merely keep it 
 up to the performance of its duty, such is permissible ; but if it is so broken 
 or worn out as to require replacement it cannot be effected by repair. — 
 Wilson V. Simpson, 9 How. 109; 13 L. Ed. 66. 
 
 Complainant's patent covered a bale tie, consisting of a buckle and band, 
 which they sold marked, " Licensed to use once only." Defendants bought 
 as scrap iron the used buckles and bands, straightened, and riveted them 
 together where the band had been cut, and sold them for use. Held: Infringe- 
 ment. — American v. Simmons, 106 U. S. 89; 27 L. Ed. 79; IS. Ct. 52. 
 
 Distinguishing Wilson v. Simpson, 9 How. 109. 
 
 Discussed with cases. — Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 
 500; 14 S. Ct. 627.
 
 § 524 INFRINGEMENT 469 
 
 The right to repair a patented device is a right which goes with the device 
 when it is sold ; but that right does not include a right to rebuild the device 
 in the sense of making it a new device. — Davis r. Edison, 60 Fed. 276; 8 
 C. C. A. 615. 
 
 Chaffee v. Belting Co. 22 How. 217; Adams v. Burks, 17 Wall. 453; Hobbie v. 
 Jennison, 149 U. S. 353; Wilson v. Simpson, 9 How. 109; Cotton Tie v. Simmons, 
 106 U. S. 89. 
 
 The right to replace a broken or injured part by a new one, from any person 
 who can supply the article, should be conceded by the owners of the patent. 
 
 — Thomson-Houston v. Kelsey, 75 Fed. 1005; 22 C. C. A. 1. 
 
 The rule is well established that one who purchases a machine or mechan- 
 ical contrivance consisting of several distinct parts, which, as a whole, is 
 covered by a patent, has the right, by virtue of his purchase from the pat- 
 entee, to repair a part of the machine or device which happens to be broken 
 through accident, or which becomes so far worn as to render the machine 
 inoperative, provided the machine as a whole, still retains its identity, and 
 what is done in the way of rendering it operative does not amount to recon- 
 struction, and pro\'ided, further, that the part so replaced is not separately 
 covered by a patent. The sale of a patented article by the patentee frees 
 it from the grasp of the monopoly, and the purchaser may thereafter exer- 
 cise the same dominion over it which he exercises over his other property. 
 The right to thus repair a patented device is incidental to ownership. The 
 fact that it is patented does not lessen the owner's right to put it in order 
 when it gets out of repair, uidess, considered as a whole, it is worn out and 
 useless. When a patented machine is accidentally destroyed, or when it is 
 practically worn out, the owner thereof, under the guise of repairing it, 
 cannot make a new machine. In such cases he must cast it aside and buy 
 a new one from the patentee. — Shickle v. St. Louis, 77 Fed. 739 ; 23 C. C. A. 
 433. 
 
 Wilson V. Simpson, 9 How. 109; Chaffee v. BeUing, 22 How. 217; Tie Co. v. 
 Simmons. 106 U. S. 89; Farrington v. Board, Fed. Cas. 4,687; Gottfried v. 
 Brewing Co. 8 Fed. 322; Aikin v. Print, 1 Fed. Cas. 113; Singer v. Springfield, 34 
 Fed. 393; Wallace v. Holmes, Fed. Cas. 17,100. 
 
 It is manifest that a broken or worn-out cam effected only a partial de- 
 struction of the patented combination composed of three separate groups 
 of mechanism, and that the replacement of the old cam with a new one was 
 not a substantial rebuilding of the combination. If the patented invention 
 had been for this particular form of cam, or had been simply for an improved 
 feed, and the whole invention had resided substantially in the cam, the case 
 would have presented a different aspect. — Goodyear v. Jackson, 112 Fed. 
 146; 50C. C. A. 159. 
 
 When the patent is for a single thing, like a knitting needle, for example, 
 and not for a device or machine composed of several things or elements 
 combined, it is obvious that the replacement of an old needle by a new one 
 in a knitting machine is not repair, but a reproduction of the patented thing. 
 
 — Goodyear v. Jackson, 112 Fed. 146; 50 C. C. A. 1.59. 
 
 Aikin v. Manchester. 2 Cliff. 435; Morgan v. Albany, 152 U. S. 425; Wilson v. 
 Simpson, 9 How. 109. 
 
 A practical reconstruction of the patented machine, and not necessarily 
 a literal reconstruction of the patented combination, is all that is required 
 to constitute infringement by the purchaser. For example, where the patent 
 is for an improved lamp, and the whole invention resides in the burner, but
 
 470 THE FIXED LAW OF PATENTS § 526 
 
 the claim is for the combination of the burner and a chimney, in an ordinary 
 suit for infringement it must be shown that the defendant made or used or 
 sold the patented combination, namely, the burner and the chimney; while 
 in a suit for infringement against the purchaser of the lamp it would only 
 be necessary to prove that he replaced the old burner with a new one, be- 
 cause, manifestly, that would constitute a substantial reconstruction of 
 the patented invention. If a person other than the purchaser should make or 
 sell the burner with the intent and purpose of its use by another in com- 
 bination with the chimney, it would be a clear case of contributory infringe- 
 ment. — Goodyear v. Jackson, 112 Fed. 146; 50 C. C. A. 159. 
 Wallace v. Holmes, 9 Blatchf. 65. 
 
 To show infringement in the case of an ordinary infringer, where the 
 patented invention comprises several elements in combination, it is neces- 
 sary to prove that the alleged infringing machine contains all the elements 
 (or their equivalents) which make up the combination, although some of 
 the elements may not be material, or of the essence of the invention. To 
 show infringement by the purchaser (by repairing) in such a case, the same 
 strictness of proof is not required, for the reason that it may not be necessary 
 for him to make the immaterial or unessential elements of the patented 
 combination, because they may not be worn out or destroyed in his machine 
 when the work of reconstruction begins. — Goodyear v. Jackson, 112 Fed. 
 146; 50 C. C. A. 159. 
 
 The purchaser of a patented machine, in order to infringe, must make 
 or reproduce, in substance, the whole patented invention. To prove in- 
 fringement, in one case, it is only necessary to show a partial infringement 
 in aid of an unlawful complete infringement, while in the other case a sub- 
 stantially full and complete infringement must be established. The rule 
 that a person may be guilty of contributory infringement by making or 
 selling a material element of the patented combination has no application 
 to infringement by the purchaser of a machine embodying Such patented 
 combination. A purchaser stands in no different position from an ordinary 
 infringer, except in the circumstance that he has bought a patented machine, 
 and, consequently, his infringement does not consist in the construction of a 
 wholly new machine, but in the reconstruction of such machine after it is 
 worn out, or substantially destroyed. The essence of infringement is the 
 same in both cases. — Goodyear v. Jackson, 112 Fed. 146; 50 C. C. A. 159. 
 
 If this be lawful for the owner, it is equally so for the mechanic who is 
 employed to do the work; the latter cannot be held as an infringer for 
 making repairs which the former has an undoubted right to make. — Morrin 
 V. White, 143 Fed. 519 ; 74 C. C. A. 466. 
 
 § 525. Tests — Anticipation Test. 
 
 If the hoe made by the tool Company infringes the patent of the appellant, 
 it was an anticipation of the invention, and the patent is void, for the tes- 
 timony leaves no doubt whatever in our minds that the Company made and 
 sold its hoes long before the date of the invention patented. If it is not an 
 anticipation, it is not an infringement. — Cook v. Sandusky, 28 L. Ed. 124; 
 4 S. Ct. 4. 
 
 That which infringes if later would anticipate if earlier. — Knapp v. 
 Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Peters v. Active, 129 U. S. 530; Thatcher v. Burtis, 121 U. S. 286; Grant v. 
 Walter, 148 U. S. 547; Gordon v. Warder, 150 U. S. 47.
 
 § 526 INFRINGEMENT 471 
 
 "That which infringes if later anticipates if earlier." — Miller v. Eagle, 
 151 U. S. 186; 38 L. Ed. 121; 14 S. Ct. 310. 
 
 Peters ^.Active Mfg. Co. 129 U. S. 530; Thatcher v. Burtis 121 U. S. 286; Grant 
 V Walter, 148 U. S. 547; Gordon v. Warder, 150 U. S. 47; Knapp v. Morss, loO 
 U. S. 221. 
 
 That which infringes if later, anticipates if earlier. — MuUer v. Lodge, 
 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Peters v. Mfg. Co. 21 Fed. 319; Peters v. Mfg. Co. 129 U. S. 537; Knapp v. Morss, 
 150 U. S. 221; Miller v. Mfg. Co. 151 U. S. 186. 
 
 The device used by the appellant cannot be held to be an infringement 
 of the appellee's patent unless it would have been held — if used earher 
 than the patent — to have been an anticipation of the same; and certamly 
 it is clear, if it had been set up as in prior use against the Streat patent, 
 as it did not contain an apron used in the manner set forth in said patent, 
 that it would not have been decreed to have been an anticipation. — Ameri- 
 can V. Streat, 83 Fed. 700; 28 C. C. A. 18. 
 
 Peters v. Mfg. Co. 129 U. S. 530; Knapp v. Morss 150 U. S 221; Heating Co 
 V Burtis, 121 U. S. 286; Grant v. Walter, 148 Ij. S. 547; Gordon v. Warder, 150 
 
 u. s. 47'. 
 
 It is a well-established rule that "that which infringes, if later, would 
 anticipate if earlier;" and, conversely, that a device cannot be held to be 
 an infringement unless it would have been held, if earlier than the patent, 
 to have been an anticipation thereof. ^ Peerless v. White, 118 ted. 8^7; bb 
 C. C. A. 502. 
 
 Tobacco V. Streat, 83 Fed. 700. 
 
 Note- The ill-considered apphcation of this rule may well result in a wrong 
 decision, as happened in this case, and as is clearly shown in the dissenting 
 opinion of Judge Acheson, 
 
 A device which, if existent before the making of a patented invention, 
 would not anticipate it, cannot, if made after the issue of the patent be 
 said to infringe it. - Cleveland v. Chicago, 135 Fed. 783; 68 C. C. A. 485. 
 
 With such differences his would not constitute an infringement of theirs, 
 and of necessity theirs do not constitute anticipation of his. — St. Louis v. 
 American, 156 Fed. 574; 84 C. C. A. 340. 
 
 Kokomo V. Kitselman, 189 U. S. 8; Greene v. Buckley, 135 Fed. 520. 
 
 It must be admitted that the Portland structure and device (the device 
 of defendant) could not be patented. The necessary corollary is that the 
 one device is not an infringement of the other. — Portland v. Hermann, 
 160 Fed. 91; 87 C. C. A. 247. 
 
 § 526. Tests — Device and Claims. 
 
 When the invention or inventions are embodied in a machine, the ques- 
 tion of infringement is best determined by a comparison of the machine 
 made by the respondent with the mechanism described in the complainant s 
 patent or patents, where more than one is embraced in the same suit. — 
 Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Blanchard v. Putnam, 8 Wall. 426. 
 
 Except when form is the essence of the invention, it has but little weight 
 in the decision of such an issue, the correct rule being that, in determimng
 
 472 THE FIXED LAW OF PATENTS §§ 527-528 
 
 the question of infringement, not to judge about similarities or differences 
 in the names of things, but to look at the machines or their several devices 
 or their elements in the Hght of what they do or what office or function they 
 perform, and how they perform it, and to find that one thing is substantially 
 the same as another, if it performs substantially the same function in sub- 
 stantially the same way to obtain the same result; always bearing in mind 
 that devices in a patented machine are different in the sense of the patent 
 la'Cv when they perform different functions or in a different way, or produce 
 a substantially different result. — Union v. Murphy, 97 U. S. 120; 24 L. Ed. 
 935. 
 
 Cahoon v. Ring, 1 Cliff. 620. 
 
 In determining infringement, we are entitled to look at the practical 
 operation of the machines. If the device of respondents shows a substantially 
 different mode of operation, even though the result of the operation of the 
 machine remains the same, infringement is avoided. — Cimiotti v. Ameri- 
 can, 198 U. S. 399; 49 L. Ed. 1100; 25 S. Ct. 697. 
 
 Brooks V. Fiske, 15 How. 212; Union v. Battle Creek, 104 Fed. 337. 
 
 Infringement is to be determined by a consideration of the claims, and 
 if their language is such that, upon a fair consideration of them, defendant's 
 structure does not fall within their terms, infringement cannot be found. 
 — Hoe V. Miehle, 149 Fed. 213; 79 C. C. A. 171. 
 
 § 527. Tests — Function. 
 
 An alleged infringing combination, which has no adaptation for accom- 
 plishing the essential functions which the combination patented was, on the 
 face of the patent, intended to accomplish, cannot ordinarily be held to 
 truly infringe. — Boston v. Bemis, 80 Fed. 287; 25 C. C. A. 420. 
 
 Long V. Mfg. Co. 75 Fed. 835. 
 
 A function not being patentable, the mere fact of the performance of this 
 function by the new means operating in a new way, cannot serve construct- 
 ively to make it an infringement of the means not used, where the invention 
 is of the limited character shown in this patent. — Mann v. Hoffmann, 104 
 Fed. 245; 43 C. C. A. 514. 
 
 Where infringement would naturally or necessarily result from the or- 
 dinary use of a device, a defendant cannot escape Hability for infringement 
 by merely showing the possibility of a different use. The decisive question 
 is whether the operation of the alleged infringing device when in use is the 
 same, and produces the same results. — Davis v. Perry, 120 Fed. 941; 57 
 C. C. A. 231. 
 
 Snyder V. Bunnell, 29 Fed. 47; Westinghouse v. N. Y. 59 Fed. 597; Thomson- 
 Houston V. Kelsey, 72 Fed. 1016. 
 
 Identity of result is, however, not a sufficient test of infringement. There 
 must also be substantial identity of the means and manner of accomplish- 
 ment. — Heekin v. Baker, 138 Fed. 63; 70 C. C. A. 559. 
 
 § 528. Tests — Interchangeability. 
 
 Interchangeability test of. —Miller v. Eagle, 151 U. S. 186; 38 L. Ed. 
 121; 14 S. Ct. 310. 
 
 Prouty V. Ruggles, 41 U. S. 336; Brooks v. Fiske, 56 U. S. 212; Eames v. 
 Godfrey, 68 U. S. 78.
 
 §§ 529-531 INFRINGEMENT 473 
 
 Noninterchangeabilitv of parts tends strongly to negative infringement. 
 
 — Pittsburg V. Pittsburg, 109 Fed. 644; 48 C. C. A. 580. 
 Miller V. Mfg. Co. 151 U. S. 186. 
 
 Interchangeability is referred to in Miller v. Eagle, 151 U. S. 186 and other 
 cases cited in the argument on behalf of the appellee, as an " important test in 
 determining the question of infringement," and it is contended that inter- 
 changeability of parts and functions thus conceded does not meet the re- 
 quirements for such test, upon the assumption that the interchange involves 
 substantial reorganization of one and the other structure. This contention 
 is without force, under our conclusion that these deviations are plain equiva- 
 lents within the scope of the patent, and do not depart substantially from 
 the invention. — Columbia v. Kokomo, 143 Fed. 116; 74 C. C. A. 310. 
 
 § 529. Tests — Means and Result. 
 
 To constitute an infringement, the thing used by the defendant must be 
 such as to substantially embody the patentee's mode of operation, and thereby 
 to attain the same kind of result as was reached by his invention. It is not 
 necessary that the defendant should employ the plaintiff's invention to as 
 good an advantage as he employed it or that the result should be the same 
 in degree: but it must be the same in kind. — Sewall v. Jones, 91 U. S. 171; 
 23 L. Ed. 275. 
 
 Winans v. Denmead, 15 How. 330. 
 
 We are not unaware of the principle that the mere fact that two machines 
 produce the same effect does not establish that one is an infringernent of the 
 other. If it were so, it would operate as an admission that an inventor is 
 entitled to patent his function. To be an infringement " the alleged in- 
 fringer must have done something more than reached the same result. He 
 must have reached it by substantially the same or similar means or the rule 
 that the function of a machine cannot be patented, is of no practical value." 
 
 — Bundy V. Detroit, 94 Fed. 524; 36 C. C. A. 375. 
 
 Westinghouse v. Boyden, 170 U. S. 569; Machine Co. v. Murphy, 97 U. S. 120; 
 Elizabeth v. Pavement Co. 97 U. S. 126; Hoyt v. Home, 145 U. S. 302. 
 
 The machines of complainant and defendants " lack the identity of means 
 and identity of operation which must be combined with identity of result 
 to constitute infringement." — U. S. Envelope v. Sherman, 122 Fed. 465; 
 58 C. C. A. 624. 
 
 Kokomo V. Kitselman, 189 U. S. 8. 
 
 § 530. Tests — Utility and Use. 
 
 It is not necessary that the defendant's cars should employ the plaintiff's 
 invention to as good an advantage as he employed it, or that the result 
 should be precisely the same in degree. — Winans v. Denmead, 15 How. 330; 
 14 L. Ed. 717. 
 
 The diversity of inherent quality of two devices or manufactures may be 
 considered in determining identity or diversity of invention. — Dobson v. 
 Cubley, 149 U. S. 117; 37 L. Ed. 671 : 13 S. Ct. 796. 
 
 § 531. Tests — Miscellaneous. 
 
 If the defendants do not fix or fasten their device to the machine in the 
 manner stated in the specification, either at all or substantially m the same 
 manner as the patentee, or fix or fasten it only in a manner known and used
 
 474 THE FIXED LAW OF PATENTS S 632 
 
 before the plaintiff's supposed invention, the defendants are not guilty of 
 any violation or infringement of plaintiff's patent. — Carver v. Hyde, 16 
 Pet. 513; 10 L. Ed. 1051. 
 
 In the case of an American reissue upon an original also patented abroad, 
 if it were assumed that manufacture were begun under the precise terms of 
 the foreign patents and infringement were found, that would be conclusive 
 that the reissue was for the same invention covered by the foreign patents 
 which were founded upon the original American patent. — Commercial v. 
 Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 S. Ct. 972. 
 
 The fact that the defendant himself subsequently made appUcation for 
 the patent, which upon the plaintiff's interference, was awarded to the latter, 
 indicates quite clearly that the defendant did not consider it as accomplish- 
 ing the purpose sought by his subsequent appHcation. — DuBois v. Kirk, 
 158 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 If Rose had taken a patent for his umbrella and case combined, a different 
 question would be presented. He did not do this, however, but took a 
 separate patent for the case, because he desired and intended to obtain a 
 monopoly in cases, not simply for the peculiar umbrella manufactured under 
 his pre\dous patent, but for all others to which it could be applied. The effort 
 now made to read the patents together and to treat them substantially 
 as one, covering the umbrella and case combined, is, of course, unjustifiable. 
 The patent for the case must stand alone, as issued, and so considered it 
 clearly does not cover any case from which either of its essential elements is 
 omitted. — Rose v. Hirsh, 77 Fed. 469; 23 C. C. A. 246. 
 
 When experimental tests are necessary to distinguish one device from 
 another, it is manifestly an impracticable, not to say dangerous, proposition 
 that the making or using of either under a given patent may be declared to 
 be an infringement of a different patent upon the other, would seem to apply 
 with equal or greater force here. — Western Elec. v. Standard Co. 84 Fed. 
 654; 28 C. C. A. 512. 
 
 Following Thomson-Houston v. Western, 70 Fed. 69. 
 
 Comparison of infringing device with prior devices alleged to anticipate. 
 — Dowagiac v. Minnesota, 118 Fed. 136; 55 C. C. A. 86. 
 
 A copy of the thing described in a patent, either without variation, or 
 with such variations as are consistent with its being in substance the same 
 thing, is for all the purposes of the patent law the same device as that de- 
 scribed in the patent. — Lourie v. Lenhart, 130 Fed. 122; 64 C. C. A. 456. 
 
 Burr V. Duryee, 1 Wall. 531. 
 
 § 532. Miscellaneous Infringement Rules. 
 
 The rights of property and exclusive use granted to a patentee does not 
 extend to a foreign vessel lawfully entering one of our ports; and that the 
 use of such improvement, in the construction, fitting out or equipment of 
 such vessel while she is coming into or going out of a port of the United States, 
 IS not an infrintjement of the rights of an American patentee, provided it 
 was placed upon her in a foreign port, and authorized by the laws of the 
 country to which she belongs. — Brown v. Duchesne, 60 U.'S. 183; 15 L. Ed. 
 595.
 
 § 532 INFRINGEMENT 475 
 
 When infringement is admitted, the language is satisfied by assuming 
 the smallest number consistent with the use of the word in plural. — Jones v. 
 Morehead, 68 U. S. 155; 17 L. Ed. 662. 
 
 If, on the other hand, the Cawood machine was novel, as we think it was, 
 if it was not anticipated by the Springfield, the conclusion is inevitable 
 that neither the Michigan Southern nor the Bayonet vice is an infringement. 
 — R. R. V. Turrill, 94 U. S. 695; 24 L. Ed. 238. 
 
 The use of a well (driven well) so constructed is, therefore, a continuing 
 infringement, as every time water is drawn from it the patented process is 
 necessarily used. — Beedle v. Bennett, 122 U. S. 71 ; 30 L. Ed. 1074; 7 S. Ct. 
 1090. 
 
 An inventor has no property right in his discovery which is exclusive except 
 under his patent ; and therefore the provisions of sec. 4899 TJ. S. R. S. is not 
 unconstitutional as depriving the inventor of his property without com- 
 pensation. — Dable v. FHnt, 137 U. S. 41; 34 L. Ed. 618; 11 S. Ct. 8. 
 
 Gayler v. Wilder, 51 U. S. 477; Brown v. Duchesne, 60 U. S. 183; Marsh v. 
 Nichols, 128 U. S. 605. 
 
 Purchasers from an assignee in bankruptcy cannot maintain a suit in 
 equity against third persons claiming adverse interests, if at the time of the 
 purchase from the assignee his right of action was, under the Bankruptcy 
 Act, barred by the lapse of time. — Sessions v. Romadka, 145 U. S. 29; 
 36 L. Ed. 609 ; 12 S. Ct. 799. 
 
 Gifford V. Helms, 98 U. S. 248; Wisner v. Brown, 122 U. S. 214. 
 
 When the essential operation of the two devices is so different there is 
 no equity in charging infringement upon the defendant by an apparently 
 accidental adoption of an immaterial feature of the plaintiff's patent. — 
 B. & S. Fastener v. Kraetzer, 150 U. S. Ill ; 37 L. Ed. 1019; 14 S. Ct. 48. 
 
 Where complainant declares on a certain claim or claims, the court will 
 not consider the possible infringement of other claims. — Gordon v. Warder, 
 150 U. S. 47; 37 L. Ed. 992; 14 S. Ct. 32. 
 
 When a patent has been surrendered and reissued, and such reissue is 
 held void, the patentee cannot sue upon the original. — Eby v. King, 158 
 U. S. 366; 39 L. Ed. 1018; 15 S. Ct. 972. 
 
 Moffitt V. Garr, 66 U. S. 273; Reedy v. Scott, 90 U. S. 352; Peck v. Collins, 103 
 U. S. 660; McMurray v. Mallory, 111 U. S. 97; Gage v. Herring, 107 U. S. 640. 
 
 If a patentee could, under any circumstances, sue to recover for the use of 
 a patent before it was granted (as to which it was held in Gayler v. Wilder, 
 10 How. 477; Brown v. Duchesne. 19 How. 183; Marsh ^;. Nichols, 128 U. S. 
 612 ; Sargent v. Seagrave, 2 Curt. 553 ; and Rein v. Clayton, 37 Fed. 3.54 — that 
 an inventor has no exclusive right before a patent has been issued) it cer- 
 tainly could not apply to a case where the patentee was not the inventor of 
 the thing patented; where the device has been in public use for more than 
 two vears, and where the government had protested against any patent 
 being issued for it. — Kirk v. U. S. 163 U. S. 49; 41 L. Ed. 66; 16 S. Ct. 911. 
 
 It is insisted that the court had no right to consider an earlier patent of 
 the inventor of the patent in suit as anticipating the one in suit ; and refer- 
 ence is made to Cantrell v. Wallick, 117 U. S. 689 for the proposition that: 
 
 " The defendant cannot excuse or defend himself against the charge of
 
 476 THE FIXED LAW OF PATENTS § 532 
 
 infringement of the letters patent in suit, by saying that he infringed an 
 earlier patent rather than the patent claimed in this case." 
 
 The proposition is neither to be found nor has it support in the case cited, 
 and the contrary is well settled. — Barnes v. Walworth, 60 Fed. 605 ; 9 
 C. C. A. 154. 
 
 In the machine of the patent, the platen is operated by the check in the 
 hand of the workman; in the defendants' machine it is operated by the 
 clock-work previously wound up. This substantial difference seems to run 
 through the whole and to take the defendants' machine out of the scope of 
 all of these claims. — Bunday v. Columbian, 64 Fed. 851; 12 C. C. A. 442. 
 
 If, then, a patentee has the exclusive right to the use of his invention or 
 discovery, during the term of his patent, it would seem to follow that any 
 use by another, unauthorized by the patentee, would be an infringement of 
 his monopoly. If, therefore, he can find a purchaser for a machine subject 
 only to certain specified uses, any violation of the privileges granted would 
 be an infringement, for which the remedies granted patentees would be ap- 
 propriate. — Heaton v. Eureka, 77 Fed. 288; 25 C. C. A. 267. 
 
 Rubber Co. v. Goodvear, 9 Wall. 788; Burr v. Duryee, Fed. Cas. 2190; Mfg. Co 
 V. Owsly, 27 Fed. 100;* Steam Cutter v. Sheldon, 5 Fish. 477: Rob. Pat. sees. 812- 
 815, 1250. 
 
 A final decree holding a machine not to be infringement is conclusive with 
 reference to the identical machine in the hands of a purchaser. — Norton 
 V. San Jose, 79 Fed. 793; 25 C. C. A. 194. 
 
 Johnson v. Wharton, 152 U. S. 252; Last Chance v. Tyler, 157 U. S. 683' 
 Railroad v. National, 102 U. S. 14; Stout v. Lye, 103 U. S. 66. ' 
 
 The adjustment was made after an interlocutory decree for an injunction, 
 and for an accounting, on a bill in equity which related to the unauthorized 
 use of a patented device in a single machine by the respondents below, who 
 were not manufacturers, and who had indicated no disposition to make any 
 use of the device except in that machine. It included a license covering the 
 machine, and a release of all damages, profits and costs in the suit. Con- 
 sequently, all controversy between the parties had ceased; and, if the ad- 
 justment had been properly pleaded, it is clear that the court below would 
 have had no occasion to consider the case further, and a final decree against 
 the respondents below, whether for an injunction or otherwise, would have 
 been erroneous. _ In this respect the case would have been essentially differ- 
 ent from those in which it had been held that infringers cannot deprive a 
 patentee of the just fruits of his litigation, including an injunction, by ceasing 
 to infringe of their own motion alone. — Harden v. Campbell, 79 Fed. 653: 
 25 C. C. A. 142. 
 
 See, Gamewell v. Municipal, 77 Fed. 490. 
 
 _ The fact that the owner of a patent has offered to sell licenses does not 
 give anvone the right to make trial tests of his invention. — Clerk v. Tan- 
 nage, 84 Fed. 643; 28 C. C. A. 501. 
 
 The fact that the defendants are satisfied to use the machine only in those 
 operations wherein resides its chief practical value, and are content to refrain 
 from employing it in what must be regarded as operations of an unusual 
 or subordinate character, does not avail as a defence. — Heap v. Green, 91 
 Fed. 792; ,34 C. C. A. 86. 
 
 For a remarkable holding as to what is and what is not irreparable injury 
 to complainant or defendant, see Pacific v. Alaska, 100 Fed. 462; 40 C. C. A. 
 494.
 
 5 533 
 
 INJUNCTION 
 
 477 
 
 How easy it was for Hall, who commenced work under him as an appren- 
 tice and for years was engaged in the same shop upon Painters devices, to 
 absorb the inventive idea, and to produce the same results by some equiva- 
 lent method. - Crown v. Aluminum, 108 Fed. 84i.; 48 C. C. A. /2. 
 
 Machine Co. v. Lancaster, 129 U. S. 263; Sessions v. Romadka, 14o L. b. 29; 
 McCormick v. Aultman, 69 Fed. 371. 
 
 The contract provided that the amount to be paid complainant should be 
 deterLned by L court of competent jurisdiction. The action was for in- 
 frincrement. The court was asked to instruct the jury that there was no 
 e^dence showing infringement. Held: There is no escape from the c^onclu- 
 S that this instruction should have been given. \\ha was done by the 
 defendants was done under the agreement and with the ful consent of the 
 plaintiffs. — Kilburn v. Holmes, 121 Fed. ^oO; 58 C. t. A. lib. 
 
 That the fact that the charged infringement took place during the pre- 
 ceding siK years need not be specially pleaded, either at law or m equity; 
 and that the burden of proof is on the defendant, see Peters t;. Hanger, 134 
 Fed. 586; 67 C. C. A. 386., 
 
 INJUNCTION. 
 
 Statutory Provision § 533 
 General Statement § 534 
 Appeals {see § 109) 
 
 Comitv § 535 
 
 Contempt, General § 536 {see 
 
 § 269) 
 
 Contempt, Rule in Debs Case 
 
 Contempt, Reverse of Rule in Debs 
 Case § 538 
 
 Decision on Merits § 539 
 Dismissing Bill § 540 
 Prior Adjudication § 541 
 Refusal to Grant § 542 
 Sound Discretion § 543 
 What Considered on § 544 
 Miscellaneous Rulings § 545 
 Bond § 546 , 
 
 Corporations and Corporation Utticers 
 § 547 {see § 271) 
 
 Discontinuance or Non-Use § 548 
 Discretion of Court § 549 
 Expiration of Patent § 550 
 General Rules for Granting § 551 
 General Rules for Refusing § 552 
 Government § 553 {see § 428) 
 Grounds for Granting 
 Acquiescence § 554 
 Conduct of Defendant § 555 
 Damages Insufficient Remedy 
 § 556 
 Infringement § 557 
 
 Laches Excusable § 558 {see § 726) 
 
 Nature of Act § 559 
 
 Prima Facie Right § 560 
 
 Prior Adjudication § 561 
 
 Sufficiency — General § 562 
 Grounds for Refusing 
 
 Acquiescence Not Established 
 
 §563 
 
 Conflicting Proofs § 564 
 
 Damages Adequate Relief § 565 
 
 Infringement Not Clear § 566 
 
 InsufP-ciency — General § 567 
 
 Laches § 568 {see § 726) 
 
 License § 569 {see § 749) 
 
 Prior Adjudication Insufficient 
 
 §570 
 
 Title in Doubt § 571 {see § 925) 
 
 Validity Contested § 572 
 Modification § 573 
 Non-User § 574 
 Patent Office Decisions § 575 
 Powers and Scope § 576 
 Violation of 
 
 Contempt § 577 
 Miscellaneous Rules § 578 
 Miscellaneous Injunction Decisions 
 § 579 ^ , 
 
 See ^ Adjudication § 28; Appeals 
 § 109; Comity § 250; Decrees § 301; 
 Equity § 370; Jurisdiction § 713; 
 Laches § 730; Pleading § 788; Res 
 Judicata § 893; Title § 925 
 
 § 533- Statutory Provision. 
 
 The several courts vested with jurisdiction of cases arising under the 
 patent laws shall have power to grant injunctions accordmg to the course 
 and principles of courts of equity, to prevent the violation of any right
 
 478 THE FIXED LAW OF PATENTS §§ 534-536 
 
 secured by patent, on such terms as the court may deem reasonable ; * * * 
 — R. S. 4921. (See Jud. Code, Sees. 128, 129, 263, 264). 
 
 § 534- General Statement. 
 
 One approaching for the first time the multitude of holdings upon the 
 subject of preliminary injunctions is inclined to conclude the law is chaotic. 
 Such, however, is not the case. If it is borne in mind that it is at this point 
 that the court comes into the thick of the fight, where, more often perhaps 
 than anywhere else, greed and overreaching is all too common; if it is borne 
 in mind that the record on which a motion for a preliminary injunction is 
 made and the record in opposition thereto, usually consist, not cf sober 
 proofs, but ex parte statements made when the blood of the combatants is 
 over-heated; if it is borne in mind that each case presents its own peculiar 
 problems — if these considerations are before one, it will be seen that the 
 courts have, as a rule, pursued a very even course and kept the parties from 
 each other's throats with much composure. The author would be presuming 
 indeed to attempt, at this point, to state a general rule or to sum up the 
 law on the subject. It is not the place for fixed rules; it is the place for the 
 exercise of judicial discretion, unhampered by any hard-and-fast rules; and 
 it is only by the exercise of that discretion, so unhampered, that industrial 
 competition involving patents is kept from descending to guerrilla warfare. 
 
 § 535- Appeals — Comity. 
 
 It has been decided in this court, and in the courts of appeals of the Second 
 and Seventh circuits, that an adjudication of another circuit court than that 
 whose action is being considered, finding the validity of the patent and 
 infringement, is a sufficient ground, not only in the circuit court for an order 
 granting a preliminary injunction, but also in the appellate court for affirming 
 such an order. — Duplex v. Campbell, 69 Fed. 250; 16 C. C. A. 220. 
 
 Blount V. Societe, 53 Fed. 98; American v. National, 51 Fed. 229; Electric 
 V. Edison, 61 Fed. 834. 
 
 Another court of co-ordinate jurisdiction was engaged in the same investi- 
 gation and examination, and had issued its temporary injunction. Under 
 these circumstances it seemed to the learned judge below that the status quo 
 should be maintained. Decree affirmed. — U. S. Gramophone v. Seaman, 
 113 Fed. 745; 51 C. C. A. 419. 
 
 § 536. Appeals — Contempt, General. 
 
 That after mandate of the appellate court instituting an injunction has 
 been filed in the court below, jurisdiction to punish contempt thereafter 
 arising rests with the circuit court, see — Dowagiac v. Minnesota, 124 Fed. 735 ; 
 61 C. C. A. 57. 
 
 Neither is the result to turn upon any question of conflicting fact, for 
 it is not the province of a reviewing tribunal to weigh the facts upon a writ 
 of error. — Bullock v. Westinghouse, 129 Fed. 105; 63 C. C. A. 607. 
 
 A contempt proceeding is classified as a misdemeanor and not as a felony. 
 In re Acker, 66 Fed. 291. Misdemeanors are reviewable by this court upon 
 writ of error by virtue of the broad appellate powers conferred by the act of 
 Mar. 3, 1891, c. 517, 26 Stat. 826, establishing Circuit Courts of Appeal, and 
 defining and regulating the appellate powers of United States courts. If, 
 therefore, the imposition of the fine complained of " was a judgment in a 
 criminal case," as it is defined to be in New Orleans v. Steamship, 20 Wall. 
 387, it was a judgment in a misdemeanor case; for contempts are universally
 
 §537 INJUNCTION 479 
 
 classified as misdemeanors, and not felonies. In re Acker, 66 Fed. 291. If 
 a judgment in a misdemeanor case, it is reviewable upon writ of error to this 
 court This conclusion was reached in the Second Circuit in Gould v. Ses- 
 sions * 67 Fed. 163. But in Nassau v. Sprague, 95 Fed. 415, and Chnstensen 
 V. Westinghouse, 129 Fed. 96, writs of error were dismissed upon the authority 
 of In re Debs, 158 U. S. 564. — Bullock v. Westinghouse, 129 Fed. 105; 
 63 C. C. A. 607. 
 
 § 537. Appeals — Contempt — Rule of Debs Case. 
 
 An appeal does not lie from an order of contempt for violation of injunc- 
 tion because if it be treated as interlocutory it can come here only on appeal 
 from final decree; and if it be treated as an independent proceeding, it is 
 in effect a judgment in a criminal case, and is reviewable only on a writ ot 
 error. - Sessions v. Gould, 63 Fed. 1001; 11 C. C. A. 550. 
 
 Haves v Fischer, 102 U. S. 121; Worden v. Searles, 121 U. S 14; New Orleans 
 . New York 20 Wall. 387; Ex parte Kearney, 7 Wheat. 39; Salt marsh . Tut- 
 hill 12 How: 387; Kearney v. Denn, 15 Wall. 51; Knapp v. R. R. 20 Wall. 117; 
 Kerr v. Clampitt, 95 U. S. 188. 
 
 An order in contempt for violation of injunction is reviewable on a writ of 
 error and not by appeal. - Gould v. Sessions, 67 Fed. 163; 14 C. C. A. 366. 
 New Orleans v. Steamship, 20 Wall. 387; Worden v. Searles, 121 U. S. 14. 
 
 An order imposing punishment for violation of a prehminary injunction is 
 not appealable until after final decree, see — Nassau ^;. Sprague, 95 Fed. 415; 
 37 C. C. A. 146. 
 
 Debs Case, 158 U. S. 564. 
 
 Although the contempt consist in the violation of an injunction granted 
 by a court of equity, the proceeding for its punishment ' is a new and dis- 
 tinct proceeding, and is quite independent of the eqmties of the case on which 
 the decree is founded," and " an appeal is not ai\^PP^^«P,"^|^,^^"J5^y ^^T 
 obtaining a review." — Bullock v. Westinghouse, 129 Fed. 105; 63 C. C. 
 
 A. 607. ^ ^. ^^ 
 
 City of Frankfort v. Deposit, 127 Fed. 812; New Orleans v. Steamship, 20 
 Wall. 387; In re Chetwood, 165 U. S. 443. 
 
 Upon the authority of the Debs Case, we are constrained to hold 
 that the order cannot be reviewed, except upon an appeal from the final de- 
 cree in the cause. — Christensen v. Westinghouse, 129 Fed. 96; 63 C. L. A. 
 
 598. 
 
 Following In re Debs, 158 U. S. 564. 
 
 Gould V. Sessions, 67 Fed. 163; Nassau v. Sprague, 95 Fed. 415; Gary v Acme 
 108 Fed. 873; Ex parte Kearney, 7 Wheat. 38; New Orleans j;. Steamship 20 
 Wall. 387; Butler vf Fayerweather, 91 Fed. 458; Worden v. Searles, 121 U. b. 
 14. 
 
 In deciding that the defendant had violated the injunction, the court 
 necessarily passed upon the question whetlier the defendant had sold the 
 valves, and whether the valves were an infringement of the complainant s 
 patent. Upon writ of error the court cannot review the questions of tact, 
 its review is confined to the questions of law only. This is the rule when 
 contempt proceedings are under review. — Christensen v. Westinghouse, 135 
 Fed. 774; 68 C. C. A. 476. 
 
 In re Debs, 158 U. S. 564; Besette v. Conkey, 194 U. S. 334.
 
 480 • THE FIXED LAW OF PATENTS §§ 538-539 
 
 § 538. Appeals — Contempt — Rule of Bessette Case. 
 
 The rules of Bessette v. Conkey, 194 U. S. 324, are: (1) A finding of fact 
 of disobedience to injunction order by a party to the suit is not open to review 
 on habeas corpus. (2) Finding a person, not a party to the suit, guilty of 
 contempt and imposing a fine is reviewable by writ of error. _ 
 
 In the present case, however, the fine payable to the United States was 
 clearly punitive and in vindication of the authority of the court, and, we 
 think, as such, it dominates the proceeding, and fixes its character. Con- 
 sidered in that aspect, the writ of error was justified and the Circuit Court of 
 Appeals should have taken jurisdiction. — In re Christensen, 194 U. S. 458; 
 48 L. Ed. 1072; 24 S. Ct. 729. 
 
 Besette v. Conkey, 194 U. S. 324; New Orleans v. N. Y. 20 Wall. 387; Hayes v. 
 Fisher, 102 U. S. 121; Ex parte Debs, 159 U. S. 251; O'Neal v. U. S. 190 U. S. 
 36; Worden v. Searles, 121 U. S. 14. 
 
 The court below considered the law and the facts, and determined judicially 
 whether or not the defendants should be punished for contempt. It decided 
 that the defendants were not guilty. The question whether or not this 
 decision was right is reviewable on appeal. — Minnesota v. Dowagiac, 126 
 Fed. 746; 61 C. C. A. 352. 
 
 Enoch Morgans v. Gibson, 122 Fed. 420. 
 
 The claim that a defendant in such circumstances must await the final 
 result of the cause in which the injunction was granted before he can have 
 the judgment inflicting fine or imprisonment reviewed upon the theory that 
 the judgment is not final is absolutely unsupportable. If it be an independent 
 and distinct proceeding from the residue of the case, it will be no niore final 
 after that case has reached a final decree than when the fine was imposed. 
 To say that he may pay his fine or endure his imprisonment and review the 
 legality of the matter at some indefinite time in the future is to deny, in effect, 
 the right of review at all. — Bullock v. Westinghouse, 129 Fed. 105; 63 
 C. C. A. 607. 
 
 § 539. Appeals — Decision on Merits. 
 
 Whether upon such an appeal the court will hear and determine the case on 
 its merits is not here decided, — Davis v. Edison, 60 Fed. 276; 8 C. C. A. 615. 
 
 Distinguished in Thomson v. Kelsey, 75 Fed. 1005. 
 
 Blount V. Societe, 53 Fed. 98; American v. National, 51 Fed. 229; Consoli- 
 dated V. Accumulator, 55 Fed. 485; Hart v. Buckner, 54 Fed. 925; Working- 
 men's Council V. New Orleans, 57 Fed. 85; Daniell Ch. Pr. 1462 (4 ed.); High Inj. 
 sec. 1898; Curtis v. Wheel Co. 58 Fed. 784. 
 
 It follows, therefore, that if the court finds it essential to pass upon the 
 merits of the case in order to determine the propriety of the injunction, and in 
 no way reserves to the lower court a right to review or re-examine the grounds 
 upon v/hich it had originally proceeded, the decision of this court becomes the 
 law of the case. — Bissell v. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 OverruUng, Watch Co. v. Robbins, 52 Fed. 337. 
 
 Daniell Ch. 2, 1492; Newark v. Newark, 23 N. J. Eq. 515; M. & W. Code, Tenn. 
 3874; Mathis v. Meek, 1 Heisk. 534; Graham v. Merrill, 5 Cold. 631; Shmkle v. 
 Covington, 83 Ky. 420; Maxwell v. Schwartz, 57 N. W. 141; Schlender v. Corey, 
 30 Minn. 501; Ryerson v. Eldred, 18 Mich. 12; Perrin v. Lepper, 72 Mich. 541; 
 Richmond v. Atwood, 52 Fed. 10; Marden v. Mfg. Co. 67 Fed. 809; Construction 
 V. Young, 59 Fed. 721; Mfg. Co. v. Griswold, 67 Fed. 1017; Electric v. Edison, 
 59 Fed. 501; American v. National, 51 Fed. 229; Curtis v. Wheel, 58 Fed. 784, 
 Union v. Johnson, 61 Fed. 940; Consolidated v. Accumulator, 55 Fed. 485;
 
 §§ 540-541 INJUNCTION 481 
 
 Green v. Mills, 69 Fed. 852; Jones v. Hunger, 50 Fed. 785; Electric v. Edison, 61 
 Fed. 834; Andrews v. Pipe, 61 Fed. 782; Piedmont v. Pacific, 58 Fed. 226. 
 
 Every application to a circuit court for an injunction or temporary 
 restraining order should be considered on its merits, and the ruling or opinion 
 of another court upon any question involved should be given only its just and 
 reasonable weight according to the circumstances. The statute gives the 
 right of appeal; the Supreme Court has determined that the review, so far as 
 may be, shall extend to the merits; and it is not consistent to say that the 
 decision of an inferior court must be pronounced on one basis and reviewed 
 on another. — Stover v. Mast, 89 Fed. 333; 32 C. C. A. 231. 
 
 Shortly after its organization, this court had occasion to enunciate the 
 proposition that where there was an appeal from an order granting a pre- 
 liminary injunction, the court below having followed an adjudication at 
 circuit sustaining the patent after contest upon pleading and proof, such 
 adjudication is to have the same weight which it should have before the 
 circuit court. " Appeals from orders," we said " are not to be confounded 
 with appeals from final decrees, and the rule which we have thus stated will 
 not prevent our review of the adjudication itself, whenever it and the record 
 upon which it was made shaU be presented upon appeal. The tendency of 
 any different rule would be to produce confusion, and convert the review of 
 the interlocutory order into a review of the final adjudication upon which 
 it was founded." — Consolidated v. Hays, 100 Fed. 984; 41 C. C. A. 142. 
 
 American v. National, 51 Fed. 229. 
 
 That the appellate court may, in a proper case, consider the validity of 
 the patent in suit upon an appeal from a preliminary injunction order, see 
 Stearns-Roger v. Brown, 114 Fed. 939; 52 C. C. A. 559. 
 
 § 540. Appeals — Dismissing Bill. 
 
 If an injunction is granted by an interlocutory order and the order is 
 taken on appeal to the circuit court of appeals, and that court is of the 
 opinion that the patent is, on its face, absolutely void, it would be a waste 
 of time and an unnecessary continuance of litigation to simply enter an order 
 setting aside the injunction and remanding the case for further proceedings. 
 The direct and obvious way is to order a dismissal of the case, and thus end 
 the htigation. — Ex Parte National, 201 U. S. 156; 26 S. Ct. 404. 
 
 That the court may consider the entire subject matter of a litigation and 
 make final disposition on an appeal from an injunction order, see Rubens 
 V. Wheatfield, 93 Fed. 677; 35 C. C. A. 537. 
 
 The case is one in which it is apparent that the complainant cannot 
 ultimately prevail, and following the practice sanctioned by Mast v. Stover. 
 177 U. S. 485, the bill should be dismissed. — Brill v. Peckham, 108 Fed. 267; 
 47 C. C. A. 315. 
 
 §541. Appeals — Prior Adjudication. 
 
 The appellate court is to examine the interlocutory decision of the cir- 
 cuit court in the light of the affidavits, and of the history of the 
 patent, and the adjudications thereon, which were presented to that court. 
 The adjudication upon which the motion for preliminary injunction was 
 based, not being the subject of the appeal, it is to have the same weight 
 which it should have before the circuit court. — American v. N^ional, 
 51 Fed. 229; 2 C. C. A. 165.
 
 482 THE FIXED LAW OF PATENTS § 541 
 
 While the circuit court, upon a motion for an injunction, might deem 
 itself constrained, contrary to its own judgment, to adopt the rulings of 
 another circuit court, upon questions of law made at a final hearing, this 
 court is at liberty to re-examine such rulings, dispose of the questions of 
 law conformably to its own convictions and accord to the former adjudica- 
 tions such weight as in its own judgment it was entitled to upon the motion. 
 In the absence of some controlling reason for disregarding it, the former 
 adjudication should have the same weight in this court which it has as the 
 foundation for a preliminary injunction before the circuit court. — Ameri- 
 can V. National, 51 Fed. 229; 2 C. C. A. 165. 
 
 Purifier Co. v. Christian, 3 Ban. & A. 42. 
 
 The vital question in this case is presented with approximate accuracy 
 upon the face of the patent, and does not depend upon controverted ques- 
 tions of fact. This court has, therefore, been at liberty, in accordance with 
 its statement of the weight to be given to a prior adjudication upon an ap- 
 pealed order for a prehminary injunction (American v. National, 51 Fed. 
 229) to re-examine the former adjudication, and dispose of the question in 
 accordance with its own convictions. — Curtis v. Overman W. Co. 58 Fed. 
 784; 7 C. C. A. 493. 
 
 In Davis v. Edison, 60 Fed. 276, this court suggested that, on an appeal of 
 this class, it properly would not cut down the appellant to the mere question 
 whether the court below had acted within the limits of its discretion. Never- 
 theless, this court, in the determination of the question of the allowance of 
 a temporary injunction in favor of a patentee, is governed by the same 
 general rules as the circuit court, and mu&t, with necessary limitations, put 
 itself in the place of that court. This observation apphes to the extent of 
 requiring us to give their proper effect to prior adjudications estal)lishing the 
 validity of the patent in suit, or determining its construction. The force of 
 such adjudications in connection with applications for temporary injunctions 
 in patent causes has been uniformly stated in substantially the same terms, 
 but nowhere better than by the circuit court of appeals for the seventh 
 circuit in Electric v. Edison, 61 Fed. 834. " It may be difficult to formulate 
 a rule that will comprehend all the conditions which could be presented, 
 but we think it safe to say that in general, when the validity of a patent has 
 been sustained by prior adjudication upon final hearing, and after bona fide 
 and strenuous contest, the matter of its validity upon motion for preliminary 
 injunction is no longer at issue, all defense, except that of infringement, 
 being reserved to the final hearing, subject however, to the single exception 
 that, where a new defense is interposed, the evidence to support it must be 
 so cogent and persuasive as to impress the court with the conviction that, 
 if it had been presented and considered in the former case, it would probably 
 have availed to a contrary conclusion." — Bresnahan v. Tripp, 72 Fed. 
 920; 19 C. C. A. 237. 
 
 The adjudication upon which the motion for prehminary injunction was 
 based, not being the subject of appeal, is to have the same weight which it 
 should have before the circuit court, in the absence of some controlling reason 
 for disregarding it. — Consolidated v. Littauer, 84 Fed. 164; 28 C. C. A. 
 133. 
 
 American v. National, 51 Fed. 229. 
 
 Upon an appeal fron an order granting an injunction, the Circuit Court of 
 Appeals is at liberty to re-examine the decision of another circuit court, which 
 ruling, the court granting the injunction felt constrained to follow, and
 
 §§ 542-543 INJUNCTION 483 
 
 dispose of the questions of law, conformably to its own convictions. — Thom- 
 son-Houston V. Western, 158 Fed. 813 (2d case); 86 C. C. A. 73. 
 
 § 542. Appeals — Refusal to Grant. 
 
 It is to be noted that the act relative to appeals has been twice amended, 
 and that since the last amendment (Act June 6, 1900, 31 Stat, 660) no 
 appeal lies from an order refusing or dissolving an injunction. Many deci- 
 sions, rendered while the law distinctly allowed appeals from orders refusing 
 or dissolving injunctions, are now without force or effect. 
 
 It will be noted that after this second amendment (Chap. 803, Act June 
 6, 1900) the section remained with no provision authorizing an appeal from 
 an order refusing or dissolving an injunction. — Westinghouse v. Christen- 
 sen, 104 Fed. 622; 44 C. C. A. 92. 
 
 This was an appeal by the complainant from so much of an interlocutory 
 decree in the court below, entered after hearing on bill, answer, and proofs, 
 as refused an injunction asked for by it. The circuit courts of appeals in 
 two circuits have decided that this act abrogated the provisions of law giving 
 us jurisdiction in appeals of this character, — National v. Automatic, 105 
 Fed. 670; 44 C. C. A. 664. 
 
 Wire Co. v. Boyce, 104 Fed. 172; Westinghouse v. Christensen, 104 Fed. 622. 
 
 That an appeal from an order refusing a prehminary injunction, does 
 not lie in view of the act of 1900, see Western v. Williams-Abbott, 108 Fed. 
 952; 48 C, C. A. 159. 
 
 Wire Co. v. Boyce, 104 Fed. 172; Westinghouse v. Christensen, 104 Fed. 622. 
 
 _ That an appeal from an order denying a motion for a preliminary injunc- 
 tion does not lie, see American v. Vaught, 108 Fed. 571 ; 47 C. C. A. 496. 
 Wire Co. v. Boyce, 104 Fed. 172; Westinghouse v. Christensen, 104 Fed. 622. 
 
 Under Act Cong. Jmie 6, 1900 (31 Stat. 660) this court no longer can enter- 
 tain an appeal from an interlocutory decree refusing to dissolve an injunction, 
 — Berliner v. Seaman, 113 Fed. 750; 51 C. C. A. 440. 
 
 Westinghouse v. Christensen, 104 Fed. 622; Wire Co. v. Boyce, 104 Fed. 173; 
 National v. Automatic, 105 Fed, 670; Heinze v. Mining Co, 107 Fed. 165; Rowan 
 V. Ide, 107 Fed. 161. 
 
 That a party defendant not brought within the terms of a preliminary 
 injunction has no right of appeal, see Steams-Roger v. Brown, 114 Fed, 939- 
 52 C. C, A, 559. 
 
 § 543. Appeals — Sound Discretion. 
 
 By no action of the court below could it enable this court finally to deter- 
 mine all the questions between the parties to the action, because it is not 
 within the proper pro^'^nce of this court to do so on an appeal from an order 
 granting a preliminary injunction. We are to consider the correctness of the 
 order from the same standpoint as that occupied by the court granting it, 
 and if we find, after a consideration of the grounds presented to that court 
 for its action, that its legal discretion to grant or withhold the order w^s not 
 impro^ndently exercised, we should not disturb its action. — Duplex v. 
 Campbell, 69 Fed. 250; 16 C. C. A. 220, 
 
 Blount V. Societe, 53 Fed. 98.
 
 484 THE FIXED LAW OF PATENTS § 544 
 
 That on such appeal the question to be considered is whether the injunc- 
 tion was improvidently granted, see U. S. Gramophone v. Seaman, 113 Fed. 
 745; 51 C. C. A. 419. 
 
 Welsbach v. CosmopoHtan, 104 Fed. 84; Ritter v. Ulman, 78 Fed. 222. 
 
 It is enough to say that appellants failed to show that the provisional 
 order was improvidently entered; and, inasmuch as the case will probably 
 be before us again on its final hearing, no further reasons for our judgment 
 need be given. — Bartholomew v. Union, 113 Fed. 289; 51 C. C. A. 250. 
 
 The law has placed upon these courts the duty to exercise this discretion. 
 It has imposed upon them the responsibility of its exercise wisely, and has left 
 them much latitude for action within the rules which should guide them; 
 and if there has been no violation of those rules, an appellate court ought not 
 to interfere with the results of the exercise of their discretion. — Stearns- 
 Roger V. Brown, 114 Fed. 939; 52 C. C. A. 559. 
 
 The case is now in the hands of the learned judge below, who heard it 
 upon its merits, and who states in his opinion granting the preliminary 
 injunction that his purpose is to look into the subject anew, and form an 
 individual judgment of his own. We are entitled to the benefit of his views 
 upon the serious question whether or not the defendants' machines infringe 
 the patent in suit, and upon the merits of the case generally under the plenary 
 proofs. We therefore will confine ourselves to the single question whether 
 or not the court erred in granting the preliminary injunction. — American 
 V. Cimiotti, 118 Fed. 838; 55 C. C. A. 513. 
 
 We can see no abuse of discretion in the action of the court below. — 
 Rahley v. Columbia, 122 Fed. 623; 58 C. C. A. 639. 
 Southern Pacific v. Earl, 82 Fed. 690. 
 
 The record of the case shows that the Circuit Court proceeded in the case 
 with much deliberation and great care. While a preliminary injunction is to 
 be cautiously used by a court of equity, it should not be withheld where, in 
 the exercise of a sound judgement, it is necessary to prevent injustice. — 
 Continuous v. Schmertz, 153 Fed. 577 ; 82 C. C. A. 587. 
 
 § 544. Appeals — What Considered on. 
 
 We know of no reason why to save a protracted litigation, the court may 
 not order the bill to be dismissed. Ordinarily, if the case involve a question 
 of fact, we think the parties are entitled to be put to their evidence. — 
 Mast V. Stover, 177 U. S. 485; 44 L. Ed. 856; 20 S. Ct. 708. 
 
 Gardt v. Brown, 113 111. 475; Green v. Mills, 69 Fed. 852; Knoxville v. Africa, 
 77 Fed. 501. 
 
 It will be noticed that the appeal is allowed from an interlocutory order 
 or decree granting or continuing an injunction, that it must be taken within 
 30 days, that it is given precedence in the appellate court, that the other 
 proceedings in the lower court are not to be stayed, and that the lower court 
 may require an additional bond. Obviously that which is contemplated is 
 a review of the interlocutory order, and of that only. It was not intended that 
 the cause as a whole should be transferred to the appellate court prior to 
 the final decree. The case, except for the hearing on the appeal from the 
 interlocutory order, is to proceed in the lower court as though no such appeal 
 had been taken, unless otherwise specially ordered. — Ex Parte National, 
 201 U. S. 156; 26 S. Ct. 404.
 
 §544 ^ INJUNCTION 485 
 
 We have held at the present term that on an appeal under the seventh 
 section of the Act of March, 1891, from an interlocutory order granting an 
 injunction, this court, even with the consent of the parties, could not properly 
 pronounce any final judgment or decree on the merits of the controversy in 
 respect to the validity of the patent involved, and its infringement, inasmuch 
 as these questions remained in the lower court for final adjudication, in the 
 exercise of its original jurisdiction. But while this court, on appeals like the 
 present, may not properly pass upon the merits of the controversies involved 
 in the litigation, it may incidentally consider the questions relating to the 
 validity and infringement of the patent, as well as all other facts bearing 
 upon the propriety of sustaining or dissolving the injunction awarded. — 
 Blount V. Societe, 53 Fed. 98; 3 C. C. A. 455. 
 
 Watch Co. V. Robbins, 52 Fed. 337. 
 
 It is only when the determination of the question whether the injunction 
 was erroneous so requires us to look into the whole case on its merits that 
 we shall feel disposed to follow the course pursued in Richmond v. Atwood, 
 52 Fed. 10. — Gamewell v. Municipal, 61 Fed. 208; 9 C. C. A. 4.50. 
 
 There would seem to be some divergence of opinion in the circuit courts of 
 appeals upon the question of the extent to which this court should go in 
 review of an exercise of discretion in the court below in granting a pre- 
 liminary injunction. Jones v. Munger, 50 Fed. 785; Watch Co. v. Robbins, 
 52 Fed. 337; Blount v. Societe, 53 Fed. 98; Consolidated v. Accumulator, 
 55 Fed. 485; American v. National, 51 Fed. 229; Davis v. Edison, 60 Fed. 
 276. — Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 Where a preliminary injunction is granted upon a prima facie showing and 
 without the determination of the merits, this court will ordinarily, on an 
 appeal, consider only the question as to whether, on the prima facie case 
 made, there has been an abuse of discretion. Such preliminary injunctions 
 are ordinarily intended only to operate pendente lite, or until a hearing on 
 the writs can be had. They are granted upon a mere summary shov/ing upon 
 affidavits. Their issuance is not a matter of right, and rests in the sound 
 discretion of the judge. — Bissell v. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 Blount V. Societe, 53 Fed. 98; Duplex v. Campbell, 69 Fed. 250; Thompson 
 V. Nelson, 71 Fed. 339. 
 
 It is well settled that on appeals like this, this court will ordinarily look 
 into the case merely to see whether the discretion of the court below in 
 issuing or withholding the order of preliminary injunction has been abused; 
 and that only in exceptional cases, in which a controlling question of law may 
 be as fully and fairly considered as upon a final hearing, and the court has no 
 doubt upon it, will it finally dispose of the injunction and the case on a 
 hearing like this. — Thomson-Houston v. Ohio, 80 Fed. 712; 26 C. C. A. 107. 
 
 Duplex V. Campbell, 69 Fed. 250; Mayor v. Africa, 77 Fed. 501. 
 
 The preliminary question arises whether upon this appeal the court should 
 undertake to examine, and in a sense review, collaterally the consideration 
 of a Connecticut cause or should confine itself to the enquiry whether from 
 the standpoint of the court below, the order was properly granted. In Ameri- 
 can V. National, 51 Fed. 229, we have laid down the rule that while the circuit 
 court might deem itself constrained to adopt the rulings of another circuit, 
 this court is at liberty to reexamine the entire question ; and we adhere to 
 the views which were then expressed. — Thomson-Houston v. Hoosick, m 
 Fed. 461 ; 27 C C. A. 419.
 
 486 THE FIXED LAW OF PATENTS § 544 
 
 The decision of the judge who made the order will not be reversed unless 
 it appears, after a consideration of all the evidence upon which this action is 
 based, that his legal discretion was improvidently exercised. — Southern v. 
 Earl, 82 Fed. 690; 27 C. C. A. 185. 
 
 Duplex V. Campbell, 69 Fed. 253; Bissell v. Goshen, 72 Fed. 570; Blount v. 
 Societe, 53 Fed. 98. 
 
 The function of the court of appeals, in hearings like this, is such that 
 it may properly affirm an order refusing a preliminary injunction in one case 
 and an order granting it in another on substantially the same evidence, 
 because it is easy to conceive a case presented upon a preliminary hearing 
 such an evenly balanced controversy, that the court above would affirm 
 the action of the court below, whether one way or the other, when that action 
 involves the exercise not of exact judicial judgment but merely judicial dis- 
 cretion. — Societe v. Allen, 90 Fed. 815; 33 C. C. A. 282. 
 
 The law is well settled that upon such an appeal the decision of the judge 
 who made the order will not be reversed unless it appears, after a considera- 
 tion of all of the evidence upon which the action was based, that his legal 
 discretion to grant or withhold the order was improvidently exercised. — 
 Pacific V. Alaska, 100 Fed. 462; 40 C. C. A. 494. 
 
 Blount V. Societe, 53 Fed. 98; Jensen v. Norton, 64 Fed. 662; Southern v. 
 Earl, 82 Fed. 690; Thompson v. Nelson, 71 Fed. 339; Duplex v. Campbell, 69 
 Fed. 252. 
 
 Note: It is evident that under the amendment to the court of appeals act, 
 an appellate court would not consider the question of improvidence in refusing 
 an injunction as above stated. 
 
 In determining whether in a given case, the circuit court errs in refusing 
 an injunction pending the litigation, it is to be remembered that such an 
 injunction in no case is a matter of strict right. The application for it is 
 addressed to the sound discretion of the Court. It may be granted or refused 
 unconditionally or upon terms; and upon appeal ordinarily the question is 
 simply whether the court acted im.providently. Only when clearly erroneous 
 will the order be reversed. — Welsbach v. Cosmopolitan, 104 Fed. 83; 43 
 C. C. A. 418. 
 
 Ritter v. Ulman, 78 Fed. 222. 
 
 We have repeatedly held that an order granting an injunction will not 
 be reversed on appeal unless it clearly appears that the Court below has 
 fallen into a misapprehension respecting the facts or law of the case in a 
 matter vital to the issue. — ■ Leow v. German American, 107 Fed. 949; 47 
 C. C. A. 94. 
 
 Duplex V. Campbell, 69 Fed. 250; Thompson v. Nelson 71 Fed. 339; Proctor 
 V. Globe, 92 Fed. 357. 
 
 Counsel invoke the conceded rule that, where it is not clear that the 
 defendant is guilty of infringement, and the question is grave and difficult, 
 a temporary injunction should not be granted on ex parte affidavits. Sprague 
 V. Nassau, 95 Fed. 821 ; Hatch v. Electric, 100 Fed. 975. But while this rule 
 prevails in all its force in the trial court, it is met in the appellate court by 
 another of great cogency, — by the rule that where the court below has 
 considered a question, and made a finding on conflicting evidence, its con- 
 clusion is presumptively correct, and it ought not to be disturbed unless an 
 obvious error has intervened in the application of the law, or some serious 
 mistake has been made in the consideration of the facts. — Steams-Roger 
 V. Brown, 114 Fed. 939; 52 C. C. A. 559.
 
 § 54^ INJUNCTION 487 
 
 Kinlock v. Western, 113 Fed. 659; National v. Interchangeable, 106 Fed G93; 
 Mann v. Bank, 86 Fed. 51; Tilghman v. Proctor, 125 U. S. 136; Ivimberly i^ 
 Arms l'?9U S 512- Furrer^;. Ferris, 145 U. S. 132; Warren v. Burt, 58 Fed. 101; 
 Plow V. Carson, 72 Fed. 387; Trust Co. v. McClure, 78 Fed. 209; Exploration v. 
 Adams, 104 Fed. 404. 
 
 In view of the fact that the question of infringement cannot be authori- 
 tatively determined upon this appeal, and also because testimony taken 
 under examination and cross-examination is much more satisfactory and far 
 more reliable than the ex parte affidavits which this record contams, and 
 because the affidavits might lead to one conclusion and the testimony 
 to another, this court declines to enter upon a consideration and de- 
 termination of the question of infringement upon this appeal. — Stearns- 
 Roger V. Brown, 114 Fed. 939; 52 C. C. A. 559. 
 
 The correctness of the order must be considered under the facts and cir- 
 cumstances of the case- as presented below, and " from the same standpoint 
 as that occupied by the court granting it," and, if its legal discretion "was 
 not improvidently exercised, we should not disturb its action. — Austin v. 
 American, 121 Fed. 76; 57 C. C. A. 330. 
 
 Duplex V. Campbell, 69 Fed. 250; Stearns-Roger v. Brown, 114 Fed. 939. 
 
 The order will be reversed only when clearly erroneous. The fact of 
 infringement must be clearly established beyond reasonable doubt.— 
 Austin V. American, 121 Fed. 76; 57 C. C. A. 330. 
 
 Welsbach v Cosmopolitan, 104 Fed. 83; Standard v. Crane, 56 Fed 718; 
 Menasha v. Dodge, 85 Fed. 971; McDowell v. Kurtz, 77 Fed. 206; Blakey v. 
 National, 95 Fed. 136. 
 
 The only question for review on this appeal is whether the discretion of 
 the trial court was improvidently exercised. — Austin v. American, 121 
 Fed. 76; 57 C. C. A. 330. 
 
 Welsbach v. Cosmopolitan, 104 Fed. 83; U. S. Gramophone v. Seaman, 114 
 Fed. 745; Stearns-Roger v. Brown, 114 Fed. 939. 
 
 The motion for rehearing having been argued upon new proofs, and having 
 been denied two new orders were entered, the one continuing the injunction, 
 the other suspending its operation pending appeal. In these circumstances, 
 a new state of facts having been presented and the rights of the parties 
 having been determined anew thereunder, the practical effect was the same 
 as though the court had originally vacated the order instead of- suspending 
 it. — Armat v. Edison, 125 Fed. 939; 60 C. C. A. 380. 
 
 We do not feel disposed to modify such order, nor to discuss the issues 
 presented here on ex parte affidavits in an opinion which might constrain the 
 judge to whom at final hearing the same issues may be differently presented. 
 — United V. Silver, 128 Fed. 925; 63 C. C. A. 110. 
 
 That the record on appeal on motion for a preliminary injunction should 
 contain all of the affidavits and papers used in the hearing below, see Staples 
 V. Lord, 148 Fed. 15; 78 C. C. A. 106. 
 
 There are many questions arising on a motion for a preliminary injunction 
 which cannot be satisfactorily determined until the proofs are taken,_and this 
 court has consistently refused to decide doubtful questions depending upon 
 disputed facts upon appeals from such orders. — Thomson-Houston v. 
 Western, 158 Fed. 813; 86 C. C. A. 73.
 
 488 THE FIXED LAW OF PATENTS § 545 
 
 § 545. Appeals — Miscellaneous Rulings. 
 
 Where a plaintiff has an adjudication that he is entitled to an injunction, 
 he has rights which cannot be abridged or stayed by language which is not 
 more clear and unambiguous than that contained in sec. 7 of the Act of Mar. 
 3, 1891, Chap. 517, and the applicant therefore has not an absolute right to a 
 supersedeas of the injunction. — Re Haberman, 147 U. S. 525; 37 L. Ed. 
 266; 13 S. Ct. 527. 
 
 We think the term " interlocutory order or decree," was used in its broadest 
 sense, and that the purpose of Congress was to confer the right of appeal from 
 any decree or order granting an injunction at any stage of the proceeding, 
 whether technically preliminary, interlocutory or final. — Richmond v. At- 
 wood, 52 Fed. 10; 2 C. C. A. 596. 
 
 Jones V. Hunger, 50 Fed. 785. 
 
 It seems to us evident that it was intended to remove the restriction and 
 extend the right to all that class of interlocutory orders or decrees which 
 interfere with the possession of property, or operate in restraint of a party's 
 business. — Richmond v. Atwood, 52 Fed. 10; 2 C. C. A. 596. 
 
 The appeal given by the seventh section of the act of Mar. 3, 1891, is a 
 privilege or option and in no way affects or diminishes the right to appeal from 
 the final decree. — Harden v. Campbell, 67 Fed. 809; 15 C. C. A. 26. 
 
 As, ordinarily, questions arising under the statutes relating to patents for 
 inventions can iDest be determined on a final hearing, we ought not to en- 
 courage delays in the regular progress of a bill in equity pending proceedings 
 of the character we are now considering. — Bresnahan v. Tripp. 72 Fed. 
 920; 19 C. C. A. 237. 
 
 If an appeal is allowed from an interlocutory order or decree granting an 
 injunction, the injunction will continue in force pending the appeal, unless 
 stayed by order of the court granting the appeal. The granting of a super- 
 sedeas rests in the judicial discretion of the court, and its discretion to grant 
 or refuse a supersedeas will not be controlled by mandamus. — Bissell v. 
 Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 In re Haberman, 147 U. S. 525; Overruling Societe v. Blount, 51 Fed. 610. 
 
 We do not think, in the present status of this suit, no final decree having 
 yet been announced, that we are called upon to determine the effect of this 
 affirmance should the case be again appealed after the account of profits and 
 damages has been stated and confirmed. The mandate will simply recite 
 that the court finds no error in the decree awarding an injunction. — Goshen 
 V. Bissell, 72 Fed. 67; 19 C. C. A. 13. 
 
 Watch Co. V. Robbins, 64 Fed. 384. 
 
 Although the injunction order appealed from is not a preliminary injunc- 
 tion intended to operate only until a hearing upon the merits, it is neverthe- 
 less an " interlocutory decree," inasmuch as the decree was not final in an 
 appealable sense. This appeal was taken within 30 days. The cause is 
 therefore one which is entitled to take " precedence " upon the calendar of 
 this court. — Star v. General, 129 Fed. 102; 63 C. C. A. 604. 
 
 These three appeals arose out of the bill in equity. The circuit court issued 
 an interlocutory injunction, and number 738 is an appeal therefrom. In the 
 meantime the circuit court had entered judgment for complainant on final
 
 §§ 546-547 INJUNCTION 489 
 
 hearing. In view of our conclusions as to the final decree, this appeal is now 
 a moot case, and should be disposed of with a judgment declaring that the 
 interlocutory order has been superseded. — Howard v. Gibbs, 157 Fed. 676 ; 
 85 C. C. A. 348. 
 
 § 546. Bond. 
 
 Where the complainant is not manufacturing under the patents sued on, 
 and its injury is confined to its naked rights with no consequential injury to 
 its business and where an injunction against defendant would break up its 
 business and throw several hundred men out of employment, its loss would 
 be out of proportion to complainant's loss from infringement, the defendant 
 should be permitted to give adequate bond. — Duplex v. Campbell, 69 Fed. 
 250; 16 C. C. A. 220. 
 
 It would seem that where the question of infringement is doubtful, the 
 court may require a bond in lieu of a restraining order. — Seller v. Fuller, 
 102 Fed. 344; 42 C. C. A. 386. 
 
 That the Court may order the giving of a bond as an alternative measure, 
 see Loew v. German-American, 107 Fed. 949; 47 C. C. A. 94. 
 
 It seems that the prehminary injunction was improvidently granted by the 
 circuit court, the defendants below being able to respond in damages, there 
 being no threatened irreparable injury, no estoppel, no sufficient acquies- 
 cence, and no unfair competition in trade. Defendants should have been 
 required to give bond for an accounting, and the temporary injunction 
 refused. — American v. Phoenix, 113 Fed. 629; 51 C. C. A. 339. 
 
 Note: Why, under the most radical construction of any known rule, a bond 
 should be required in this case is past finding out. 
 
 The condition for security imposed upon the complainants and the privi- 
 lege accorded to the defendants to dissolve the injunction by giving counter 
 security show a cautious exercise by the caurt of its legal discretion. — 
 American v. Cimiotti, 118 Fed. 838; 55 C. C. A. 513. 
 
 That when the question on appeal shows grave doubt of novelty, the court 
 may order a bond in lieu of injunction, see Co-operating v. Hallock, 128 
 Fed. 596; 64 C. C. A. 104. 
 
 That inequitable conduct on the part of a defendant will deprive him of 
 the privilege to ask that a bond be required instead of an injunction, see 
 Ehte V. Dececo, 150 Fed. 581 ; 80 C. C. A. 567. 
 
 § 547. Corporations and Corporation Officers. 
 
 Some of the defendants further contend that, even if the defendant cor- 
 poration should be enjoined in this case, no injunction should issue against 
 the other defendants, its officers. Entirely apart from the question of the 
 liability of an officer in a corporation, for damages caused by infringement 
 permitted by him, on behalf of the corporation, there can be no doubt 
 that in a case like this the officers of the corporation may be enjoined from 
 further infringement. — Hart v. Anchor, 92 Fed. 657; 34 C. C. A. 606. 
 
 That a public corporation, ha^nng due notice of the prospective infringe- 
 ment, and having taken a bond for its protection, may be enjoined pendente 
 lite, see, Pelzer v. Binghamton, 95 Fed. 823; 37 CCA. 288.
 
 490 THE FIXED LAW OF PATENTS § 548 
 
 § 548. Discontinuance or Non-Use. 
 
 The fact that defendants have gone out of business or are not infringing 
 within the circuit isaio reason why an injunction should not be made per- 
 manent. — Braddock v. Macbeth, 64 Fed. 118; 12 O. C. A. 70. 
 
 Appellees claim that, pending suit, they have ceased to make the trans- 
 mitter complained of; but they do not exhibit what further changes they have 
 made, they give no assurances for the future, and throughout this litigation 
 they have denied appellant's rights. There is no reason why an injunction 
 should not issue. — Stromberg-Carslon v. American, 127 Fed. 704; 62 
 C. C. A. 460. 
 
 The pleas do not state a complete bar to the suit. Conceding all their 
 averments to be true, the court may retain the case in order to do exact 
 equity between the parties. If the case were at final hearing upon the precise 
 facts now developed, the court might, it is true, feel warranted in suspending 
 the injunction, but it would not be compelled to do so. The probability is 
 that it would follow the practice, so frequently adopted, where the defendant 
 admits past infringement and is shown to be in a position where he can at 
 any time resume, namely, issue the injunction. The argument in such cir- 
 cumstances is very simple. If the defendant be honest in his protestations, 
 an injunction will do him no harm; if he be dishonest, the court should place 
 a strong hand upon him in limine. — General v. New England, 128 Fed. 
 738; 63 C. C. A. 448. 
 
 Chemical v. Vice, 14 Blatchf. 179; Wollensak v. Reiher, 28 Fed. 427; Celluloid 
 V. Arlington, 34 Fed. 324; Sawyer v. Turner, 55 Fed. 979; Electric v. Henzel, 
 48 Fed. 375. 
 
 It is immaterial that pending the litigation there has been no further 
 infringement. Whether there has been or not is only a matter for considera- 
 tion if an accounting for damages shall be ordered. They have never put 
 upon the record their purpose not to duplicate the device which they did 
 make, nor contradicted the evidence that they intended to make and sell 
 such devices. The assertion of a right to make devices complained of as an 
 infringement, in the absence of a very express denial of a purpose to exercise 
 the right claimed, justifies the presumption that further infringement is to 
 be apprehended if that device shall prove to be an infringement. Cayuta 
 V. Kennedy, 127 Fed. 3.55; Westinghouse v. Press, 127 Fed. 822; Potter v. 
 Crowell, Fed. Cas. 11,323. The case is distinguishable from that of Globe- 
 Wernicke v. Brown, 121 Fed. 97 in the fact that an intention to continue to 
 make and sell devices complained of was avowed before suit was brought, 
 and is not disavowed upon the record. — Johnson v. Foos, 141 Fed. 73: 
 72 C. C. A. 105. 
 
 It was suggested at the oral argument that an unused patent is not en- 
 titled to the protection given by the extraordinary remedy of an injunction. 
 This contention was not made in defendant's brief. While this question has 
 not been directly passed upon, so far as we are informed, in any considered 
 decision of the Supreme Court, yet the weight of authority is in favor of 
 complainant. — Continental v. Eastern, 150 Fed. 741 ; 80 C. C. A. 407. 
 
 Fuller V. Berger, 120 Fed. 274; Bement v. National, 186 U. S. 70; Heaton v. 
 Eureka, 77 Fed. 288; Crown v. Aluminum, 108 Fed. 845; Broodnax v. Central, 4 
 Fed. 214; Consolidated v. Coombs, 39 Fed. 803; Campbell v. Manhattan, 49 
 Fed. 930. 
 
 Note: Decision affirmed, Continental v. Eastern, 210 U. S. 405. See § 574.
 
 U 549-550 INJUNCTION 491 
 
 Does the allegation in the answer that defendant does not intend to infringe 
 any more prevent the granting of injunctive relief? When after some in- 
 fringement and after conduct disclosing danger of a continued or renewed 
 infringement a patentee finds it necessary to incur the expense of bringing 
 a bill to protect his rights, he is entitled to all the remedies which the law 
 affords him, and among them is final adjudication of his rights and a per- 
 manent and effective injunction against further infringement, and he should 
 not be driven from the court to which he has rightfully resorted with a mere 
 promise by the offender of better conduct in the future. — Deere v. Dowagiac, 
 153 Fed. 177; 82 C. C. A. 351. 
 
 Wlien the validity of complainant's patent is denied, the right to infringe 
 asserted, the possession of a large quantity of infringing machines admitted, 
 and no satisfactory evidence adduced of cessation to infringe for any con- 
 siderable time before the beginning of the suit, is the danger as threatening as 
 to warrant injunctive relief? Considering the likelihood that an infringement 
 once practised will be repeated as long as the wrong doer believes he is right 
 (as from the pleadings in this case the defendant appears to believe) we think 
 the patentee is entitled to a more effective remedy than a mere promise of 
 this kind. — Deere v. Dowagiac, 153 Fed. 177; 82 C. C. A. 351. 
 
 Celluloid V. Arlington, 34 Fed. 324; White v. Walbridge, 46 Fed. 979; Mat- 
 thews V. National, 71 Fed. 518; N. Y. v. Chemical, 93 Fed. 827. 
 
 § 549. Discretion of Court. 
 
 They are granted upon a mere summary showing upon affidavits. Their 
 issuance is not a matter of right, and rests in the sound discretion of the 
 judge. — Bissell v. Goshen, 72 Fed. 545; 19 C. C. A. 25. 
 
 Shmkle v. Louisville, 62 Fed. 690; Blount v. Societe, 53 Fed. 98; Dest. Fed. 
 Prac.233; 1 High Inj. 7; 2 High Inj. 938, 939, 1026. 
 
 The granting of a provisional injunction rests in the sound discretion of 
 the trial court, and it is not necessary that the court should, before granting 
 it, be satisfied from the evidence before it that the plaintiff will certainly 
 prevail upon the final hearing of the cause. — Southern v. Earl, 82 Fed. 690; 
 27 C. C. A. 185. 
 
 Georgia v. Brailsford, 2 Dall. 402; Blount v. Societe, 53 Fed. 98. 
 
 § 550. Expiration of Patent. 
 
 Pending the appeal and before argument of the cause in this court, the 
 letters patent in suit expired, and with that expiration the interlocutory 
 injunction appealed from terminated. There is, therefore, nothing remaining 
 for a judgment of this court to act upon. In this condition of the case, the 
 court will no further consider whether the injunction was or was not properly 
 granted, but will dismiss the appeal. — Gamewell v. Municipal, 61 Fed. 208; 
 9 C. C. A. 450. 
 
 An appeal from an interlocutory order granting an injunction should be 
 dismissed where, during the pendency of the appeal the patent expired and 
 the injunction ceased to be operative. — Lockwood v. Wicks, 75 Fed. 118; 
 21 C. C. A. 257. 
 
 Following, Gamewell v. Municipal, 61 Fed. 208. 
 
 Little V. Burrows, 134 U. S. 547; Mfg. Co. v. Wright, 141 U. S. 696; Mills v. 
 Green, 159 U. S. 651; Gold v. Brown, 74 Fed. 120.
 
 492 THE FIXED LAW OF PATENTS § ^51 
 
 That the expiration of a patent after preliminary injunction was granted 
 and pending appeal from such order, dismisses the appeal, see National v. 
 Robertson, 104 Fed. 552 ; 44 C. C. A. 29. 
 
 Gamewell v. Municipal, 61 Fed. 208. 
 
 The patent had only 4 months and 5 days to run. The circuit court 
 decided in favor of the complainant, and, we think rightly. The bill prayed 
 that a " provisional or preliminary injunction be issued," and upon the facts 
 charged such relief might have been granted within the life of the patent. — 
 Chinnock v. Paterson, 112 Fed. 531; 50 C. C. A. 384. 
 
 Ross V City, 63 Fed. 466; Lake Shore v. National, 110 U. S. 229; Clark v. 
 Wooster, 119 U. S. 322; Beedle v. Bennett, 122 U. S. 71. 
 
 The court below awarded a perpetual injunction, but, the complainant 
 having waived any right it might have had to an account, no accounting was 
 ordered The patent expired after argument on appeal. Thus the injunction 
 became inoperative, and nothing was left for a judgment of this court to act 
 upon. — Chapin v. Friedberger, 158 Fed. 409; 85 C. C. A. 519. 
 
 Hatch V. Reardon, 204 U. S. 160; Mills v. Green, 159 U. S. 651; Gamewell v. 
 Municipal, 61 Fed. 208; Lockwood v. Wicks, 75 Fed. 118; American v. Vail, 
 Fed. Cas.' 308. 
 
 This patent expires June 23 (opinion Apr. 8). While, probably the com- 
 plainant cannot materially suffer by the continuance of the use of the device 
 for the few months remaining until the expiration of the patent, for us to 
 compel the respondent corporation to reorganize its looms in any essential 
 particulars, or even to stop them for the minimum period of time in which 
 such reorganization could be effected, might impose a penalty in excess of 
 the probable value of the invention covered by the claim in suit. What 
 we have already said is sufficient to show that the invention carries only a 
 minimum of what is patentable. In this connection we refer to the practical 
 rules apphed by the circuit court in Westinghouse v. Burton, 70 Fed. 619, 
 affd. 77 Fed. 301. We also refer to the authorities relied on in the opinion 
 of the circuit court in that litigation. It is true that case related only to a 
 preMminary injunction, as well as did the cases cited. Nevertheless the 
 underlying substantial rule applies here as well as there. Injustice is 
 not to be accomplished by equity either on an interlocutory proceeding 
 or a final one. The complainant may, perhaps, be fully compensated if it 
 is made sure that it will receive whatever damages it may have sustained, 
 if any, or a reasonable royalty, or the equivalent thereof, representing the 
 value of the patented improvement. Therefore it may be that the circuit 
 court should make an alternative provision, so that the respondent corpora- 
 tion might at its option be relieved from an injunction if it compensates 
 the complainant for profits, damages, and royalty, or the equivalent thereof, 
 so far as the complainant may be justly entitled to all or any of them, or if 
 it satisfies the court that it will so compensate the complainant by gmng 
 security therefor or otherwise. — Draper v. American, 161 Fed. 728; 88 
 CCA. 588. 
 
 § 551. General Rules for Granting. 
 
 In Standard v. Crane, 56 Fed. 718, this court declared the doctrine which 
 must prevail in this circuit respecting the allowance of preliminary injunc- 
 tions in patent cases. We there said that to authorize a court, in advance of 
 a decree upon the merits, to allow an injunction, not only must the infringe- 
 ment be without reasonable doubt, but the rights of the patentee must be 
 clear; and, failing prior adjudication in favor of the validity of the patent, 
 there must be shown such continued public acquiescence in the exclusive
 
 ? 552 INJUNCTION 493 
 
 right asserted as raises a presumption of validity not arising from the letters 
 patent alone ; and that, if the controversy between the parties be substantial, 
 and not colorable merely, courts of equity are not disposed to adjudicate 
 upon the rights of parties otherwise than according to the approved usages 
 of chancery. — Wihiams v. Breithng, 77 Fed. 285; 23 C. C. A. 171. 
 Ertel V. Stahl, 65 Fed. 519. 
 
 The principle upon which all injunctions are granted in patent causes, 
 prehminary and final, is that an action at law does not give a complete 
 remedy to the complainant whose property is invaded. The infringement of 
 a patent is a constantly recurring grievance, which cannot be adequately 
 prevented but by an injunction. " It is quite plain that, if no other remedy 
 could be given in cases of patents and copyrights than an action at law 
 for damages, the inventor or author might be ruined by the necessity of 
 perpetual litigation without ever being able to have a final establishment of 
 his rights." Story, Eq. Jur. sec. 931. A decree for damages and profits 
 in an equity cause would fall short of adequate redress to the patentee. He 
 is entitled to an injunction as well as to an accounting of damages and profits. 
 Indeed, the accounting is but incidental to the relief by injunction and it is 
 the right to this relief which alone gives a court of equity jurisdiction. " A 
 recovery does not vest the infringer with the right to continue the use, as 
 the consequence of it may be an injunction restraining the defendant from 
 the further use of it." Suffolk Co. v. Hayden, 3 Wall. 315. In Penna. v. 
 Libby, L. R. 3 Eq. 308, a suit upon a patent against a defendant who was 
 merely a user, the vice chancellor, in awarding an injunction and an account, 
 said: " I cannot in the decree do less than give the plaintiff his full right, and 
 I cannot bargain for him what he may choose or may not choose to do." — 
 AUington v. Booth, 78 Fed. 878; 24 C. C. A. 378. 
 
 The respondent, while under the injunction, is ordinaril}'- a constant loser, 
 and never regains his losses unless the complainant has given a bond. There- 
 fore in this class of cases the courts usually hold that unless the patent is 
 supported by public acquiescence or prior adjudication, or some other peculiar 
 condition, the complainant's rights must be free from doubt, to entitle him 
 to a preliminary injunction. — Wilson v. Consohdated, 88 Fed. 286; 31 C. 
 C. A. 533. 
 
 Rob. Pat. sec. 1173; North v. Kershaw, Fed. Cas. 10,311; Standard v. Crane, 
 56 Fed. 718; WiUiams v. Mfg. Co. 77 Fed. 285. 
 
 A continuing trespass is always good ground for the issue of an injunction 
 in the absence of countervailing considerations, because a multiplicity of suits 
 for damages is never an adequate remedy for the loss which constantly re- 
 peated trespasses entail. — Steams-Roger v. Brown, 114 Fed. 939; 52 C. C. 
 A. 559. 
 
 Mfg. Co. V. Booth, 78 Fed. 878. 
 
 § 552. General Rules for Refusing. 
 
 It is a cardinal principle of equity jurisprudence that a prehminary in- 
 junction shall not issue in a doubtful case. Unless the court be convinced with 
 reasonable certainty that the complainant must succeed at final hearing the 
 writ should be denied. — Hall v. General, 153 Fed. 907; 82 C. C. A. 653. 
 
 Union r. Philadelphia, 75 Fed. 1004. 
 
 For full list of cases covering this question, see dissenting opinion of 
 Aldrich, J. in Continental v. Eastern, 150 Fed. 741 ; 80 C. C. A. 407. 
 Note: See Continental v. Eastern, 210 U. S. 405, § 574.
 
 494 THE FIXED LAW OF PATENTS §§ 553-554 
 
 There was no showing that the patents had ever been admitted to be 
 valid by the defendant, or held vahd by any court of competent jurisdiction, 
 or that their validity had been generally acquiesced in by the public. With- 
 out a showing of one or the other of these facts, no preUminary injunction 
 ought to be granted in a patent case. — St. Louis v. Sanitary, 161 Fed. 725; 
 88 C. C. A. 585. 
 
 § 553* Government. 
 
 But no injunction can be issued against officers of a state to restrain or 
 control the use of property already in the possession of the state, or money 
 in its treasury when the suit is commenced, or to compel the state to perform 
 its obligations, or where the state has otherwise such an interest in the object 
 of the suit as to be a necessary party. — Belknap v. Schild, 161 U. S. 10; 
 16 L. Ed. 599; 16 S. Ct. 443. 
 
 Louisiana v. Jurmel, 107 U. S. 711; EUiott v. Wiltz, 107 U. S. 720; Cunning- 
 ham V. Railroad, 109 U. S. 446; Hagood v. Southern, 117 U. S. 52; In re Ayers, 
 123 U. S. 443; North Carolina v. Temple, 134 U. S. 22; McGahey v. Va. 135 U. S. 
 662. 
 
 In a suit to which the state is neither formally nor really a party, its offi- 
 cers, though acting by its order and for its benefit, may be restrained by 
 injunction, when the remedy at law is inadequate, from doing positive acts 
 for which they are personally and individually liable, taking or injuring the 
 plaintiff's property contrary to a plain official duty requiring no exercise 
 of discretion and in violation of the Constitution or laws of the United States. 
 
 But no injunction can be issued against officers of a state, to restrain or 
 control the use of property already in the possession of the state. — Belknap 
 V. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 Harlan and Field dissenting. 
 
 Osborn v. Bank, 22 U. S. 738; Louisiana v. McComb, 92 U. S. 531; Allen v. 
 Baltimore, 114 U. S. 311; Pennoyer v. McConnaughy, 140 U. S. 1; Elliott v. 
 Wiltz, 107 U. S. 711; Cunningham v. Mason, 109 U. S. 446; Hagood v. Southern, 
 117 U. S. 52; Re Ayers, 123 U. S. 443; N. C v. Temple, 134 U. S. 22; McGahey 
 V. Va. 135 U. S. 662. 
 
 Unless expressly permitted by act of Congress, no injunction can be granted , 
 against the United States. — Belknap v. Schild, 161 U. S. 10; 16 L. Ed. 
 599; 16 S. Ct. 443. 
 
 U. S. V. McLemore, 45 U. S. 286; Hill v. U. S. 50 U. S. 386; Case v. Terrell, 78 
 U. S. 199. 
 
 The courts should not use their writs of injunction so as to retard and 
 embarrass the government in the prosecution of work, the product of which is 
 absolutely essential to the pubhc welfare and the national defense. — Dashiell 
 V. Grosvenor, 66 Fed. 334; 13 C. C. A. 593. 
 
 § 554* Grounds for Granting — Acquiescence. 
 
 It is well settled that, for the purpose of laying the foundation for a pre- 
 liminary injunction, it may be shown that the patentee, or those succeeding 
 to his rights, have made, used, and sold the patented article or device for 
 years, during which no other person or persons have assumed to make or 
 sell the same. Wlien all persons, other than the owner of the patent, have for 
 several years refrained from making, using or selling the patented article 
 for the reason that it is patented, when it would be for their interest to adopt 
 it, such acquiescence raises a fair presumption of its validity, sufficient to 
 warrant the issuance of a preliminary injunction to restrain its infringement. 
 So, too, if the patentee has long licensed the use of his invention, which no
 
 § 555 INJUNCTION 495 
 
 one has, for periods varying from two to eight years, assumed to use or sell 
 without such license, there is such acquiescence as lays the foundation for a 
 preUminary injunction. — Blount v. Societe, 53 Fed. 98; 3 C. C. A. 455. 
 
 Sargent v. Seagrave, 2 Curt. 557; Dougherty v. West, 2 Fish. P. C 559; Ma- 
 chine Co. V. Williams, 2 Fish. P. C. 138. 
 
 While acquiescence, even of a qualified or doubtful nature, may give aid 
 to a patent on a final hearing, yet when relied on to support a temporary 
 injunction it must be clear in its character and extent. — Wilson v. Con- 
 soHdated, 88 Fed. 286; 31 C. C. A. 533. 
 
 Three years before the patent issued, Adam took a license to make heaters 
 according to Folger's specifications. He built the heaters in accordance with 
 the specifications furnished by Folger. His use of the patent imprint (" Vic- 
 tor ") and his present contention that, after the withdrawal of the license, he 
 altered the construction so as to avoid the claims, are strong concessions of 
 the patent's validity. So far as Adam is concerned, his actions evidence a 
 sufficient acquiescence. — Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. 
 
 Blount V. Societe, 53 Fed. 98; White v. Surdam, 41 Fed. 790; Steam Gauge v. 
 Ham, 28 Fed. 618; Burr v. Kimbark, 28 Fed. 574. 
 
 Defendant took a license before the patent issued to make the invention 
 and to use the trademark "Victor." He changed the construction, but 
 continued to sell the device under the trademark. Held: Without deciding 
 how far, if at all, the use and sale of the Victor heater before the patent was 
 issued should be taken as evidence of acquiescence in the validity of the 
 patent (see Sargent v. Seagrave, 2 Curt. 553; Wilson v Store Service 88 
 Fed 288; McDowell v. Kurtz, 77 Fed. 206; Corser v. Overall Co. 59 Fed. 
 781 • White v. Hunter, 47 Fed. 819) we are of opinion on this branch of the 
 case that the temporary injunction was not improvidently issued. The pur- 
 pose of showing adjudication against others or acquiescence by the Public 
 is not to foreclose the question of vaUdity, but to aid the presumption which 
 the patent raises to a point where the court is satisfied that the probabilities 
 of a final decree in the complainant's favor are so strong that the defendant 
 should be excluded at once from practising the alleged invention. — Adam 
 V. Folger, 120 Fed. 260; 56 C. C. A. 540. . 
 
 § 555- Grounds for Granting — Conduct of Defendant. 
 
 The defendant was formerly largely interested under the patent, as pro- 
 motor licensee and officer of the licensed company. His prior relations tj) the 
 patent presented a strong equity in favor of the complainants, if it did not 
 estop him from denying its vahdity under the authorities. — Blount v. 
 Societe, 53 Fed. 99; 53 C. C. A. 98. 
 
 Faulks V. Ke-Tip, 3 Fed. 898; Onderdonk v. Fanning. 4 Fed. 148; Purifier Co. 
 V. Guil ler, 9 Fed. 155; Telegraph Co. v. Himmer, 19 Fed. .322; Parker ^- McKee 
 24 Fed. 80S; Alabastine Co. v. Payne, 27 Fed. 559; Steam Gauge Co. v. Ham, 28 
 Fed. 618; Burr v. Kimbark, 28 Fed. 574. 
 
 The appellai\t discloses no particular equities which ought to induce the 
 withholding the injunction. It has been the deliberate user of a large number 
 of valves, and has preferred to run the risk of an injunction rather than to 
 displace its present equipment. — Westinghouse v. Great Northern, 88 Fed. 
 258; 31 C. C. A. 525. 
 
 We are not prepared to say that, even in the absence of any direct evi- 
 dence at all, as to the infringement, a court might not, on a motion for a 
 preliminary injunction, infer infringement from the disingenuousness of
 
 496 THE FIXED LAW OF PATENTS §§ 556-557 
 
 defendant's witnesses and their reluctance to disclose all the facts. The 
 ordinary rule is that one who has knowledge peculiarly within his own con- 
 trol, and refuses to divulge it, cannot complain if the court puts the most 
 unfavorable construction upon his silence, and infers that a disclosure 
 would have shown the facts to be as claimed by the opposite party. — Societe 
 V. Allen, 90 Fed. 815; 33 C. C. A. 282. 
 
 § 556. Grounds for Granting — Damages Insufficient Remedy. 
 
 The rules which control applications for preliminary injunctions in patent 
 causes are so well settled and familiar that it would seem to be quite useless 
 to recapitulate them, much less to cite from text writers or judicial utterances 
 in exposition of them. We arc aware of none which disentitle a complainant 
 to the remedy of a preliminary injunction against the infringement of his 
 patent by a defendant who is a user of the infringing article when the facts 
 are such that he would be entitled to it if the defendant were a manufacturer 
 or a seller. — Arlington v. Booth, 78 Fed. 878; 24 C. C. A. 378. 
 
 It does not lie with the infringer to say that the owner of the patent will 
 be fully compensated by a money recovery, and ought to be satisfied thereby. 
 It is for the latter to say whether he prefers an injunction, or a money re- 
 covery, or both; and, at his option, he is at liberty, at final hearing, to waive 
 an account, and insist upon his injunction. — Arlington v. Booth, 78 Fed. 
 878; 24 C. C. A. 378. 
 
 The places of business of complainant and defendant were in California 
 and Alaska, the alleged infringement being in Alaska. Held: It would 
 obviously be a matter of great difficulty for the complainant, under the most 
 favorable circumstances, to show the damage sustained by it by the unlawful 
 use of the infringing machine, especially where, the record shows, no royalty 
 had been established by the complainant, and where the complainant had 
 always refused to sell any machine made under it or to permit the use thereof 
 by any person. — Pacific v. Alaska, 100 Fed. 462; 40 C. C. A. 494. 
 
 Note: Exactly how this rule could apply to this case is something of a 
 curiosity. If there were no license fee and no previous sales, it is very diffi- 
 cult to see how evidence of damages or profits could possibly be proved else- 
 where than at the home of the complainant where the suit is brought. 
 
 § 557. Grounds for Granting — Infringement. 
 
 The case presented to us is one in which the complainant had a valid title 
 to a valid patent, which the defendants to the suit have confessedly infringed. 
 Under such circumstances, the showing must be a very strong one that would 
 justify an appellate court in reversing an order granting a temporary in- 
 junction. — Pacific V. Alaska, 100 Fed. 462; 40 C. C. A. 494. 
 
 To authorize a writ, the right must be clear, and the fact of infringement 
 reasonably certain. — Seller v. Fuller, 102 Fed. 344; 42 C. C. A. 386. 
 Standard v. Crane, 56 Fed. 718; Mast v. Stover, 177 U. S. 485. 
 
 It will not do to say that no harm could result from the restraining order 
 because the injunction merely went to the use of the infringing machines, and 
 that the defendants could not be harmed if their machines did not infringe. 
 Courts do not issue their writs of injunction because no harm can result from 
 them. They issue them to preserve rights which are shown to have been 
 invaded. It would not be just to put upon the defendants the hazard of 
 being in contempt of court for disobedience to its orders, if they honestly 
 claimed their machine did not infringe, when it might thereafter be deter-
 
 §§ 558-561 INJUNCTION 497 
 
 mined that it did infringe, and when the courts had not considered or deter- 
 mined the question of infringement. — Seiler v. Fuller, 102 Fed. 344; 42 
 C. C. A. 386. 
 
 § 558. Grounds for Granting — Laches Excusable. 
 
 It is no defense to a suit for an injunction and an accounting on account 
 of the continuing trespasses of an infringer that the latter has been tres- 
 passing on the rights of the patentee with impunity for years. — Ide v. 
 Trorhcht, 115 Fed. 137; 53 C. C. A. 341. 
 
 Menendez v. Holt, 128 U. S. 514; McLean v. Fleming, 96 U. S. 245; Price v. 
 Steel Co. 46 Fed. 107; New York v. Buffalo, 18 Fed. 6.38; Gilmore v. Anderson, 
 38 Fed. 846; Brush v. Electric, 45 Fed. 241; Taylor v. Spindle Co. 75 Fed. 301; 
 Bragg V. Hartford, 56 Fed. 292. 
 
 Note: This may be good law in the Eighth Circuit, but it requires serious 
 qualification in other circuits. 
 
 § 559* Grounds for Granting — Nature of Act. 
 
 It is not essential that there shall have been any actual infringement, in 
 order to entitle a complainant to an injunction. The seUing and offering for 
 sale with the intent and purpose to bring about an infringement are enough 
 to entitle complainant to an injunction to prevent the threatened injury. 
 
 — Rupp V. EUiott, 131 Fed. 730; 65 C. C. A. 544. 
 Thomson-Houston v. Kelsey, 75 Fed. 1005; Thomson-Houston v. Ohio, 80 
 
 Fed. 712; Wallace v. Holmes, 29 Fed. Cas. 79. 
 
 § 560. Grounds for Granting — Prima Facie Right. 
 
 There is the general " prima facie " presumption of the novelty and utiUty 
 of the invention and that the patentee is the first and true inventor, which 
 arises from the letters patent granted by the government. — Blount v. 
 Societe, 53 Fed. 98; 3 C. C. A. 455. 
 
 Railroad v. Stimpson. 14 Pet. 448; Seymours. Osborne, 11 Wall. 516; Smith i'. 
 Dental Co. 93 U. S. 486; Lehnbenter v. Holthaus, 105 U. S. 94. 
 
 § 561. Grounds for Granting — Prior Adjudication. 
 
 An interlocutory decree granting an injunction in another case is a good 
 foundation on which to base an apphcation for a preliminary injunction in 
 any other court. — Blount v. Societe, 53 Fed. 98 ; 3 C. C. A. 455. 
 
 Potter V. Fuller, 2 Fish. P. C 251. 
 
 The patent had been sustained in a prior suit, and in a prior suit against the 
 corporation of which this defendant was the actual successor, an injimction 
 had been granted. Although a new defense (the expiration of a foreign 
 patent) had been interposed on leave and the case reopened, it was still in 
 the discretion of the trial court whether such new defense should be ground 
 for discontinuing the injunction until the case could be heard on the merits. 
 
 — Consolidated v. Accumulator, 55 Fed. 485 ; 5 C. C. A. 202. 
 
 Of course such prior adjudication does not conclude the question of right, 
 even as to the defenses passed upon, except as between the parties and 
 pri-vies. Such a judgment is not within the principle of res adjudicata. — 
 Electric v. Edison. 61 Fed. 834; 10 C. C. A. 106. 
 
 When the patent has been strenuously contested, and its validity deter- 
 mined by a competent tribunal, we think a strong presumption arises in favor
 
 498 THE FIXED LAW OF PATENTS , § 561 
 
 of the patent, which imposes upon the contestant the burden of attack. — 
 Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 When the validity of a patent has been sustained by prior adjudication, 
 and especially after a long, arduous and expensive litigation, the only question 
 open upon motion for a preliminary injunction in a subsequent suit against 
 another defendant, is the question of infringement, the consideration of other 
 defenses being postponed until final hearing; the only exception to the rule 
 being where new evidence is of such a conclusive character that, if it had been 
 introduced in the former case, it probably would have led to a different con- 
 clusion. And in such case the burden is upon the defendant to establish 
 this, and every reasonable doubt must be resolved against him. — Electric 
 V. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 Edison v. Beacon, 54 Fed. 678; Edison v. Columbia, 56 Fed. 496. 
 
 Where the vahdity of a patent has been sustained by prior adjudication, 
 and especially after a long, arduous and expensive litigation, the patentee 
 may rightfully rest upon his patented right confirmed to him by the solemn 
 adjudication of a competent judicial tribunal. He who attacks that right 
 must overcome the legal presumption of right in the patentee. The strength 
 of that presumption is variant, depending upon the circumstances surround- 
 ing the adjudication relied upon to support it. It is stronger when rested 
 upon a final hearing than upon a motion for a preliminary injunction. Its 
 potential force is intensified by an affirmance by an appellate tribunal of the 
 adjudication in favor of the patent. The extent of the burden of overcoming 
 the presumption is, therefore, measured by the degree of effective force 
 imputed to the presumption. Where anticipation of invention has been 
 asserted and determined to be unfounded, the presumption would be much 
 stronger against cumulative evidence to prove anticipation by the one whose 
 claim had been repudiated, than where anticipation is asserted in behalf 
 of some other supposed inventor, whose claim was not in contention in the 
 case adjudicated; and yet, in the latter instance, in addition to the presump- 
 tion attaching to the patent itself, there would arise a further presumption 
 more or less strong, and depending upon the circumstances, that, as the issue 
 was the validity of the patent because of anticipation, bona fide contestants, 
 earnestly striving to undermine the patent, would have asserted the defense, 
 if known to them, and deemed substantial. It may be difficult to formulate 
 a rule that will comprehend all the conditions which could be presented, 
 but, we think it safe to say that in general, when the validity of a patent has 
 been sustained by prior adjudication upon final hearing, and after bona fide 
 and strenuous contest, the matter of its validity upon motion for preliminary 
 injunction is no longer at issue, all defense, except that of infringement, being 
 reserved to the final hearing;' subject, however, to the single exception that, 
 where a new defense is interposed, the evidence to support it must be so 
 cogent and persuasive as to impress the court with the conviction that, if 
 it had been presented and considered in the former case, it would probably 
 have availed to a contrary conclusion. In the consideration of such new 
 defense of anticipation, regard should be had to the rule that such a defense 
 is an affirmative one; that the burden of proof is upon him who asserts it; 
 and that the grant of letters patent is prima facie evidence that the patentee 
 is the first inventor of the device described therein, and of its novelty. — 
 Electric v. Edison, 61 Fed. 834; 10 C. C. A. 106. 
 
 Coffin V. Ogden, 18 Wall 120; Smith v. Vulcanite Co. 93 U. S. 486; Lehnbeuter 
 V. Holthaus, 105 U. S. 94; Cantrell v. Wallick, 117 U. S. 689; Barbed Wire 
 Patent, 143 U. S. 275.
 
 § 561 INJUNCTION 499 
 
 The decision of another circuit is entitled to the same consideration in this 
 court as it had in the court below. — Duplex v. Campbell, 69 Fed. 250; 
 16 C. C. A. 220. 
 
 American v. National, 51 Fed. 229. 
 
 Whether this court will apply the rule in favor of the decisions of the 
 various circuit courts, or will limit it to adjudications of the appellate courts, 
 as was apparently done by the third circuit in National v. American, 53 
 Fed. 367, quaere. — Bresnahan v. Tripp," 72 Fed. 920; 19 C. C. A. 237. 
 
 The second patent was sustained as valid after a full hearing on the merits, 
 before so good and experienced patent judge as Judge Townsend. This 
 certainly justified the court below in assuming the validity of the patent on 
 a motion for a preliminary injunction. — Thomson-Houston v. Ohio, 80 Fed. 
 712; 26C. C. A. 107. 
 
 Thomson-Houston v. Winchester, 71 Fed. 192. 
 
 We think the prior adjudication should be regarded as a finaUty until 
 sufficient reason for departing from it shall have been made to plainly appear, 
 and that the appellee should not, upon a motion to dissolve a preliminary 
 injunction, be deprived of the advantage it holds as the owner of a patent 
 adjudged by a court of appeals to be valid, upon anything less than thor- 
 oughly convincing proofs. — Adams v. Tannage, 81 Fed. 178; 26 C. C. A. 
 326. 
 
 The former adjudication was entitled to great weight upon the application 
 for the preliminary injunction, and justified although it did not necessarily 
 control, the decision. — Thomson-Houston v. Hoosick, 82 Fed. 461; 27 
 C. C. A. 419. 
 
 In the case of Russell v. Place, 94 U. S. 606, it was held that a judgment 
 establishing the vahdity of the patent containing two claims, but not dis- 
 closing whether the judgment was based upon one or both of such claims, 
 would not, in the absence of extensive evidence indicating the precise ground 
 of the judgment, constitute an estoppel in a subsequent action between the 
 same parties, in which the vahdity of the same patent was involved. In that 
 case the question related to a certainty required in the records in order for 
 a judgment to be given the* effect of an estoppel; but in our opinion it is 
 necessary that the same certainty should be made to appear in relation to 
 the issues actually adjudicated, where a prior judgment is offered as the basis 
 for the issuance of a preliminary injunction, in cases of this character. — 
 Southern v. Earl, 82 Fed. 690; 27 C. C. A. 185. 
 
 Cobum V. Clark, 15 Fed. 807; Sewing Machine v. Williams, Fed. Cas. 5847. 
 
 The o-mier of a patent who has been fully sustained should not be deprived 
 of his injunctive right except upon thoroughly convincing additional proof. 
 — Ford Co. V. Tannage Pat. 84 Fed. 644; 28 C. C. A. 503. 
 
 Coming to the rules appHcable under these circumstances, it cannot be 
 denied that a preliminary injunction may properly issue in a patent suit 
 where the validity of the patent is clear, although it has not been sustained 
 by a prior adjudication or public acquiescence. Of course, there must in 
 every instance be an equitable necessity for rehef by injunction. — .Wilson 
 V. Consohdated, 88 Fed. 286; 31 C. C. A. 533. 
 
 Davis V. Edison. 60 Fed. 276.
 
 500 THE FIXED LAW OF PATENTS § 561 
 
 The rule as to prior litigation is that it requires " a bona fide and strenuous 
 contest," resulting in favor of the patent. — Wilson v. Consolidated, 88 Fed. 
 286; 31 C. C. A. 533. 
 
 Electric v. Edison, 61 Fed. 834; Bresnahan v. Leveler Co. 72 Fed. 920. 
 
 With reference to a prior judgment or general acquiescence, it is clear, 
 on principle, that there must be the same freedom from doubt in behalf of a 
 party applying for a temporary injunction, as if the question was one of 
 validity alone. A court would be no more justified in granting such an 
 injunction on a doubtful case of prior adjudication than it would be on a 
 doubtful case of validity. Neither can a doubtful case of a prior judgment be 
 assisted by a doubtful case of acquiescence, and vice versa. It is plain, on 
 principle, that the complainant's right must be clear, either as to the validity 
 of the patent or on the question of a prior judgment, or on the question of 
 acquiescence. — Wilson v. Consolidated, 88 Fed. 286; 31 C. C. A. 533. 
 
 Ordinarily a prior determination on final hearing, after a bona fide and 
 strenuous contest, is sufficient to justify an injunction, even against a new 
 defendant. — Hatch v. Electric, 100 Fed. 975 ; 41 C. C. A. 133. 
 
 Beach v. Hobbs, 92 Fed. 146; Wilson v. Store Service Co. 88 Fed. 286. 
 
 The prior adjudication has been secured by complainant on testimony 
 which has been sifted by cross-examination, and it would seem that he 
 should be entitled to cross-examination of defendant's experts before being 
 deprived of the advantage of his previous decree. Especially so in view of 
 the ease with which ex parte affidavits of experts exploiting any theory 
 desired may apparently be obtained. — Consolidated v. Hays, 100 Fed. 
 984; 41 C. C. A. 142. 
 
 Curtis V. Wheel Co. 58 Fed. 784. 
 
 Prior hearings had occurred, resulting in an injunction against an alleged 
 infringement by the defendant pending final hearing. The instant case 
 appeared, therefore, as a second attempt to use a device which might evade 
 the patent, while adopting an equivalent means. The presumptions which 
 run with the patent are thus well fortified by circumstances to entitle the 
 owner to injunctional rehef. — Austin v. American, 121 Fed. 76; 57 C. 
 C. A. 330. 
 
 Electric v. Edison, 61 Fed. 834. 
 
 That where a patent has been adjudicated and sustained by a circuit court 
 of appeals, the only question to be considered as a defense is non-infringement, 
 see Cohn v. Stephenson, 142 Fed. 467; 73 C. C. A. 583. 
 
 Philadelphia v. Edison, 65 Fed. 551; Tannage v. Adams, 77 Fed. 191; Adams 
 V. Tannage, 81 Fed. 178. 
 
 Facts: No answer was made to the motion except the question of priority. 
 Both parties had been in interference and an appeal to the Circuit Court of 
 Appeals, D. C. had been decided in complainant's favor. Held: That an 
 injunction pendente lite may issue if patentable invention appears on the 
 face of the patent, and the presumptions arising from the grant have been 
 reinforced by the decision of a competent court upholding the invention, 
 upon issues duly raised and fairly litigated. The opinion filed below rightly 
 recognizes the interference proceedings and decision therein by the Circuit 
 Court of Appeals, D. C. as within the meaning of the doctrine above stated. — 
 Scott V. Laas, 150 Fed. 764; 80 C. C. A. 500.
 
 § 562 INJUNCTION 501 
 
 The patent was before this court in a prior suit and held valid. Upon such 
 a state of facts, the propriety of issuing prehminary injunction is well settled 
 in this circuit; and it is equally well settled that appeal from such pre- 
 liminary injunction brings up only the propriety of the action of the circuit 
 court. The whole cause is not to be re-opened. That is a matter for con- 
 sideration when the new cause comes to a final hearing. — Consolidated v. 
 Diamond, 157 Fed. 677; So C. C. A. 349. 
 
 American v. National, 51 Fed. 229; Consolidated v. Littauer, 84 Fed. 165. 
 
 In the present case the right to a preliminary injunction according to the 
 course and principles of equity was made clearly to appear by the bill. There 
 had been a conclusive and final adjudication of complainant's title to the 
 patent and of its validity by the Supreme Court of the United States after 
 a lengthy and spirited contest on the merits of the case (Carnegie v. Cambria, 
 185 U. S. 403), and there was a clear and unequivocal charge of infi-ingement. 
 In such cases a preliminary injunction, on the motion of complainants, and 
 in the absence of new evidence of a controlling character, is granted quite 
 as a matter of course. We mav therefore confidently conclude that the case 
 made by the bill well warranted the grant of a preliminaiy injunction, and 
 that one probably would have been granted, had a motion to that effect 
 been made. (And notwithstanding the fact that the patent would expire 
 inside of three months). — Carnegie v. Colorado, 165 Fed. 195 ; C. C. A. 
 
 Electric v. Edison, 61 Fed. 834; New York v. Jackson, 91 Fed. 422. 
 
 § 562. Grounds for Granting — Sufficiency — General. 
 
 The patent having been issued fifteen months before the bill was filed, and 
 having nearly sixteen years to run, and the bill alleging that the public have 
 generally acquiesced in the vaHdity of the patent, and that the invention has 
 been put in practice by the plaintiff, and has been of great utility, it was not 
 necessary to show a recovery at law to warrant jurisdiction in equity for an 
 injunction and account. — McCoy v. Nelson, 121 U. S. 484; 30 L. Ed. 1017; 
 7 S. Ct. 1000. 
 
 Root V. RaUway, 105 U. S. 189. 
 
 Plaintiff is none the less entitled to his injunction by the fact that defendant 
 is able to accomplish the same result by another and different method. — 
 DuBois V. Kirk, 158 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 The object and purpose of a preliminary injunction is to preserve the 
 existing state of things until the rights of the parties can be fairly and fully 
 investigated and determined upon strictly legal proofs, and according to the 
 course and principles of courts of equity. The prerequisites to the allowance 
 and issuance of such an injunction are that the party applying for the same 
 must generally present a clear title, or one free from reasonable doubt, and 
 set forth acts done or threatened by the defendant, which will seriously or 
 irreparably injure his rights under such title, unless restrained. The legal 
 discretion of the judge or court in acting upon apphcations for provisional 
 injunction is largely controlled by the consideration that the injury to the 
 moving party, arising from a refusal of the writ, is certain and great, while the 
 damage to the party complained of, by the issuance of the injunctioji, is 
 slight or inconsiderable. — Blount v. Societe, 53 Fed. 98; 3 C. C. A. 455. 
 
 Great Western v. Birmingham, 2 Phil. Ch. 602; Glassott v. Lang, 3 Myhie & C. 
 455; Shrewsbury v. Railroad, 1 Sim. (N. S.) 410; Georgia v. Braiseford, 2 Dall. 
 402. 
 
 To warrant a writ of preliminary injunction, not only must the infringement 
 be without reasonable doubt, but the rights of the patentee must be clear.
 
 502 THE FIXED LAW OF PATENTS § 562 
 
 Failing prior adjudication in favor of the validity of the patent, there must be 
 shown such continued public acquiescence in the exclusive right asserted as 
 raises a presumption of validity, a presumption not arising from the letters 
 patent unless accompanied by public acquiescence. The object of the pro- 
 visional remedy is preventive, largely ; and it will not be granted if it is more 
 likely to produce, than to prevent, possible mischief. — Standard Elevator 
 Co. V. Crane, 56 Fed. 718; 6 C. C A. 100. 
 
 In the Missouri case the court held that " complainants must show a clear 
 right in support of a preliminary writ, and a defense which puts a case in 
 doubt is sufficient to defeat the application." This is the rule which governs 
 all applications where the patent has not undergone prior judicial investiga- 
 tion and been sustained ; but in cases similar to the one before us, the general 
 rule is that where the validity of the patent has been sustained by prior 
 adjudication, and especially after a long, arduous and expensive litigation, 
 the only question open, on motion for a preliminary injunction, in a subse- 
 quent suit, against another defendant, is the question of infringement, 
 the consideration of the other defenses being postponed until final hearing. 
 The only exception to this general rule seems to be where the new evidence 
 is of such a conclusive character that if it had been introduced in the former 
 case, it would probably have led to a different conclusion. The burden is 
 on the defendant to establish this, and every reasonable doubt must be 
 resolved against him. — Philadelphia v. Edison, 65 Fed. 551 ; 13 C. C. A. 40. 
 
 Edison v. Beacon, 54 Fed. 678; Barbed Wire Patent, 143 U. S. 275. 
 
 The second stated objection to the interlocutory decree is " that the patent 
 has never been sustained by a court, nor sufficiently acquiesced in by the 
 public." To this it is enough to say that, until the defendants began to 
 infringe, the plaintiff had no occasion to apply to the courts to protect his 
 patent, and that, if public acquiescence neecl be shown to entitle the owner 
 of a valid patent to a preliminary injunction against clear infringement, 
 such acquiescence satisfactorily appears here in the facts stated in the opinion 
 of the court below. It is shown, indeed, that a large number of the plaintiff's 
 rings were not marked "Patented;" but a sufficiently large number of 
 them were so marked to give general notice that the ring was patented. There 
 was ample proof of pubUc acquiescence. — McDowell v. Kurtz, 77 Fed. 206; 
 23 C. C. A. 119. 
 
 Whenever it is manifest to the court that, upon the case made, an in- 
 junction will be granted at final hearing to the complainant, one should be 
 awarded to him preliminarily, in the absence of facts presenting special equit- 
 able considerations to induce the court, in the exercise of judicial discretion, to 
 withhold it. Under such circumstances there is no reason why the complain- 
 ant should not have his remedy immediately. Why should a court of equity 
 permit a wrong, indisputable and wanton, to go unredressed longer than nec- 
 essary? The object of a preliminary injunction is to preserve property 
 rights pending the final determination of the suit. — AUington v. Booth, 78 
 Fed. 878; 24 C. C. A. 378. 
 
 It is now objected that a preliminary injunction ought not to be allowed 
 while a demurrer is pending. Ordinarily, this is true, but there are exceptions 
 to the rule. In a case where, on examining the bill and the demurrer, the 
 court is not satisfied that the demurrer will, on the argument of it, be sus- 
 tained, and where, on the proofs submitted, allegations of fraud pleaded in 
 the bill are clearly proven, the court has, within reasonable bounds, a dis- 
 cretionary power to preserve the existing status of affairs by a preliminary 
 injunction to prevent the carrying out of the fraud until the demurrer ia
 
 § 563 INJUNCTION 503 
 
 argued and disposed of. Any other rule would open a wide door to the grossest 
 injustice. Prima facie, the complainant's patents, in the case in hand, are 
 valid, and since the demurrer admits, for the purposes of the argument of it, 
 the fraud pleaded in the bill, we should not disturb the order for an injunc- 
 tion pendente lite unless we are satisfied that there is reasonable doubt as to 
 the sufficiency of the bill in other respects than in the " formal defects " 
 found by the court below, or unless, on an independent examination of the 
 facts, we are satisfied no fraud has been shown. — Chester v. Tindel-Morris, 
 165 Fed. 899; C. C. A. 
 
 The only specific objections to the bill are that it fails to allege (1) that the 
 subject-matter of the patent was not abandoned, (2) that its subject-matter 
 was not patented in any foreign country more than two years prior to the 
 apphcation, and (3) that its subject-matter was not patented in any foreign 
 country more than seven months (in the case of one of the patents) or more 
 than twelve months (in the case of the other two) before the apj^lication in 
 this country was filed. These were the " formal defects " which were cured 
 by amendments, and we think that, in view of the fraud which seems on the 
 present ex parte proofs to be established, those defects were properly re- 
 garded as not sufficient to defeat the application for a preliminary injunction. 
 — Chester v. Tindel-Morris, 165 Fed. 899; C. C. A. 
 
 That where the bill shows distinct, palpable fraud on the part of the de- 
 fendant and the showing is not successfully controverted by the proofs, 
 even if the patent has not been adjudicated, an injunction should issue, see 
 Chester v. Tindel-Morris, 165 Fed. 899; C. C. A. 
 
 § 563. Grounds for Refusing — Acquiescence not Established. 
 
 The extent of the sale of a patented invention might characterize the 
 degree of public accjuiescence. The mere manufacture and placing upon 
 the market for sale cloes not indicate acc|uiescence by the public. — Ertel v. 
 Stahl, 65 Fed. 519; 13 C. C. A. 31. 
 
 That while a prior litigation which has been determined has force and 
 effect on a motion for a preliminary injunction, it would appear that the 
 recital in a bill of numerous pending suits is without effect as establishing 
 acquiescence, see Wilson v. Consolidated, 88 Fed. 286; 31 C. C. A. 533. 
 
 Three other patents, covering details of construction, are held by the com- 
 plainant, — a circumstance which may have a bearing on the alleged ac- 
 quiescence by the public, the taking out of licenses, etc., since it ma}- be that 
 some one or more of the other patents was the inducing cause to acceptance 
 of license. — Aquarama v. Old Mill, 115 Fed. 806; 53 C. C. A. 376. 
 
 We apprehend that the Circuit Court fell into error in relying upon ac- 
 quiescence of the public in the validity of the patent in suit as the ground 
 on which to grant an injunction. In as much as the complainant owned and 
 used the Wright patent, it would seem that acquiescence may have been in 
 deference to it rather than the patent in suit. The Wright patent had 
 stronger claims for recognition than the other, and we think it very unsafe 
 to rely upon public acquiescence shown by this record. It should be added 
 that public acquiescence, though sometimes, in doubtful cases, a matter of 
 consideration, is not available to maintain a patent palpably void. — Ameri- 
 can V. Wyeth, 139 Fed. 389; 71 C. C. A. 485. 
 
 The Union Co. and the Hall Co. were rivals in business, the former ad- 
 vocating and installing the so-called normal safety system and the latter
 
 504 THE FIXED LAW OF PATENTS § 564 
 
 the normal danger system. E^'ery consideration, not only of honesty in 
 competition but of self interest also, would induce the Union Co. to" expedite 
 its own system, which it thoroughly understood and in the efficiency of which 
 it had implicit confidence. To assert that its course, which was the natural 
 one for honorable men to adopt, was due solely to the Wilson (Hall Co.'s) 
 patents, is, we think, carrying the doctrine of acquiescence beyond the hmits 
 set by former adjudications. — Hall v. General, 153 Fed. 907 ; 82 C. C. A. 653. 
 
 The railroads are the complainant's only customers and for many years 
 the Hall Co.'s only competitor was the Union Co. In a technical sense, 
 therefore, there was no public acquiescence. It is not the case of a patented 
 device going into long continued general use in circumstances which compel 
 the conviction that infringements would have occurred were it not for a 
 settled conviction on the part of those who might profit by infringing that 
 the patent is vaUd. — Hall v. General, 153 Fed. 907 ; 82 C. C. A. 653. , 
 
 § 564. Grounds for Refusing — Conflicting Proofs. 
 
 Assuming, for the purpose of a preliminary injunction, that the patent is 
 valid, as the court rightfully did (Elec. Mfg. Co. v. Edison, 61 Fed. 834) 
 it still remained that, to warrant a preliminary injunction, the fact of in- 
 fringement should be made out beyond reasonable doubt (Standard Elev. Co. 
 V. Crane, 56 Fed. 718). There is here so much of doubt with respect to the 
 proper construction of the claims of the patent and of their infringement 
 that it is needful to have an investigation into the prior art to determine 
 the exact limitation of the claims, and to have " the search-light of an in- 
 telligent cross-examination " to determine conclusively the fact of infringe- 
 ment. — Menasha v. Dodge, 85 Fed. 971 ; 29 C. C. A. 508. 
 
 While the remedy is a valuable one, it is also a dangerous one; and when 
 applied improvidently may work irreparable mischief. It should never be 
 applied when the complainant's case is doubtful, — except indeed where 
 the object is merely to preserve the status quo, — as when alleged rights are 
 menaced. — Whippany v. United, 87 Fed. 215; 30 C. C. A. 615. 
 
 Brush V. Electric, 64 Fed. 775; Machine Co. v. Adams, Fed. Gas. 752; Standard 
 V. Crane, 56 Fed. 718. 
 
 No description of evidence is so unreliable as ex parte affidavits, and dis- 
 puted questions can never be safely decided upon it. — Whippany v. United, 
 87 Fed. 215; 30 C. C. A. 615. 
 
 That where the ex parte proofs are at absolute variance; that where a 
 license which would estop the defendant is averred by complainant and flatly 
 contradicted by the defendant; that where such license is produced, but 
 is unsigned by any of the parties; and where every allegation is met with 
 absolute contradiction, the court should refuse a preliminary injunction, see 
 Aquarama v. Old Mill, 115 Fed. 806; 53 C. C. A. 376. 
 
 The preliminary proofs relating thereto are very conflicting. The defend- 
 ant is a mere user. No irreparable injury, or, indeed, any special injury, 
 to the complainant from the defendant's use is allegecl or 'shown. Under 
 the circumstances, then, we think the court should have forborne to act 
 until full proofs were before it. — Jefferson v. Westinghouse, 134 Fed. 392; 
 67 C. C. A. 189. 
 
 This is a question of too much difficulty to be decided upon the ex parte 
 opinions of experts. The depositions deal with an abstruse and recondite
 
 §§ 565-567 INJUNCTION 505 
 
 subject, and present conflicting theories, which cannot safely be accepted 
 without the searching elucidation which a cross-examination of the experts 
 may afford. The experts are in flat contradiction upon the question of in- 
 fringement, and, in view of the large importance of the controversy, the rights 
 of the parties should be reserved for decision until final hearing. — • Westing- 
 house V. Montgomery, 139 Fed. 868; 71 C. C. A. 582. 
 
 The circuit judge in granting the injunction inserted the following: " noth- 
 ing in this injunctional order shall prevent, or is intended to prevent or 
 enjoin, the defendant from handling, using or selling rubber tires and rims 
 covered by the Grant patent, manufactured by the Goodyear Tire & Rubber 
 Company, having a right to manufacture, use, and sell such tires under a 
 judicial decree in a litigation in the federal courts in the district of Indiana, 
 heretofore pending between the complainants and such parties, wherein 
 it has been judicially determined that said Grant patent is invalid and void." 
 
 Held: It would seem that the rights of all can be best preserved by affirm- 
 ing the order, at the same time directing the circuit court (upon the filing 
 of a new bond or the extension of an old one) to suspend the operation of the 
 injunction until final disposition of the cause. The record at final hearing 
 will be so comprehensive as to present every question, and when it reaches 
 this court upon appeal a review of them can be secured by the Supreme Court 
 either by a certification or certiorari. — Consolidated v. Diamond, 157 Fed. 
 677; 85 C. C. A. 349. 
 
 Note: The decision of the Supreme Court upon the certification of this 
 case to it, should be watched for a further determination and modification 
 of the rule laid down in Kessler v. Eldred. 
 
 § 565. Grounds for Refusing — Damages Adequate Relief. 
 
 It would be most unwise to imperil, and presumably wholly to ruin, the 
 large capital and interests involved in the business of the appellants, by 
 arresting the enterprise in advance of a final decree, when the damages which 
 the appellee may sustain can be compensated in money. — Standard Elevator 
 Co. V. Crane, 56 Fed. 718; 6 C. C. A. 100. 
 
 It is by no means the duty of a court of equity to cause an infringer, who 
 is a user, to suffer a pecuniary calamity, which ruins him, and is far out of 
 proportion to the benefit which the owner of the patent would otherwise 
 be entitled to receive. — Edison v. Mt. Morris, 58 Fed. 572; 7 C. C. A. 375. 
 
 § 566. Grounds for Refusing — Infringement not Clear. 
 
 The injunction in this case ought not to have been granted, unless, on 
 the facts proven, the respondent had clearly taken the complainant's device. 
 The rule is thus applied to cover the issue of infringement as well as that of 
 the validity of the patent. — Hatch v. Electric, 100 Fed. 975 ; 41 C. C. A.- 133. 
 
 Blakey v. Mfg. Co. 95 Fed. 136; Walk. Pat. sec. 676; Rob. Pat. sec. 1173. 
 
 It is quite manifest that there is presented a substantial question as to 
 infringement, which can be settled only upon construction of the patents, 
 and that requires a presentation of the state of the art and a history of the 
 invention in the Patent Office. The case would seem to be one in which pre- 
 liminary injunction should not be granted without proof of prior adjudi- 
 cation. — Reed v. Smith, 107 Fed. 719; 46 C. C. A. 601. 
 
 § 567. Grounds for Refusing — Insufficiency — General. 
 
 In Standard v. Crane, 56 Fed. 718, we declared the principles which 
 should govern in granting injunctions in patent cases pendente Ute. We are
 
 506 THE FIXED LAW OF PATENTS § 567 
 
 satisfied that this case falls within the principles therein asserted. We do 
 not deem it proper here and now to say more than this; that the fact of 
 infringement is not clear from doubt. The issuance of the patent for the 
 device of the appellant raises a certain presumption that it does not infiinge 
 the prior patent of the appellee. That presumption has not, for the purpose 
 of an injunction before decree, been overcome to such extent that we can 
 say the fact of infringement is not doubtful. There has been no adjudication 
 sustaining the vahdity of the patent in suit. The public acquiescence as- 
 serted we regard of doubtful character; as referred to the particular device 
 alleged to be here infringed, neither clearly stated nor well sustained by 
 proof. If, however, the fact were otherwise respecting the question of public 
 acquiescence, and the validity of the patent may be said to be conclusively 
 established, we shall regard the question of infringement to rest in such 
 doubt that, within the principles governing the granting of preliminary in- 
 junctions, we think the restraining order here ought not to have issued. 
 The pecuniary ability of the appellant to respond in damages, if they shall 
 ultimately be adjudged infringers, is not impugned. — Ertel v. Stahl, 65 
 Fed. 517; 13 C. C. A. 29. 
 
 There is a prayer for an injunction presented in the bill before us. It is 
 important, however, to determine whether thel'e are sufficient facts pre- 
 sented in the bill to warrant the court in granting this prayer. There are 
 no allegations showing that the patent rights of appellants have been long 
 recognized by the public; no allegations showing that its validity had ever 
 been determined in an action at law. There are no allegations showing 
 grounds for a discovery. In fact, it does not appear but that every important 
 question presented in the bill could be tried as well at law as in equity. In 
 the case of GuttaPerchai). Goodyear, 3 Saw. 542, Judge Sawyer thus presents 
 this matter, in considering the bill in that case: "There is no allegation 
 that the matter has ever been litigated before and decided in favor of com- 
 plainant, and no allegation in the bill that the right of complainant has been 
 submitted to or recognized by the public. The bill, as an injunction bill, 
 is defective in this particular." In the case of Hockholzer v. Eager, 2 Saw. 
 361, the court, while acknowledging that it is not always necessary that 
 the bill for an injunction should show that there had been a trial at law, 
 testing the rights of the patentee, and the validity of his patent, said: " Some- 
 thing more than a grant of letters patent must be shown, — something which, 
 in the absence of a trial at law, rqay take its place in establishing the validity 
 of the patent." We think the view taken in these cases is in accordance 
 with the general view entertained in courts of equity in regard to bills in 
 equity, in patent causes, asking for an injunction. — Walk. Pat. 660; Story 
 Eq. Jur. 934. — Germain v. Wilgus, 67 Fed. 597; 14 C. C. A. 501. 
 
 Note: Doubtful holding. 
 
 The motion for an injunction was heard within eight days after the filing 
 of the bill, before any answer could properly be required, and before answer 
 filed. The validity of the patent, as well as the attack upon it, rests wholly 
 upon ex parte testimony, which, we observed in Standard v. Crane, 56 Fed. 
 718, to be not wholly reliable. We are not satisfied that the attack upon the 
 patent is pretentious merely, or that it is offered or tendered in bad faith. 
 It may fail to be sustained, but it is not manifestly without foundation, and 
 so ineffective to secure the appellee an opportunity to present his defense 
 according to the usual procedure in like cases. This patent has never passed 
 judicial scrutiny. It was but recently issued, some four months prior to the 
 hearing upon the motion for injunction. If public acquiescence could be 
 inferred, under any circumstances, within that brief period, it certainly 
 does not exist in this case, for there are at least three different infringements
 
 § 567 INJUNCTION 507 
 
 complained of, and acquiescence is showTi by one party only. — Williams v. 
 Breitling, 77 P>d. 2S5; 23 C. C. A. 171. 
 Ertel V. Stahl, 65 Fed. 519. 
 
 The implication here that a temporary injunction may be the sole object 
 of a bill is not true. Such relief is granted only as incidental and auxiliary 
 to the final relief prayed, which, of course, may be only an injunction. The 
 appellee therefore, has no right to rest upon the preliminary order and the 
 decree pro confesso. — Antisdel v. Chicago, 89 Fed. 308 ; 32 C. C. A. 216. 
 
 A preliminary injunction should never be awarded where the right is 
 doubtful, or the wrong uncertain, and that the infringement here charged 
 has not been established. — Blakey v. National, 95 Fed. 136; 37 C. C. A. 27. 
 
 American v. Elizabeth, 4 Fish. Pat. Cas. 189; Consolidated v. Accumulator, 55 
 Fed. 485; Van Camp v. Cruikshanks, 90 Fed. 814; Williams v. McNeely, 56 Fed. 
 265. 
 
 The patent sued upon is a very recent one, and there is no such proof 
 of long continued acquiescence by the public as would raise^ a prima facie 
 case in the patentee's favor. Under such circumstances, it is the practice 
 in this court to refuse preUminary injunction when there has been no adjudica- 
 tion sustaining the patents, if there appears to be any fair question as to the 
 invention, anticipation, construction, or infringement. — Reed v. Smith, 
 107 Fed. 719; 46 C. C. A. 601. 
 
 Dickerson v. Machine, 35 Fed. 143. 
 
 The patents have never been litigated, and there is no proof of public 
 acquiescence. The affidavits and exhibits raise such a serious question as 
 to infringement that, under the rule already stated, we think the application 
 for a preliminary injunction should have been refused, — Newhall v. McCabe, 
 125 Fed. 919; 60 C. C. A. 629. 
 
 The bill was filed within one year after the issuance of the patents in 
 suit, they have never been litigated, and there is no proof of public acqui- 
 escence. Injunction refused. — Newhall v. McCabe, 125 Fed. 919; 60 
 C. C. A. 629. 
 
 First. The five patents in suit relate to a difficult, complex and abstruse 
 subject. Because of its complicated character, the court should have the 
 benefit of the opinions of those skilled in the art tested and clarified by 
 cross-examination. 
 
 Second. The patents have never been adjudicated or judicially construed. 
 
 Third. The defendants assert that the patents are invalid for lack of 
 novelty and invention and that the claims of three of the patents are not 
 infringed. 
 
 Fourth. We think the complainants have failed to prove a case of ac- 
 quiescence. There has been no long continued pubUc acquiescence. 
 
 Fifth. We are not convinced that the complainants will suffer irreparable 
 damage. That the defendants are amply responsible is conceded. 
 
 Sixth. We think the record presents too many elements of doubt to 
 warrant the issuing of a preliminary injunction. — Hall v. General, 153 Fed. 
 907; 82 C. C. A. 653. 
 
 The patent is a very recent one — issued only a few weeks before the 
 motion is made. It had never been adjudicated. The decision in inter- 
 ference was not the equivalent of adjudication as to patentability and in- 
 fringement; and sufficient time has not elapsed to present proof of general
 
 508 THE FIXED LAW OF PATENTS §§ 568-569 
 
 acquiescence. Validity and infringement are vigorously disputed, and we 
 think both questions should be left for determination at final hearing. — 
 Hildreth v. Norton, 159 Fed. 428 ; 86 C. C. A. 408. 
 
 Hall V. General, 153 Fed. 907; Newhall v. McCabe, 125 Fed. 919. 
 
 § 568. Grounds for Refusing — Laches. 
 
 When there was a delay of seventeen years nearly and no explanation 
 was made, such laches would disentitle complainant to a preliminary in- 
 junction. — Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 772. 
 
 McLaughlin v. Peoples, 21 Fed. 574; American v. Chicago, 41 Fed. 522; Keyes 
 V Pueblo 31 Fed. 560; Root v. Railway, 105 U. S. 189; Clark v. Wooster, 119 
 U. S. 322;' Lane v. Locke, 150 U. S. 193. 
 
 It has never been held that mere laches, unaccompanied by circumstances 
 which amount to an equitable estoppel, shut out a party from all relief 
 in a court of equity. Knowledge of and long continued acquiescence by a 
 complainant in an infringement may, in special cases, be fatal on a motion for 
 preliminary injunction, but will not, on a final hearing, prevent the Court 
 from granting such relief as may be just and equitable. This is the general 
 rule which is recognized in the authorities. — Taylor v. Sawyer, 75 Fed. 
 301 ; 22 C. C. A. 203. 
 
 Kittle V. Hall, 29 Fed. 508; McLean v. Fleming, 96 U. S. 245; Menendez v. 
 Holt, 128 U. S. 514; Price v. Steel, 46 Fed. 107; N. Y- v. Buffalo, 18 Fed. 638; 
 Gilm'ore v. Anderson, 38 Fed. 846; Brush v. Electric, 45 Fed. 241. 
 
 One who, with full knowledge of a patentee's claim of infringement, and 
 against his protest, continues to trespass, cannot, on the ground of the 
 estoppel or laches of the patentee, successfully defend a suit for infringement 
 brought, or a motion for a preliminary injunction made within a reasonable 
 time. Repeated wilful trespasses establish no right to their continuance. 
 And mere delay by a patentee to bring his suit or to apply for his preliminary 
 injunction for any reasonable length of time after an infringer is informed 
 of his trespass, unaccompanied with such acts of the patentee and such facts 
 and circumstances as amount to an equitable estoppel, will not deprive 
 him either on the ground of laches or estoppel, of his right to a temporary 
 injunction or to a recovery. Moreover, delay in prosecuting other infringers 
 during the time while the validity of the patent is in litigation does not 
 constitute laches. — Stearns-Roger v. Brown, 114 Fed. 939; 52 C. C. A. 559. 
 
 American v. Southern, 34 Fed. 795; Edison v. Sawyer, 53 Fed. 592; Green v. 
 Barney, 19 Fed. 420; Norton v. Can Co. 57 Fed. 929. 
 
 Defendant did not put its tool on the market until in the spring or sumrner 
 of 1899. Within a month or so thereafter complainants began litigation 
 with infringers, and has continued to litigate ever since. They were under 
 no obligation to sue everyone at the same time. — Timolat v. Franklin, 
 122 Fed. 69 ; 58 C. C. A. 405. 
 
 American v. National, gOPed. 824; Edison v. Mt. Morris, 57 Fed. 644. 
 
 § 569. Grounds for Refusing — License. 
 
 The defendant set up as its main plea, a license. While there was some 
 question as to whether certain mndifi cat inns and conditions of the license 
 contract might, on final adjudication, be held not to excuse the acts com- 
 plained of, the court held that the fact of such license, creating a serious doubt 
 as to the right of complainant to recover, should bar the granting of a pre- 
 liminary injunction. — American v. Talking Machine, 98 Fed. 729; 39 
 C. C. A. 245.
 
 $§ 570-571 INJUNCTION 509 
 
 That an injunction will not lie against a vendee who obtains a license 
 upon notice of infringement; but that such licensing does not excuse the 
 vendor, see Johnson v. Foos, 141 Fed. 73; 72 C. C. A. 105. 
 
 § 570. Grounds for Refusing — Prior Adjudication Insufl5- 
 cient. 
 
 In the absence of prior adjudication or public acquiescence, a preliminary 
 injunction should not be granted unless the rights of the patentee be clear 
 and the infringement without reasonable doubt. — Electric v. Edison, 61 
 Fed. 834; 10 C. C. A. 106. 
 
 Standard v. Crane, 56 Fed. 718. 
 
 That where an injunction has been granted following the decision of the 
 circuit court in another circuit, and thereafter the circuit coui't of appeals has 
 reversed the decision followed, even if the reversal was not on the merits, 
 it is sufficient to warrant the vacating of the injunction, see Prieth v. Camp- 
 bell, 80 Fed. 539 ; 35 C. C. A. 624. 
 
 Note: This seems to me an extreme rule, if it is to be taken as a general 
 rule ; because it is perfectly evident that a case might be reversed on grounds 
 wWly unconnected with the question of merit and thus deprive the in- 
 ventor of an adjudication of great value. 
 
 Upon an application for preliminary injunction, it would be a most ex- 
 ceptional case which would warrant the court in expanding the claim beyond 
 the limits fixed in an exhaustive opinion at final hearing. — Dodge v. Fulton, 
 92 Fed. 995; 35 C. C. A. 140. 
 
 That even where a claim has been previously adjudicated, if its construction 
 with reference to the infringement complained of is in doubt, the injunction 
 should be refused, see Sprague v. Nassau, 95 Fed. 821; 37 C. C. A. 286. 
 
 That where a prior adjudication is set up as grounds for preliminary 
 injunction and there are facts involved in the issue other than those deter- 
 mined by the prior adjudication, such facts must be clearly shown, see 
 Hatch V. Electric, 100 Fed. 975; 41 C. C. A. 133. 
 
 Complainant relies upon a decision of the Patent Office in an interference 
 proceeding, in which eight different appUcants were involved, of whom only 
 Shaw and Asher took testimony. That decision, however, only settled the 
 question of priority as between Shaw and Asher, and is not such an adjudi- 
 cation as the practice calls for, where there is substantial question as to 
 construction and infringement. — Reed v. Smith, 107 Fed. 719; 46 C. C. A. 
 601. 
 
 Dickerson v. Machine Co. 35 Fed. 143; Ironclad v. VoUrath, 52 Fed. 142; 
 Rogers v. Mergenthaler, 58 Fed. 693. 
 
 §571. Grounds for Refusing — Title in Doubt. 
 
 It is sufficient to say, therefore, without passing on any of these questions, 
 that the uncertainty as to said agreements, and the contradictory character 
 of the affidavits, leave the question of license in such serious doubt that we 
 think no injunction should issue except after an opportunity has been given 
 to resolve said doubt upon final hearing. — Armat v. Edison, 125 Fed. 939; 
 60 C. C. A. 380.
 
 510 THE FIXED LAW OF PATENTS §§ 572-573 
 
 It is a fundamental principle that injunctions ought not to issue unless 
 the right alleged to be invaded or threatened is clear. — St. Louis v. Sanitary, 
 161 Fed. 725; <S6 C. C. A. 585. 
 
 Truly V. Wanzer, 5 How. 141. 
 
 § 572. Grounds for Refusing — Validity Contested. 
 
 The validity of the patent is strongly assailed; its infringement is vigor- 
 ously denied. We think it clearly within the ruling of Standard v. Crane, 
 56 Fed. 718 and Ertel v. Stahl (herewith decided), 65 Fed. 517. — Ertel v. 
 Stahl, 65 Fed. 519; 13 C. C. A. 31. 
 
 Where the validity of the patent and the infringement are denied, and 
 defendant sets up valid defenses, there should be strong proof of acquiescence 
 to warrant the issuing of an injunction. — American v. Phoenix, 113 Fed. 629; 
 51 C. C. A. 339. 
 
 Smith V. Britannia, 92 Fed. 1003; Fastener v. Fastener, 94 Fed. 523. 
 
 § 573. Modification. 
 
 Many users of electric plants had put in their plants prior to the adjudi- 
 cation of the Edison patent, and when it was confidently believed it was 
 invalid. On proper presentation of their case and their willingness to pur- 
 chase the Edison lamps the court would modify the injunction as to them, 
 to enable them to continue in business, — Edison Electric v. Sawyer-Man. 
 53 Fed. 592; 3 C. C. A. 605. 
 
 Note: It seems to me this holding is most questionable. The remedy 
 for the hardship lay farther back. So long as the damage clearly was not 
 irreparable, the relief under a reasonable bond would have been not only 
 proper but a better tempering of the case to equity than the manufacture of 
 a quasi excuse on the grourid that these innocent persons did not respect 
 the prima facie of the patent which the law gives it. Almost as well might 
 the court say, " the patent means nothing until we have passed upon it; 
 and if we have to uphold it, we will temper our judgment to him who has 
 relied upon our theory." 
 
 The defendants, in desiring to obtain an unlimited future capacity of 
 ownership of the patented lamps, for the purpose of extending their competi- 
 tive power, are asking too much. We perceive no controlling equity which 
 cause us to compel the Illuminating Company, which owns an equitable 
 title to the lamp patent, to sell lamps to a competitor for the purpose 
 of enabling it to utilize the unused portion of its plant, and extend . its 
 business into unoccupied territory, and thus permit it to deprive the 
 owner of all the material benefit of the patent during the comparatively 
 brief residue of its life. — Edison v. Mt. Morris, 58 Fed. 572 ; 7 C. C. A. 375. 
 
 The affirmance in this court of a preliminary order or an interlocutory 
 decree granting an injunction does not operate to deprive the circuit court 
 of the power, inherent in it, temporarily to suspend such injunction, upon 
 sufficient cause shown, after proper notice, whenever the ends of justice call 
 for the exercise of such power. — Edison v. U. S. 59 Fed. 501 ; 8 C. C. A. 200. 
 
 It is thus manifest that the defendant is enjoined from making the tubes 
 for any purpose whatever, and that the repair of a single tube is within the 
 prohibition of the injunction. In this respect we think the decree is too 
 broad and sweeping. The theory of the rule invoked by the complainant 
 is that the patentee of a combination cannot be deprived of his gains and 
 profits by the conversion of an old and defunct machine under the guise
 
 §574 
 
 INJUNCTION 511 
 
 of repairs. If anew machine be needed the patentee is entitled to furnish it, 
 but on the other hand, the purchaser of a patented machine is entitled to 
 make necessary repairs and to replace worn out parts, not separately pa- 
 tented so long as the identity of the licensed machine is not destroyed. 
 If this'be lawful for the owner, it is equally so for the mechanic who is em- 
 ployed to do the work; the latter cannot be held as an infringer for making 
 repairs which the former has an undoubted right to make. — Morrin v. 
 White, 143 Fed. 519; 74 C. C. A. 466. 
 
 That an injunction is properly limited according to the specific terms of 
 Kessler v. Eldred, 206 U. S. 285 ; but that it must not be extended to defeat 
 the rights of patentees, see Consohdated v. Diamond, 162 Fed. 892; 89 C. 
 C. A. 582. 
 
 § 574. Non-User. 
 
 The facts were that complainant owned and held the patent in suit, but 
 did not use it, apparently because, from manufacturing reasons it was de- 
 sirable to use other apparatus already in use. It was contended by defendant 
 that such nonuser, under the broad and general provision of the constitution, 
 prevented the complainant from invoking equitable relief, and that whatever 
 relief it had was by action at law. Held: but granting all this, it is certainly 
 disputable that the nonuse was unreasonable, or that the rights of the public 
 were involved. There was no question of a diminished supply or of increase 
 of prices and can it be said, as a matter of law, that a nonuse was unreason- 
 able which had for its motive the saving of the expense that would have been 
 involved by changing the equipment of a factory from one set of machines 
 to another? And even if the old machines could have been altered, the ex- 
 pense would have been considerable. As to the suggestion that competitors 
 were excluded from the use of the new patent, we answer that such exclusion 
 may be said to have been of the very essence of the right conferred by the pat- 
 ent as it is the privilege of any owner of property to use or not use it, with- 
 out question of motive. We have seen that it has been the judgment of 
 Congress from the beginning that the sciences and useful arts couldbe best 
 advanced by giving an exclusive right to an inventor. It is manifest, as 
 is said in Walker on Patents, sec. 106, that Congress has not " overlooked 
 the subject of nonuser of patented inventions." And another fact may be 
 mentioned. In some foreign countries the right granted to an inventor 
 is affected by nonuse. This policv, we must assume, Congress has not been 
 ignorant of nor of its effects. It has, nevertheless, selected another policy; 
 it has continued that policy through many years. We may assume that 
 experience has demonstrated its wisdom and beneficial effect upon the arts 
 and sciences. From the character of the right of the patentee we may judge 
 of his remedies. It hardly needs to be pointed out that the_ right can only 
 retain its attribute of exclusiveness by a prevention of its violation. Any- 
 thing but prevention takes away the privilege which the law confers upon 
 
 the patentee. 1 -j j ..i, j. 
 
 In a number of the circuit courts of appeals, it has been decided that, 
 as a consequence of the exclusive right of the patentee, he is entitled to an 
 injunction against an infringer, even though he does not use the patented 
 device. Edison v. Mt. Morris, 58 Fed. 572; Heaton v. Eureka, 77 Fed. 294; 
 Crown V. Aluminum, 108 Fed. 845; Fuller v. Berger, 120 Fed. 274; Lamson v. 
 Hillman, 123 Fed. 416; Victor v. The Fair, 123 Fed. 425; U. S. v. Griffin, 126 
 Fed. 364; Rupp v. Elhott, 131 Fed. 730; Railway v. Monroe, 147 Fed. 241; 
 Jewell V. Jackson, 140 Fed. 340; U. S. v. Bradley, 149 Fed. 222; Rubber v. 
 Milwaukee, 154 Fed. 358; Indiana v. Case, 154 Fed. 365. 
 
 Cases holding that, as incident to the right, he is entitled to an injunction, 
 though he has not used the invention, are Carr v. Rice, Fed. Cas. 2440;
 
 512 THE FIXED LAW OF PATENTS §§ 575-576 
 
 Wintermute v. Redington, Fed. Cas. 17,896; Ransom v. N. Y. Fed. Cas. 
 11,573; Pitts v. Wemple, Fed. Cas. 20, 194; Whitney v. Emmet, Fed. Cas. 
 17,585; Broadnax v. Central, 4 Fed. 214; Re Broasnahan, 18 Fed. G2; Con- 
 solidated V. Coombs, 39 Fed. 803; Wirt v. Hicks, 46 Fed. 71; Campbell v. 
 Manhattan, 49 Fed. 930; Edison v. Mt. Morris, 57 Fed. 462; Masseth v. 
 Johnston, 59 Fed. 613 ; Bonsack v. Smith, 70 Fed. 383 ; Columbia v. Freeman, 
 71 Fed. 302; Wyckoff v. Wagner, 88 Fed. 515; White v. Peerless, 111 Fed. 
 190; Brodrick v. Mayhew, 131 Fed. 92; National v. Daab, 136 Fed. 891; 
 Hoe V. Miehle, 141 Fed. 115; Hartman v. Park, 145 Fed. 358. 
 
 Counsel for petitioner cites counter cases, which he contends are more 
 direct authority: Isaacs v. Cooper, Fed. Cas. 7,096; Ogle v. Ege, Fed. Cas. 
 10,462; Motte v. Bennett, Fed. Cas. 9,884; Sullivan v. Redfield, Fed. Cas. 
 13,597; Magic v. Douglas, Fed. Cas. 8,948; Hoe v. Knapp, 27 Fed. 212; Ger- 
 main V. Wilgus, 67 Fed. 600; Campbell v. Duplex, 86 Fed. 531 ; 1 Rob. Pat. 
 sec. 43; Curt. Pat. sec. 320, 1st ed., sec. 406, 3 ed. — Continental v. Eastern, 
 210 U. S. 405; 51 L. Ed. 992; 28 S. Ct. 748. 
 
 As the patentees have never made any use of their alleged invention, nor 
 attempted to do so, nor permitted its use by others, nor given any explana- 
 tion of the non-user, or any reason for it ; I doubt whether the case submitted 
 is not one of a mere legal right, and whether the complainant should not be 
 left to its remedy at common law, if entitled to any relief at all. — Mem. 
 of Putnam, C. J. in N. Y. v. Hollingsworth, 56 Fed. 224; 5 C. C. A. 490. 
 
 See Sup. Ct. decision supra. 
 
 § 575. Patent Office Decisions. 
 
 An interference proceeding cannot be invoked against strangers on the 
 question of a preliminary injunction. Judge Lacombe, who carefully re- 
 viewed the decisions in this regard, came to the just conclusion that the only 
 adjudication which can support such an injunction is a judicial one. — Wilson 
 V. Consolidated, 88 Fed. 286; 31 C. C. A. 533. 
 
 Walk. Pat. sec. 674; Dickerson v. Machine Co. 35 Fed. 143. 
 
 The decision in interference was not the equivalent of an adjudication 
 as to patentability and infringement. — Hildreth v. Norton, 159 Fed. 428 ; 
 86 C. C. A. 408. 
 
 § 576. Powers and Scope. 
 
 Federal courts vested with jurisdiction in such cases have power, in 
 their discretion, to grant injunctions to prevent the violation of any right 
 secured by a patent, as in other cases of equity cognizance. — Parks v. 
 Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 Jurisdiction and power to grant, history and general statement. — Root v. 
 Railway, 105 U. S. 189; 26 L. Ed. 975. 
 
 The complainant was thus compelled not only to go into another juris- 
 diction to try points at issue below, but also to go into the jurisdiction 
 of a law court in which he could not avail himself of his equities. Under these 
 circumstances the court below enjoined him. It is a familiar principle that 
 when a court of equity has taken jurisdiction of a controversy and has all 
 the parties before it, it proceeds to give full relief, and it can enjoin any pro- 
 ceedinffs in any other court touching the matters in controversy before it. — 
 Berliner v. Seaman, 113 Fed. 750; 51 C. C. A. 440. 
 
 The injunction forbids " the making, using, or selling of any apparatus 
 embodjnng the inventions recited or specified " in the claims of the patents.
 
 § 577 INJUNCTION 513 
 
 The monopoly of a patent extends to the making or selling, as well as the 
 using of the patented device within the United States. — Bullock v. West- 
 inghouse, 129 Fed. 105; 63 C. C. A. 607. 
 
 Adams v. Burks, 17 Wall. 453; Heaton v. Eureka, 77 Fed. 288; Dorsey v. 
 Bradley, 12 Blatchf. 202. 
 
 § 577. Violation of — Contempt. 
 
 Process of contempt is a severe remedy and should not be resorted to 
 where there is fair ground of doubt as to the wrongfulness of the defendant's 
 conduct. — California v. Molitor, 113 U. S. 609; 28 L. Ed. 1106; 5 S. Ct. 618. 
 
 The power of the court to direct the payment of a part or all of the fine 
 to the complainant in an application for contempt, as a compensation for his 
 time and outlay in prosecuting the application, has been also recognized 
 in the circuit courts especially in this circuit; and in practice is a power which 
 ought to be exercised when the expenses and trouble to which the complain- 
 ant has been subjected justify its exercise. — Gary v. Acme, 108 Fed. 873; 
 48 C. C. A. 118. 
 
 In re Muller, 7 Blatchf. 23; Macauley v. Machine, 9 Fed. 698; in re Tift, 11 Fed 
 463; in re North Bloomfield, 27 Fed. 795; WeUs Fargo v. Oregon, 19 Fed. 20. 
 
 The articles sold in supposed violation of the temporary injunction had 
 been made before the injunction was granted, and pending the injunction 
 were shipped to Canada and there sold. There had been, therefore, no vio- 
 lation of the injunction, because there had been no making or selling or using 
 of the patented device after the allowance of the injunction, within the limits 
 of the United States. But it is elementary that neither the making, selling, 
 nor using of one element of a combination is infringement. — Bullock v. 
 Westinghouse, 129 Fed. 105; 63 C. C. A. 607. 
 
 Prouty 1'. Ruggles, 16 Pet. 336; Corn Planter Patent, 23 Wall. 181; Rowell v. 
 Lindsay, 113 U. S. 97. 
 
 The wilful violation of an injunction by a party to the cause is a contempt 
 of court constituting a specific criminal offense. Crosby case, 3 Wilson, 188; 
 Ex parte Kearney, 7 Wheat. 38; New Orleans v. Steamship, 20 Wall. 387; 
 Hayes v. Fischer, 102 U. S. 121. It is immaterial to consider the distinction 
 sometimes noticed between criminal and civil contempts, inasmuch as both 
 kinds involve the vindication of the authority of the court, whether the 
 remedy incidentally inure to the benefit of a party or not. Cyc. Law & P. 6 
 et seq. The proceeding to punish for a contempt is in the nature of a crim- 
 inal proceeding, whether the result be partially remediable or not, and the 
 same rules prevail which govern in the trial of indictments, the defendant 
 being entitled to any reasonable doubt. Accumulator v. Consolidated, 53 
 Fed. 793; In re Acker, 66 Fed. 291 ; Howell v. State, 10 Lea, 544: 4 Enc. PI. 
 & Pr. 768 et seq. ; U. S. v. Jose, 63 Fed. 951. — Bullock v. Westinghouse, 129 
 Fed. 106; 63 C. C. A. 607. 
 
 Proceedings of contempt are of two classes: Those prosecuted to pre- 
 serve the power and vindicate the dignity of the courts by punishing the 
 contemnor, and those prosecuted to compel observance and redress the 
 violation of orders or decrees made in behalf of a party to an action pending 
 before the court. The former are punitive and essentially criminal in their 
 nature, and the government, the courts, and the people are interested in their 
 prosecution. The latter are civil, remedial, and coercive in their nature, and 
 the parties chiefly interested in their conduct and prosecution are the in- 
 dividuals whose private rights and remedies they are necessary to redress.
 
 514 THE FIXED LAW OF PATENTS § 578 
 
 The intentional violation of an injunction by a party to the cause is an act 
 in defiance of the authority of the court and in derogation of the rights 
 of the adverse party, and a prosecution for contempt in such case may par- 
 take of both punitive and remedial character. — Christensen v. Westinghouse, 
 135 Fed. 774; 68 C. C. A. 476. 
 
 § 578' Violation of — Miscellaneous Rules. 
 
 The fines were, in fact, measured by the damages the plaintiff had sus- 
 tained and the expenses he had incurred. They were incidents of his claims 
 in the suit. His right to them was, if it existed at all, founded on his right 
 to the injunction, and that was founded on the validity of the patent. — 
 Worden v. Searles, 121 U. S. 14 ; 30 L. Ed. 853 ; 7 S. Ct. 814. 
 
 Distinguishing: Ex parte Kerney, 20 U. S. 39; New Orleans v. Steamship, 
 87 U. S. 387. 
 
 The sale was made in Canada of articles then in Canada to a Canadian 
 manufacturer to be used in the ordinary course of business, and, so far as 
 known, no one of the articles was thereafter used in the United States. 
 Inasmuch as the articles were made before the injunction, the manufacturer 
 was not in contempt of the court's order ; and as no preliminary arrangements 
 for the sale were made in the United States the sale did not come within the 
 prohibition. — Gould v. Sessions, 67 Fed. 163; 14 C. C. A. 366. 
 
 The defendant, after knowledge that the injunction had been issued, 
 did not cease the publication of its former advertisement, which exhibited 
 the " split fastener," or the circulation of postal cards having the picture 
 of the same device. It says that before the injunction was issued it had pre- 
 viously made a contract with several periodicals for a year's advertising, 
 that the advertisement as prepared included a picture of the split fastener, 
 and therefore, that the printed publication was not the act of the defend- 
 ants; but it did not change or take steps to alter the advertisement, and it 
 continued to circulate the old postal cards. An additional defense is that 
 the injunction prohibited selling the fastener, but did not prohibit offering it 
 for sale. These advertisements and postal cards showed a careless disregard 
 of the spirit of the order. If they had stood alone, the acts would very likely 
 not have been visited with punishment, but coupled with the sales oi the 
 new fasteners, they indicated an intent which was not consistent with in- 
 nocence. — Gary v. Acme, 108 Fed. 873; 48 C. G. A. 118. 
 
 Nor is the power of the court over its own process, as between the parties, 
 necessarily controlled by the rule of noninterference with press publications 
 as to disputed rights and claims of different parties as to the scope of its 
 decisions. It is probably true that, in a case of honest disagreement or 
 misunderstanding as to the true import of a decision, or in an extreme case 
 of abuse or misuse of process for the purpose of impairing or destroying 
 rights sought to be established by the court through its decision, the court 
 may proceed summarily in reference thereto. Such power, however, would 
 be exercised with reluctance, and ordinarily only in an extreme case. — 
 Hobbs V. Gooding, 113 Fed. 615; 51 G. G. A. 335. 
 
 In this case the defendant had been guilty of a previous violation of the 
 injunction order, but escaped on a lame excuse. The second violation was 
 two-fold, and the only reply defendant made was to raise technical objection 
 to notice &c. The circuit court fined the defendant in all $5,000, one-half 
 to the government and one-half to the complainant. On appeal, the court 
 held: If the fines in the present case had been imposed solely in favor of
 
 § 579 INJUNCTION 515 
 
 the government, the question whether they were reasonable or excessive 
 in amount would be so largely one of discretion for the court below that we 
 should not feel justified in disturbing them. We think that when the fine 
 is imposed by way of indemnity to the aggrieved party, it should not exceed 
 his actual loss incurred by the violation of the injunction, including the ex- 
 penses of the proceedings necessitated in presenting the offense to the judg- 
 ment of the court. We are also of opinion that when the fine is not limited 
 to the taxable costs it should not exceed in amount the loss and expenses 
 established by the evidence before the court. It follows that, although so 
 much of the orders as directs the payment of half of the fine to the clerk 
 for the use of the United States should be affirmed, that part which directs 
 the payment of half to the complainant should be reversed, with instructions 
 to the court below to take evidence and order payment to the complainant 
 of such sum only as may be found to be a sufficient indemnity. — Christensen 
 V. Westinghouse, 135 Fed. 774; 68 C. C. A. 476. 
 
 The service of a copy of an injunction upon the solicitors for the defend- 
 ant in an equity suit ordinarily affords sufficient notice to the defendant, 
 and should be deemed equivalent to actual notice to the defendant of the 
 contents. It is the duty of the solicitor promptly to inform his client of the 
 contents of the document, and the presumption is that he has done so. If 
 it should appear that he has not done so, the court would doubtless acquit 
 the defendant of any intentional misconduct in a proceeding to punish him 
 for violating the order. In this case there was the additional presumption 
 that a letter properly addressed and mailed reached its destination at the 
 proper time and was duly received by the person to whom it was addressed. 
 This is a presumption of fact resting on the consideration that the post office 
 is a public agent charged with the duty of transmitting letters, and that what 
 ordinarily results from the transmission of a letter through the post office 
 probably resulted in the given case; it is deduced from the knowTi course 
 of business, and the presumption that the officers of the postal system have 
 discharged their duty. — Christensen v. Westinghouse, 135 Fed. 774; 68 
 C. C. A. 476. 
 
 Rosenthal v. Walker, 111 U. S. 185; Kimberly v. Arms, 129 U. S. 512; Hen- 
 derson V. Carbondale, 140 U. S. 26; Schutz v. Jordan, 141 U. S. 213. 
 
 That a person not actually in the employ of or acting as agent of a de- 
 fendant, and having no official notice of the injunction, but actually pos- 
 sessing such knowledge and acting in collusion with defendant, may be 
 punished for contempt, see Hamilton v. Diamond, 137 Fed. 417; 69 C. C. A. 
 532. 
 
 § 579. Miscellaneous Injunction Decisions. 
 
 The right of a complainant to an injunction, on cause shown, is not 
 abridged by the fact that he has entered into a combination with others to 
 create a monopoly under his patents. — Edison Electric v. Sawyer-Man. 53 
 Fed. 592; 3 C. C. A. 605. 
 
 The fact that a contracting company had undertaken to build certain 
 devices for a licensee under the patent, and had also offered to furnish similar 
 devices, as part of another contract with another company, not a licensee 
 under the patent, does not constitute a threat of infringement sufficient to 
 justify a preliminary injunction. — Johnson v. Union, 55 Fed. 487 ; 5 C. C. A. 
 204. 
 
 We are clearly of the opinion that the court below, in refusing to modify 
 its order, and exempt from the writ of injunction the articles made by the
 
 516 THE FIXED LAW OF PATENTS § 579 
 
 company which as defendant in another suit upon this patent had given 
 bond to these complainants, and which had sold these articles to this defend- 
 ant acted in accordance with the established practice, and in the observance 
 of that rule of comity which has always prevailed in the courts of the United 
 States in hke cases. — Philadelphia v. Edison, 65 Fed. 551; 13 C. C. A. 40. 
 Sessions v. Gould, 49 Fed. 855; Electrical v. Julien, 47 Fed. 892; Gary v. 
 Spring, 27 Fed. 299; Goburn v. Clark, 15 Fed. 804; Siebert v. Michigan, 34 Fed. 
 33; Ladd v. Gameron, 25 Fed. 37. 
 
 It was earnestly urged to our consideration that unusual conditions existed 
 here, which should be persuasive to the allowance of the injunction in this 
 cause. The argument was with respect to the bicycle. Every part of its 
 construction is fugitive and changeable from year to year, and with respect 
 to the lamp in question, while its usefulness at the present was strongly as- 
 serted, it was, nevertheless, urged that it was likely during the present year 
 to be superseded by an electric lamp which would render the appellants' 
 lamp useless. If the argument be well founded in fact, it would be a strong 
 attack upon this lamp as a useful invention, within the meaning of the 
 patent law; and, if it be true that the lamp in question is likely to be specially 
 superseded, — since there is here no attack upon the financial ability of 
 the alleged infringer to respond in damages, while, on the contrary, it has 
 been shown affirmatively that it is abundantly responsible, — there would 
 seem to be no necessity for the injunction, since the inventor, if his lamp is 
 to have such brief existence, could be fully compensated, and would be aided 
 by the active exertions of the infringer in placing the lamp on the market 
 during the short term of its life. It is true the inventor claims that, by reason 
 of the appearance of this infringing lamp, he reduced the price of his own 
 lamp, to maintain it upon the market, and to undersell the infringing lamp. 
 That, however, was a voluntary, and possible ill-advised, act on his part, 
 since, if his patent should be sustained, he could recover damages measured 
 by the market price of the lamp as he had established it, and not by the price 
 which an infringer may receive for it. — WiUiams v. Breitling, 77 Fed. 285; 
 23 C. C. A. 171. 
 
 A settlement before final decree does not entitle the complainant to an 
 injunction. The bill should be dismissed. — Harden v. Campbell, 79 Fed. 
 653; 25 C. C. A. 142. 
 
 See, Gamewell v. Municipal, 77 Fed. 490. 
 
 The act of August 13, 1888, does not apply to suits for the infringement 
 of patents, or other actions of which the circuit court has exclusive jurisdiction. 
 — Southern v. Earl, 82 Fed. 690; 27 C. C. A. 185. 
 
 In re Hohorst, 150 U. S. 659; In re Keasbey, 160 U. S. 231. 
 
 We refer to them (the record and proceedings in the court below) only 
 because we do not wish to leave any presumption that we impliedly approve 
 that parties should proceed with a voluminous hearing on a mere motion 
 for an ad interim injunction at a time when a final hearing may be accom- 
 plished almost as speedily. — Wilson v. Consolidated, 88 Fed. 286; 31 
 C. C. A. 533. 
 
 The bill with the prayer for preliminary injunction was filed and defendant 
 required to show cause why an injunction should not issue on the return day. 
 On the return day defendant answered and filed affidavits. Complainant 
 did not move for injunction but afterwards moved the court for a show cause 
 order returnable in one week. Held: Manifestly being unprepared at that 
 time to proceed, and clearly it was not entitled at that time, as the pleadings
 
 § 580 INTERFERENCES 517 
 
 and proofs stood, to an injunction. Application was also made to the court 
 at that time for an injunction or restraining order pending the hearing of 
 the new motion. Motion denied. — Seiler v. Fuller, 102 Fed. 344; 42 C. C. A. 
 386. 
 
 Complainant held a license under the patent not exclusive, but an exclusive 
 hcense to the trade name applied to the patented article. He brought action 
 to restrain defendant from using such trade name, not being in position 
 to restrain defendant under the patent since he held a license right there- 
 under. It was held that, notwithstanding complainant held such exclusive 
 license to the trade name of the article, since said trade name had become 
 the common designation of the patented article, he could not exclude the 
 defendant from the use of the same. — Johnson v. Seaman, 108 Fed. 951 ; 48 
 C. C. A. 158. 
 
 Our attention is directed to the great loss the appellant will sustain, and 
 to the public inconvenience which, it is claimed, will be experienced, if the 
 injunction is allowed to go into effect. Injunction allowed. — Lanyon v. 
 Brown, 115 Fed. 150; 53 C. C. A. 354. 
 
 Curry, as patentee, is estopped to deny the validity of the claims ; and as 
 a mere employee, that he " may be enjoined whenever this is necessary to 
 protect the holder of the patent against future infringements, is universally 
 conceded." — Regent v. Penn, 121 Fed. 80; 57 C. C. A. 334. 
 
 Rob. Pat. sec. 912. 
 
 Defendant sells perforated music rolls, adapted for complainant's instru- 
 ments, and also several other varieties, not covered by complainant's patent. 
 The injunction restrains defendant from directly or indirectly vending to 
 others to be used music rolls adapted and intended to be used in mechanical 
 and musical instruments purchased from the complainant herein under 
 patent license to be used only with music rolls made and sold by said com- 
 plainant. — iEolian Co. v. Juelg Co. 155 Fed. 119; 86 C. C. A. 205. 
 
 INTERFERENCES. 
 
 The Statute § 580 
 
 General Statement § 581 
 
 Actions to Compel Issue of Patent 
 
 § 582 
 
 Appeals § 583 {see § 109) 
 
 Conclusiveness § 584 
 
 Miscellaneous § 585 
 
 See — Actions § 25; Adjudication 
 
 § 30; Appeals § 114; Commissioner of 
 Patents § 258; Estoppel § 383; In- 
 junction § 575; Interfering Patents 
 § 586; Patent Office § 783; Priority 
 § 810; Protest^s § 848; Public Use Pro- 
 ceedings § 859; Reduction to Practice 
 § 860; Res Judicata § 895 
 
 § 580. The Statute. 
 
 Sections 482 and 4909 relate to appeals in interferences, and sec. 4905 
 provides the method of taking proofs. The only provision necessary to 
 quote is the following: 
 
 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 Com- 
 missioner may issue a patent to the party who is adjudged the prior inventor, 
 imless the adverse party appeals from the decision of the primary examiner,
 
 518 THE FIXED LAW OF PATENTS §§ 581-584 
 
 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. — R. S. 
 4904. 
 
 § S8i. General Statement. 
 
 The law, practice, and procedure in interferences is a distinct and separate 
 branch of the patent law. The Court of Appeals, D. C. is the court of last 
 resort in interference matters; but since a Patent Office adjudication is 
 not final except between the parties or parties in privity, interference adju- 
 dications amount to little more than side lights which may or may not 
 illumine the subject. No branch of the patent law is more beset with tech- 
 nicalities, more objectionable on account of the power it gives to a powerful 
 litigant to exhaust a weak one, or more in need of reform to meet the changed 
 conditions of industrial life than that of interferences. 
 
 § 582. Actions to Compel Issue of Patent. 
 
 Where action is brought to compel issue of patent under R. S. sec. 
 4915, the court will not only determine prior rights but will also adjudi- 
 cate the patentabihty of the invention. — Hill v. Wooster, 132 U. S. 693; 33 
 L. Ed. 502; 10 S. Ct. 228. 
 
 In an action under sec. 4915 U. S. R. S. by a defeated party in an inter- 
 ference, when the question decided in the patent office is one between con- 
 testing parties as to priority of invention, the decision there made must be 
 accepted as controlling upon that question of fact in any subsequent suit 
 between the same parties, unless the contrary is established by testimony 
 which in character and amount carries thorough conviction. — Standard 
 V. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 Morgan v. Daniels, 153 U. S. 124. 
 
 § 583. Appeals. 
 
 That an appeal from a decision of a primary examiner upon a motion to 
 dissolve an interference in which it was held that the party had the right to 
 make a claim is not allowable, and that the patent office rule so providing 
 is not in contravention of the statutes, see Lowry v. Allen, 203 U. S. 476; 
 51L. Ed. 281; 27 S. Ct. 141. 
 
 § 584. Conclusiveness. 
 
 Decision of Patent Office on priority is controlling in a subsequent suit 
 between same parties, in the absence of other thoroughly convincing testi- 
 mony. — Morgan v. Daniels, 153 U. S. 120; 38 L. Ed. 657; 14 S. Ct. 772. 
 
 It is contended that it was too late for the complainant to raise the ques- 
 tion, in the court below, whether the invention of one of the parties was put 
 in issue in the interference and that he is thereby estopped. We do not 
 concur in this view. The interference issue is drawn up by the patent office 
 examiners, and the interference is declared, before either party has access 
 to the specifications of the other, and the claims made with respect to the 
 issue are submitted before the specifications are disclosed. Subsequently, 
 perhaps, the question might be raised, but we do not think that a failure 
 to raise it in the patent office, prevents its being brought to the attention 
 of the court in a proceeding like this by independent bill. — Christie v. 
 Seybold, 55 Fed. 69 ; 5 C. C. A. 33. 
 
 Hill r. Wooster, 132 U. S. 693.
 
 § 585 INTERFERENCES 519 
 
 Complainant withdrew from the contest and permitted — indeed assisted 
 — contestant to make out his case, and took a hcense under contestant s 
 patent. We regard it an admission of contestant's priority. — Shoe- 
 maker V. Merrow, 61 Fed. 945; 10 C. C. A. 181. 
 
 No alleged interference, on the merits of which the patent office finally 
 passed, and to which the Messrs. Cowles were parties, was declared until 
 after the issuing of the process patent in suit, and cannot of itself control 
 the scope, construction or vaUdity of the claims in question. 2 Rob. Pat. 588. 
 These interference proceedings can at most only serve to disclose the under- 
 standing of the patent office and of the parties to such interference at the 
 time as to the validity and scope of these claims. They are not conclusive 
 in any sense upon the rights of the appellant. — Elec. v. Carborundum, 102 
 Fed. 618; 42 C. C. A. 537. 
 
 This action was brought to cancel an agreement of Hcense from defendant 
 to complainant on the ground that the claims had been put in interference 
 and judgment rendered against them and in favor of the other interferent. 
 Demurrer was interposed on the ground that the suit was unseasonably 
 brought; that the adjudication by the examiner of interferences was not 
 final Held: That the judgment was not final. — Westinghouse v. Hein, 
 159 Fed. 936; 87 C. C. A. 142. 
 
 § 585. Miscellaneous. 
 
 If the inventions were practically one and the same the patent office was 
 in error in dividing the invention, and as it adjudged that plaintiff was the 
 prior inventor, he was the one entitled to the patent. — DuBois v. Kirk 
 158 U. S. 58; 39 L. Ed. 895; 15 S. Ct. 729. 
 
 It will hardly be contended, if Lobel had appeared upon the adjourned day, 
 that his cross-examination could not have proceeded legally. If on that day, 
 he had announced his refusal to be cross-examined, there would have been 
 ample timd to procure an order compeUing his attendance before the time 
 for taking the testimony had expired. It was not, however, until coun- 
 sel on the other side had consented to four adjournments that they were 
 informed that Lobel declined to be cross-examined further. It was then too 
 late to proceed within the assigned time, as but two days remained. Thus, 
 if Lobel's contention be sustained, he has, by persistently securing adjourn- 
 ments for his own convenience, deprived Cossey of a substantial right, the 
 exercise of which he postponed for the accommodation of and at the request 
 of Lobel. Contempt order affirmed. — Lobel v. Cossey, 157 Fed. 664; 85 
 C. C. A. 142. 
 
 The times for taking testimony had been fixed and the junior party had 
 delayed until near the close of his time limit and then called a witness, 
 examined him, and asked for adjournments which carried the time past 
 the time limit and into the period allotted to the senior party. The witness 
 refused to appear for cross-examination on the ground of expiration of time 
 for taking his testimony. On motion to punish him for contempt for refusal 
 to obey a subpcena issued by the circuit court, held: We are of the opinion 
 that Cossey had an undoubted right to cross-examine Lobel which right be- 
 came vested during the continuance of the time fixed by the Commissioner 
 of patents, and that the circuit court had jurisdiction to enforce the right 
 notwithstanding the fact that the time had expired when the authority of 
 the court was invoked. — Lobel v. Cossey, 157 Fed. 664; 85 C. C. A. 142.
 
 520 THE FIXED LAW OF PATENTS §§586-587 
 
 INTERFERING PATENTS. 
 
 Statutory Provision § 586 
 
 Rulings § 587 
 
 See — Priority § 808; Protests § 848; 
 
 Public Use Proceedings § 859; Re- 
 duction to Practice § 860 
 
 § 586. Statutory Provision. 
 
 Whenever there are interfering patents, any person interested in any one 
 of them, or in the working of the invention claimed under either of them, 
 may have relief against the interfering patentee, and all parties interested 
 under him, by suit in equity against the owners of the interfering patent; 
 and the court, 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 particu- 
 lar 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 right of any person except the parties to the suit and those 
 deriving title under them subsequent to the rendition of such judgment. 
 — R. S. 4918. 
 
 § 587. Rulings. 
 
 On an issue made directly between two patents under section 4918, R. S., 
 or otherwise, the complainant below would be required to prove earlier in- 
 vention in his behalf beyond reasonable doubt. (The complainant's patent 
 having been filed later.) — Brooks v. Sacks, 81 Fed. 403; 26 C. C. A. 456. 
 
 Morgan v. Daniels, 153 U. S. 120. 
 
 It is said that section 4918 was intended to subserve the single purpose 
 of enabhng parties to obtain an adjudication of priority of invention cov- 
 ered by interfering patents, with the consequent authority to declare the 
 patent of the later inventor void. Consequently, it is urged, the court has 
 no authority to enquire whether the supposed invention which is the subject 
 of the controversy is patentable or not. It appears from the opinion of the 
 learned judge who decided the case in the court below, found in the record, 
 that this construction of the statute was there accepted, upon the authority 
 of certain cases cited in the opinion, without any original consideration of the 
 question by him; but we are unable to agree that the court is so rigidly 
 tied down as such a construction of the statute would imply. On the con- 
 trary, we think the court is bound to determine whether, upon identifying 
 the subject matter of the interfering patents, the invention therein stated 
 is patentable. If it is not, and the court should go on and pronounce a 
 decree of nullity against one of the patents, it would do so at the instance 
 of one who has no right to protect, and consequently no standing on which 
 to assail his adversary. The parties would not stand on equal ground in 
 such a litigation, and the power of the court would be perverted to the 
 determination of an unprofitable inquest as to who was the first discoverer 
 of a nullity. The outcome would be that, while one pretender would be 
 dislodged, the other would occupy the field unscathed. We think that if, 
 upon inspection of the patents, or in the course of the investigation it must 
 make in order to determine the nature of the alleged invention, the court 
 should see that the patents are void for lack of patentable subject-matter, 
 it ought not to proceed to an inquiry as to who first discovered the thing 
 which the court finds to be null, and decree thereon, but should dismiss the 
 bill. Manifestly, it is necessary that the court should know what the in- 
 vention is which supports the patents, not generally, what the patents are 
 about, but what is the particular discovery for which each of the patents 
 was granted. — Palmer v. Lozier, 9Q Fed. 732; 33 C. C. A. 255.
 
 587 
 
 INVENTION 
 
 521 
 
 Foster v. Lindsay, 3 Dill. 126, Fed. Cas. No. 4976; Pentlarge v. Pentlarge, 19 
 Fed. 817; Lockwood v. Cleveland, 20 Fed. 164; Sawyer v. Massey, 24 Fed. 144; 
 American v. Ligowski, 31 Fed. 466; Electric v. Brush, 44 Fed. 602. 
 
 That the general rule as to demurrers in patent causes applies to actions 
 brought under sec. 4918 R. S., see Simplex v. Wands, 115 Fed. 517 ; 53 C. C. A. 
 171. 
 
 That the Patent Office records and file wrappers may be considered in 
 determining the question of interference between two patents, see Sim- 
 plex V. Wands, 115 Fed. 517; 53 C. C. A. 171. 
 
 Sutter V. Robinson, 119 U. S. 530; Sargent v. Lock Co. 114 U. S. 63; Brill v. 
 Car. Co. 90 Fed. 666. 
 
 The court is not limited to the language of the claims and specifications, 
 but may take into consideration certain extraneous facts. For example, 
 it may have recourse to the testimony of experts to ascertain the meaning 
 of technical words or phrases, or to ascertain the difference between or the 
 identity of the devices, or to obtain a better understanding of a drawing 
 or model or the character and operation of the devices; and generally, a 
 court may avail itself of the testimony of experts to acquire a knowledge 
 of all the facts pertaining to an art to which a given patent belongs, and a 
 full understanding of the progress that had been made therein at the time 
 the patent was issued. The adjudged cases afford many illustrations of 
 the fact that proof of the state of the art has an important bearing upon 
 equivalency and construction of claims. — Simplex v. Wands, 115 Fed. 517; 
 53 C. C. A. 171. 
 
 Winans v. Railroad, 21 How. 88; McCormick v. Talcott, 20 How. 402; Machine 
 Co. V. Lancaster, 129 U. S. 263; Miller v. Mfg. Co. 151 U. S. 186; National v. 
 Interchangeable, 106 Fed. 693; Railway v. Godehard, 59 Fed. 776; McClain v. 
 Ortmayer, 141 U. S. 419; Walk. Pat. sec. 184. 
 
 On a bill filed under sec. 4918 R. S., the first question to be determined 
 is whether the patents involved are interfering patents, since the right to 
 relief is grounded on the fact of interference; that patents do not 
 interfere, within the meaning of the patent law, unless the claims of the 
 respective patents, or some of them, cover the same mechanical device or 
 combination; that it is. the claim of the patent, and the claim only, when 
 properly construed, which determines the thing patented; and that it may 
 happen that the structure described in one patent will infringe the claims 
 of another patent, although the patents are not interfering patents, within 
 the meaning of the statute. — Simplex v. Wands, 115 Fed. 517; 53 C. C. A. 
 171. 
 
 Gold V. U. S. Fed. Cas. 5,508; Mfg. Co. v. Craig, 49 Fed. 370. 
 
 INVENTION. 
 
 Statutory Provisions § 588 
 General Statement § 589 
 Abandonment § 590 {see § 1) 
 Adaptation 
 
 Arrangement or Grouping § 591 
 
 Strengthening or Increasing 
 
 Weight § 592 
 
 Miscellaneous Cases § 593 
 Aggregation {see § 42) 
 
 Co-Action Wanting § 594 
 
 Distinguished from Combination 
 
 § 595 
 
 Not Invention § 596 
 
 Old Elements, Old Result § 597 
 Beneficial Use and Scope of § 598 
 Carrying Forward § 599 
 Change of Form 
 
 Same Function § 600 
 
 Mere Chana;e § 601 
 
 When Patentable § 602 
 Combinations {see § 249) 
 
 Co-Action of Elements § 603 (see 
 
 §42) 
 
 Entirety § 604
 
 522 
 
 THE FIXED LAW OF PATENTS 
 
 §587 
 
 Limitation § 605 
 
 Necessary Elements § 606 
 
 New Results § 607 
 
 Old Elements, New Results § 608 
 
 Old Elements, Old Result § 609 
 
 Presumptions § 610 
 
 Sub-Combinations § 611 
 
 Miscellaneous Rulings § 612 
 Date of Completion § 613 
 Definitions of § 614 
 Dividing or Uniting Parts § 615 
 Double or Analogous Use 
 
 Analogous Use Non-Patentable 
 
 §616 
 
 Double Use Non-Patentable § 617 
 
 Double Use Patentable § 618 
 Duplication § 619 
 Evidence of {see § 388) 
 
 Acquiescence § 620 
 
 Attempted Evasion § 621 
 
 Commercial Success § 622 
 
 Commercial Success — When Not 
 
 § 623 
 
 Efficiency § 624 
 
 Extensive Litigation § 625 
 
 Extensive Use § 626 
 
 Extensive Use — When Not § 627 
 
 Obvious Demand § 628 
 
 Patent Prima Facie § 629 
 
 Patent Office Action § 630 
 
 Prior Failures § 631 
 
 Simplicity § 632 {see §§ 692-3) 
 
 Turning Failure Into Success § 633 
 
 Use by Defendant § 634 
 
 Utility — When Evidence § 635 
 
 Utility — When Not § 636 
 
 Want of Invention § 637 
 
 Miscellaneous Holdings § 638 
 Force of Nature § 639 
 Generic 
 
 Construction § 640 
 
 Definition § 641 
 
 Improvement § 642 
 
 Scope of § 643 
 
 What is § 644 
 Immoral Object § 645 
 Improvement {see § 430) 
 
 Non-Patentable § 646 
 
 Patentability § 647 
 
 Miscellaneous § 648 
 Manufacture § 649 
 Mathematical Formula § 650 
 Means § 651 
 Mechanical Skill 
 
 Adaptation § 652 
 
 Aggregation § 653 {see § 42) 
 
 Carrying Forward § 654 
 
 Change of Form § 655 
 
 Definition and Distinction from 
 
 Invention § 656 
 
 Degree of Knowledge and Skill 
 
 § 657 
 
 Dividing or Uniting Parts § 658 
 
 Improvement § 659 {see § 430) 
 
 Increased Efficiency § 660 
 
 Old Device, Analogous Use § 661 
 
 Old Device, New Use § 662 
 
 Old Elements Old Result § 663 
 
 Portability § 664 
 
 Strengthening or Increasing § 665 
 
 Miscellaneous Decisions § 666 
 Novelty 
 
 Definitions and Distinctions § 667 
 
 Evidence of § 668 {see § 388) 
 
 Miscellaneous Rules § 669 
 Old Device, New ITse 
 
 Aggregation § 670 {see § 4'2) 
 
 General Rules § 671 
 
 Non-Patentable § 672 
 
 Patentable § 673 
 Old Elements, New Result § 674 
 Old Elements, Old Result § 675 
 Old Process, New Use 
 
 Non-Patentable § 676 
 
 Patentable § 677 
 Omitting Element § 678 
 Patentability 
 
 Definition § 679 
 
 Patentable Difference § 680 
 
 Duty of Court § 681 
 
 Mental Conception § 682 
 
 Scientific Principles and Ideas 
 
 §683 
 
 Miscellaneous Rules § 684 
 Process {see § 813) 
 
 Definition § 685 
 
 Mechanical § 686 
 
 Non-Patentable § 687 
 
 Process and Machine § 688 
 Property of Matter § 689 
 Result or Fvmction § 690 
 Scientific Principles or Laws § 691 
 Simplicity 
 
 Does not Negative Invention § 692 
 
 Ex Post Facto Judgment § 693 
 
 (see §§6§, 89-91) 
 Simplification § 694 
 Substitution 
 
 Elements § 695 
 
 New Material — Non-Patentable 
 
 § 696 
 
 New Material — Patentable § 697 
 Systems and Arrangements § 698 
 Tests of 
 
 Last Step Rule § 699 
 
 Miscellaneous § 700 
 Transposition of Parts § 701 
 Utility § 702 
 
 See — Anticipation § 58; Art § 146; 
 Composition of Matter § 264; Designs 
 § 328; Evidence § 400; . Experiment 
 § 412; Function § 426; Improvement 
 \ 430; Machine § 768; Machine and 
 Process § 770; Machine and Product 
 § 771; Manufacture § 772; Process 
 § 813; Product § 823; Reduction to 
 Practice § 860; Unpatented Invention 
 S 930
 
 §§ 588-589 INVENTION 523 
 
 § 588. Statutory Provisions. 
 
 Any person who has invented or discovered any new and useful art, 
 machine, manufacture, or composition of matter, or any new and useful 
 improvements thereof, not known or used by others in this country, hejore, 
 his invention or discovery thereof, and not patented or described in any printed 
 publication in this or any foreign country, before his invention or discovery 
 thereof, or more than tivo years prior to his application, and not in public 
 use or on sale in this country for more than two years prior to his applica- 
 tion, unless the same is proved to have been abandoned, may, upon payment 
 of the fees required by law, and other due proceedings had, obtained a 
 patent therefor. — R. S. 4886. 
 
 On the filing of any such application and the payment of the fees required 
 by law, the Commissioner of Patents 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 entitled to a patent under the law, 
 and that the same is sufficiently useful and important, the Commissioner 
 shall issue a patent therefor. — R. S. 4893. 
 
 These two sections stand as created by the act of July S, 1870, with the 
 exception of the two clauses in sec. 4886 printed in italics, which were added 
 by the act of Mar. 3, 1897, and which went into effect Jan. 1, 1898. 
 
 § 589. General Statement. 
 
 This title covers the great, main, central subject of the law of patents. 
 Under it are treated many subjects, such as novelty, patentability and me- 
 chanical skill, which are commonly made the subject of separate discussion. 
 Some discussion of the several classes of patentable inventions will be found 
 under the titles Art, Machine, Manufacture, Composition of Matter, Improve- 
 ment, Process, Product; and the subject of patentable designs is separately 
 treated under the title Designs. 
 
 Attempted definitions of invention, novelty, patentability, will be found 
 under the following sections ; but they are-of little value. There are, however, 
 two practical, useful statements of the Supreme Court, one made very early 
 in the history of the law, and the other in connection with the most elaborate 
 opinion ever written by that court — an opinion which occupies an entire 
 volume. These statements are: 
 
 The end to be accomplished is not the subject of a patent. The invention 
 consists in the new and useful means of obtaining it. — Carver v. Hyde, 
 16 Pet. 513; 10 L. Ed. 105. 
 
 When the question is, whether a thing can be done or not, it is always 
 easy to find persons ready to show how not to do it. If one succeeds, that 
 is enough, no matter how manv others may fail. — Telephone Cases, 126 
 U. S. 1; 31 L. Ed. 863; 8 S. Ct.' 778. 
 
 As has been so well stated by one of our best writers, it is neither the means 
 to an end nor the end itself which constitutes invention, but the idea of 
 means; and to this may be added, to bring the statement within the Tele- 
 phone Case rule, that patentable invention — invention that is both novel 
 and useful under the statute — must consist of an idea of means expressed 
 in terms of matter novel in itself and capable of producing a useful result. 
 The means may be old and the result new, in which case the idea of means 
 resides in the new adaptation. The combination may be newand the result 
 old, in which case the idea of means resides in the new combination. 
 
 These are simple rules, but they are effective. The question of invention 
 can never be bounded by fixed rules. The courts will always differ and dis-
 
 524 THE FIXED LAW OF PATENTS §§ 590-591 
 
 sent as in the Telephone Cases; and often a question will arise, as in the 
 Westinghouse Case (Westinghouse v. Boyden, 170 U. S. 537) where the court 
 required three arguments of the case before it could be decided, which will 
 seem to baffle the greatest minds, and the decision of which will meet with 
 the same dissent with the bar as it did with the bench. The difficulty in 
 determining patentable invention, if such there be, arises, on the one hand, 
 when we attempt to dignify an act as such which seems hopelessly inter- 
 mixed with a multitude of minor improvements, and on the other, when we 
 encounter a basic or generic discovery the bounds of which we know not 
 how to set. 
 
 § 590. Abandonment. 
 
 The knowledge of the improvement was as completely lost as if it had 
 never been discovered. The public could derive no benefit from it, until 
 it was discovered by another inventor. And if the patentee made his dis- 
 covery by his own efforts, without any knowledge of the old device, he 
 invented an improvement that was then new, and at the time unknown. 
 — Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 Unsuccessful and abandoned experiments do not affect the validity of 
 a subsequent patent. — Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 
 15 S. Ct. 118. 
 
 Brown v. GuUd, 90 U. S. 181; Coffin v. Ogden, 85 U. S. 120. 
 
 There is a degree of credit due to one who explores out of the way or 
 hidden places, and brings to the light and to the uses of civilization, as 
 " abandoned experiments " the discoveries of others, whose genius was itself 
 a disqualification for the achievement of practical success; but it is certainly 
 no part of the patent law to foster attempts to appropriate and monopolize 
 things of common-place character and of familiar use, on the ground that, 
 although frequently employed even in patented devices, they_ have not 
 been claimed as inventions, and their uses and benefits exploited. The 
 obvious need not be explained. — Fuller- Warren v. Michigan, 86 Fed. 463; 
 30 C. C. A. 193. 
 
 Note: For full list of cases on this subject see Abandonment. 
 
 § 591. Adaptation — Arrangement or Grouping. 
 
 Mere order and arrangement of spacings in a blank book for a specified 
 use cannot, upon the most liberal construction of the patent laws, be held 
 to involve any invention. — Munson v. Mayor, 124 U. S. 601 ; 31 L. Ed. 586; 
 8 S. Ct. 622. 
 
 The different arrangement of these groupings as they appear in the patent 
 sued on is not invention, but is a mere matter of mechanical judgement, '' the 
 natural outgrowth of the development of mechanical skill as distinguished 
 from invention." — Florsheim v. SchiUing, 137 U. S. 64; 34 L. Ed. 574; 11. 
 S. Ct. 20. 
 
 Burt V. Every, 133 U. S. 349, and authorities there cited; Brown v. Piper, 
 91 U. S. 37. 
 
 In view of the state of the art, it required no invention to make a single 
 die to cut dough on a flat surface into any particular desired shape. — Butler 
 V. Steckel, 137 U. S. 21 ; 34 L. Ed. 582; 11 S. Ct. 25. 
 
 Smith V. Nichols, 88 U. S. 112; Dunbar v. Meyers, 94 U. S. 187; Pomace v. 
 Ferguson, 119 U. S. 335; Peters v. Active, 130 U. S. 626; Watson v. Cincmnati, 
 132 U. S. 161.
 
 § 592 INVENTION 525 
 
 That putting a part in a secure place and out of the way may involve 
 invention, see Standard v. Computing, 126 Fed. 639; 61 C. C. A. 541. 
 Star V. General, 111 Fed. 398. 
 
 Patentability cannot be decreed to every little shift that a woman may 
 make in the arrangement of her garments, or the location of the means 
 through which such arrangements are effected. — Kleinart v. Stein, 133 
 Fed. 228; 66 C. C. A. 282. 
 
 Mere adjustability of parts does not constitute invention. — Smyth v. 
 Sheridan, 149 Fed. 208; 79 C. C. A. 166. 
 
 Peters v. Hanson, 129 U. S. 541; Doig v. Morgan, 122 Fed. 460; Sipp v. Atwood, 
 142 Fed. 149. 
 
 That mere positioning, color arrangement of common devices, like catalog 
 cards and card markers, or similar arrangement resulting in mere convenience 
 with no new function, is not patentable, see Gunn v. Bridgeport, 152 Fed. 
 434; 81 C. C. A. 576. 
 
 HoUister v. Benedict, 113 U. S. 72; Aron v. Manhattan, 132 U. S. 84. 
 
 Where adjustability is desired, such means as a series of holes in the sup- 
 porting rod of a carrier, any one of which may be engaged by a bolt on the 
 main machine would at once suggest itself to a skilled mechanic. Such 
 means have been used in the agricultural implement art long prior to the 
 date of the patent. In our judgment, " he produced no new result, or any 
 improved method of producing the old result." — Rose v. Dowden, 157 Fed. 
 681 ; 85 C. C. A. 449. 
 
 Voigtmann v. Weis, 148 Fed. 848; Smith v. Nichols, 21 Wall. 112. 
 
 That a mere location or arrangement of parts, except in cases where such 
 location or arrangement produces a distinctively novel result, is not pat- 
 entable, see Cutler-Hammer v. Automatic, 159 Fed. 447; 86 C. C. A. 477. 
 
 But the structure on which invention is predicated here is unquestionably 
 new, there being a readjustment of materials, by M^hich new and highly 
 useful results are brought about. — Edison v. Novelty, 167 Fed. 977 ; 
 C. C. A. 
 
 Rainear v. Western, 159 Fed. 431. 
 
 § 592. Adaptation — Strengthening or Increasing Weight. 
 
 The patented device was a door knob made of a metallic shank fitting 
 dovetail into a porcelain or clay knob. The elements were all old, and the 
 improvement was claimed upon the new material from which the knob was 
 made. Held: It may afford evidence of judgement and skill in the selection 
 and adaptation of the materials in the manufacture, but nothing more. — • 
 Hotchkiss V. Greenwood, 11 How. 248; 13 L. Ed. 683. 
 
 A mere enlargement of a machine to adapt it to heavier use, or the mere 
 strengthening of parts for such use is not invention. — Woodbury v. Keith, 
 101 U. S. 479; 25 L. Ed. 939. 
 
 An improved shawl strap having a rigid cross-bar to give rigidity to the 
 package, in view of the art did not involve invention. — Crouch v. Roemer, 
 103 U. S. 797; 26 L. Ed. 426.
 
 526 THE FIXED LAW OF PATENTS § 593 
 
 It is not invention to merely improve a device so that it is stronger or 
 more durable. — Peters v. Hanson, 129 U. S. 541; 32 L. Ed. 743; 9 S. Ct. 
 393. 
 
 A mere reinforcement of a garment by the addition of a piece of cloth is 
 not a patentable invention. — Patent v. Glover, 141 U. S. 560; 35 L. Ed. 
 858; 12 S. Ct. 79. 
 
 HoUister v. Benedict, 113 IT. S. 58; Thompson v. Boisselier, 114 U. S. 11; 
 Howe V. National, 134 U. S. 388; McClain v. Ortmayer, 141 U. S. 419. 
 
 Did increasing the weight of the hand wheel in this class of machines, 
 in order to correct the tendency of smaller wheels to reverse, involve pat- 
 entable novelty? We do not think so. The use of hand wheels for straight 
 levers was old, and, whether the wheels were light or heavy, they alike per- 
 formed the service of rotary levers. — American v. Pennock, 164 U. S. 26; 
 41 L. Ed. 337; 17 S. Ct. 1. 
 
 Merely adapting shape and casting in one piece is not invention. — Bothe 
 V. Paddock, 50 Fed. 536; 1 C. C. A. 575. 
 
 A change due merely to the increased strength of parts does not constitute 
 invention. — Vulcan v. Smith, 62 Fed. 444; 10 C. C. A. 493. 
 
 The strengthening of the spring, and the increase of rigidity with which it 
 was attached to the rockers and base, may have involved invention, but it 
 so nearly resembles a mere increase in the physical strength of an already 
 suggested means of performing a known function that it is certainly not a 
 pioneer or primary invention, or one the scope of which the courts would be 
 inclined to enlarge beyond what is exactly shown in the patent. It is not a 
 patent in the construction of which any liberal doctrine of equivalents 
 will be applied. — Thomas v. Rocker Spring Co. 77 Fed. 420; 23 C. C. A. 
 211. 
 
 Mere strengthening of a structure does not constitute invention. — 
 Thomasson v. Bumpass, 78 Fed. 491 ; 24 C. C. A. 180. 
 
 Superiority due mainly to increased weight and strength are not elements 
 of invention. — Frazer v. Gates, 85 Fed. 441 ; 29 C. C. A. 261. 
 
 All that is claimed by the patentee as new is the projecting end bars, 
 and the extension laterally outward beyond the side-rails of the woven wire 
 fabric for the purpose described. We are not inchned to think that this 
 device involved invention, within the meaning of the patent law, or that it 
 would not have easily occurred to an ordinary skillful mechanic. — Newark 
 V. Ryan, 102 Fed. 693; 42 C. C. A. 594. 
 
 § 593. Adaptation — Miscellaneous Cases. 
 
 The subdivision and packing of articles of commerce in small parcels 
 for convenience of handling and retail sale and the packing of these small 
 parcels into boxes or sacks or tying them together in bundles for convenience 
 of storage and transportation, is as common and well known as any fact con- 
 nected with trade, and is not patentable. — King v. Gallun, 109 U. S. 99; 
 27 L. Ed. 870; 3 S. Ct. 202. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Phillips v. Page. 24 How. 167; Brown 
 V. Piper, 91 U. S. 43; Terhune v. Phillips, 99 U. S. 592; Atlantic v. Brady, 107 
 U. S. 192; Slawson v. R. R. 107 U. S. 649; Smith v. Goodyear, 93 U. S. 486.
 
 § 594 INVENTION 527 
 
 We do not think the alleged invention (that of employing rotary cutters 
 of a certain character for truing the edge of a shoe sole) is a combination 
 of previous devices rearranged with connections and adaptations so adjusted 
 as to produce a novel and valuable use under the cases cited. — Busell v. 
 Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 150. 
 
 LeRoy v. Tatham, 55 U. S. 156; Bean v. Smallwood, 2 Story, 408. 
 
 It is not invention to convert a heavy and unwieldy device into a light, 
 quick acting, easily appHed fastening. — Hay v. Heath, 71 Fed. 411; 18 
 C. C. A. 157. 
 
 It would seem that angular relations or constructions distinguishable only 
 mathematically are not patentable. — Frazer v. Gates, 85 Fed. 441 ; 29 
 C. C. A. 261. 
 
 Caverly v. Deere, 66 Fed. 305. 
 
 It would be obviously absurd to attribute patentability to changes in the 
 relative location of chambers, unless a distinctly new and useful result was 
 produced. — Bates v. Excelsior, 89 Fed. 498; 32 C. C. A. 267. 
 
 Selection among known means, though increasing the degree of efficiency, 
 did not rise to the dignity of independent invention. — Wisconsin v. Ameri- 
 can, 125 Fed. 761; 60 C. C. A. 529. 
 
 Mast V. Stover, 177 U. S. 485; Lumber Co. v. Perkins, 80 Fed. 528; Kelly v. 
 Clow, 89 Fed. 297. 
 
 That a cigar band, narrower at one end than at the other, is not novel 
 in the patent sense, see Regensburg v. Portuondo, 142 Fed. 160; 73 C. C. A. 
 
 378. 
 
 § 594. Aggregation — Co-Action Wanting. 
 
 The second claim of the reissue, like the single claim of the original patent 
 for the use in succession, or, in the patentee's phrase, " the series " of the 
 two pairs of old dies, the one pair to shape the arms of the bolt, and the other 
 to give those arms the requisite curve, does not show any patentable in- 
 vention. The two pairs of dies were not combined in one machine, and did 
 not co-operate to one result. Each pair was used by itself and might be used 
 so at any distance of time or place from the other; and if the two were used at 
 the same place and in immediate succession of time, the result of the action 
 of each was separate and distinct and was in no way influenced by the action 
 of the other. This was no combination that would sustain a patent. — 
 Beecher v. Atwater, 114 U. S. 523; 29 L. Ed. 232; 5 S. Ct. 1007. 
 
 Hailes v. Van Wormer. 20 Wall. 353; Pickering v. McCuUough, 104 U. S. 310; 
 Stephenson v. R. R. 114 U. S. 149. 
 
 Unless the combination accomplishes some new result, the mere multi- 
 plicity of elements does not make it patentable, so long as each element 
 performs some old and well known function. — Richards v. Chase, 158 U. S. 
 299; 39 L. Ed. 991; 15 S. Ct. 831. 
 
 It is the immediate mechanical result of the device or combination which 
 is pertinent. In the patent in suit, only when in use can the combination 
 be complete (according to complainant's expert) and every use involves a 
 reconstruction and dissolution of the combination. If there has ever been 
 granted a patent for such a combination of mechanical elements, designed 
 to expend their force among themselves, and to effect or affect nothing
 
 528 THE FIXED LAW OF PATENTS § 595 
 
 beyond, it has not come to our knowledge; but whether, if granted, it could 
 be upheld, need not now be considered. — Hay v. Heath, 71 Fed. 411; 18 
 C. C. A. 157. 
 
 § 595. Aggregation — Distinguished from Combination. 
 
 This argument (mere aggregation) would be sound if the combination 
 claimed was an obvious one for attaining the advantages proposed, one 
 which would occur to any mechanic skilled in the art. But it is plain from 
 the evidence, and from the very fact that it was not sooner adopted and used, 
 that it did not for years occur in this light to even the most skilled persons. 
 It may have been under their very eyes, they may almost be said to have 
 stumbled over it; but they certainly failed to see it, to estimate its value 
 and to bring it into notice. Who was the first to see it, to understand its 
 value, to give it shape and form, to bring it into notice and urge the adoption 
 is a question to which we shall shortly give our attention. At this point 
 we are constrained to say that we cannot yield our assent to the argument, 
 that the combination of the different parts or elements for attaining the object 
 in view was so obvious as to merit no title to invention. Now that it has 
 succeeded, it may seem very plain to anyone, that he could have done it 
 as well. This is often the case with inventions of the greatest merit. It may 
 be laid down as a general rule, though perhaps not an invariable one, that 
 if a new combination and arrangement of known elements produce a new 
 and beneficial result, never attained before, it is evidence of invention. It 
 was certainly a new and useful result to make a loom produce 50 yards a day, 
 when it never before produced more than 40; and we think that the combina- 
 tion of elements by which this was effected, even if those elements were 
 separately known before, was invention sufficient to form the basis of a 
 patent. — Loom Co. v. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 There is no co-operative action of these distinct claims which produces a 
 unitary result. Each one acts separately and independently of the other. 
 It has been repeatedly held that a mere aggregation of old elements in a 
 new relation is not the subject of a patent. — Mott v. Standard, 53 Fed. 819; 
 4 C. C. A. 28. 
 
 Reckendorfer v. Faber, 92 U. S. .347; Pickering r. McCullough, 104 U. S. 310; 
 Hendv v. Iron Works, 127 U. S. .370; Hailes v. Van Wormer, 20 Wall. 353; Union 
 V. Keith, 139 U. S. 539; Royer v. Roth, 132 U. S. 210. 
 
 Is this invention a mere aggregation or is it a patentable combination? 
 What is the distinction between mere aggregation and a patentable com- 
 bination? A combination of well-known separate elements, each of which 
 when combined operates separately, and in its old way, and in which no 
 new result is produced which cannot be assigned to the independent action 
 of one or the other, of the separate elements, is an aggregation of parts, 
 merely, and is not patentable. But if to adapt the several elements to each 
 other in order to effect their co-operation in one organization, demands the 
 use of means without the range of ordinary mechanical skill, then the in- 
 vention of such means to effect the mutual arrangement of parts would 
 be patentable. The parts need not act simultaneously, if they act unitedly 
 to produce a common result. It is sufficient if all the devices co-operate 
 with respect to the work to be done, and in furtherance thereof, although each 
 device may perform its own particular function only. — Standard v. South- 
 ern, .54 Fed. 521 ; 4 C. C. A. 491. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Reckendorfer v. Faber, 92 U. S. 357; 
 Pickering v. McCullough, 104 U. S. 318. 
 
 It is a commonly accepted rule of the law of patents that the inventive 
 idea is not ordinarily present in the conception of a combination which
 
 s 596 INVENTION 529 
 
 merely brings together two or more functions, to be availed of independ- 
 ently of each other. The mechanism which accomplishes such a result and 
 no more is ordinarily spoken of as a mere aggregation. — Osgood v. Metro- 
 politan, 75 Fed. 670; 21 C. C. A. 491. tt q ^ it 
 Hailes V. Van Wormer. 20 Wall. 353; Reckendorfer !'• ^^iV^^.^' I.^U- f • ^47; 
 Brinkerhoff v. Aloe, 146 U. S. 515; Palmer v. Cornmg, 156 U. S. 342, Richards 
 V. Elevator, 158 U. S. 299. 
 
 § 596. Aggregation — Not Invention. 
 
 The law requires more than a change of form, or juxtaposition of facts, 
 or of the external arrangement of things, or of the order in which they are 
 used, to give patentability. — Reckendorfer v. Faber, 92 U. S. 347 ; 23 L. Ed. 
 719.' 
 
 Hailes v. Van Wormer, 20 Wall. 353. 
 
 All the elements of the combination are old, and each operates only in the 
 old way. Beyond the separate and well known results produced by them 
 sever-illy no one of them contributes to the combined result any new feature ; 
 no one of them adds to the combination anything more than its separate in- 
 dependent effect ; no one of them gives any additional efficiency to the others, 
 or changes in any way the mode or result of its action. In a patentable 
 combination of old elements, all the constituents must so enter into it, as 
 that each qualifies every other; to draw an illustration from another branch 
 of the law, they must be joint tenants of the domain of the invention, seized 
 each of every part, per my et per tout, and not mere tenants in comnion, 
 with separate interests and estates. It must form either a new machine 
 of a distinct character and function, or produce a result due to the joint and 
 co-operating action of all the elements, and which is not the mere aikhng 
 to"-ether of separate contributions. Otherwise, it is only a mechanical 
 juxtaposition, and not a vital union. — Pickering v. McCuUough, 104 U. b. 
 310; 26L. Ed. 749. 
 
 Hailes v. Van Wormer, 87 U. S. 368; Reckendorfer v. Faber, 92 U. S. 357. 
 
 In view of these facts, which are either matters of common knowledge 
 or well established by the evidence, the only field of invention left for the 
 patent to cover was the application by the old and familiar arrangement 
 of shafts and cog-wheels, of the power of an auxiliary engine to a capstan 
 instead of a windlass. A capstan differs from a windlass in this respect only 
 that its barrel or shaft is vertical, while that of the windlass is usually hori- 
 zontal It is plain, therefore, that no such ingenuity as merited the issue of 
 a patent was re(iuired for this improvement, but only the «;di'\aj-y Judgement 
 and skill of a trained mechanic. — Morris v. McMilhn, 112 U. S. 244; 28 
 L. Ed. 702; 5 S. Ct. 218. 
 
 Atlmtic V Brady, 107 U. S. 192; Penna. v. Locomotive. 110 U. S. 490; Hailes 
 V Van Wormer, 20 Wall. 353; Phillips v. Detroit. Ill U. S. 604; Hotohkiss t; 
 Greenwood 11 How. 248; Phillips v. Paige. 24 How. 164; Smith r. Nichols, 21 
 Wall. 112; 'Dunbar v. Meyers, 94 U. S. 187; Heald r. Rice, 104 U. S. 737. 
 
 There is no specific qualitv of the result which cannot be definitely assigned 
 to the independent action of a single element. There is. therefore, no pat- 
 entable novelty in the aggregation of the several elements, considered in 
 hself -Thatcher v. Burtis, 121 U. S. 286; 30 L. Ed. 942; 7 S. Ct. 1034. 
 
 Hiilcs I' Van Wormer. 87 U. S. 353: Ho.ald v. Rice, 104 U. S. 737; Penna. v. 
 locomotive 110 U. S. 490; Morris v. McMillin. 112 U. S. 244; HoUister t;. Bene- 
 diet 113 U! S. 59; Thompson v. Boisselier, 114 U. S. 1; Beecher v. Atwater, 
 114 U. S. 523; Gardner v. Herz, 118 U. S. 180.
 
 530 THE FIXED LAW OF PATENTS § 596 
 
 « 
 
 The aggregation of old elements, some found in one patent and some in 
 another, but all performing like functions in well-known inventions having 
 the same object with no substantial difference but that of configuration is 
 not invention. — Busell v. Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 
 150. 
 
 Florsheim v. Schilling, 137 U. S. 64. 
 
 A mere aggregation of old elements in a new relation is not the subject 
 of a patent. — Union v. Keith, 139 U. S. 530; 35 L. Ed. 261 ; 11 S. Ct. 621. 
 
 Reckendorfer v. Faber, 92 U. S. 347; Pickering v. McCullough, 104 U. S. 310; 
 Stephenson v. Brooklyn, 114 U. S. 149; Hendy v. Golden, 127 U. S. 370; Hailes 
 V. Van Wormer, 87 U. S. 353. 
 
 Mere aggregation of old elements is not invention. — Adams v. Bellaire, 
 141 U. S. 539; 35 L. Ed. 849; 12 S. Ct. 66. 
 
 Hailes v. Van Wormer, 87 U. S. 353; Pickering v. McCullough, 104 U. S. 310. 
 
 A mere aggregation of functions or a mere difference in degree, a carrying 
 forward of an old idea, a result, perhaps somewhat more perfect than had 
 theretofore been attained, but not rising to the dignity of invention, has been 
 repeatedly held to be invaUd. — Wright v. Yuengling, 155 U. S. 47; 39 
 L. Ed. 64; 15 S. Ct. 1. 
 
 Stimpson v. Woodman, 77 U. S. 117; Smith v. Nichols, 88 U. S. 112; Guidet 
 V. Brooklyn, 105 U. S. 550; Hall v. Macneale, 107 U. S. 90. 
 
 Mere aggregation of old devices, performing no new function, is not in- 
 vention. — Wilson V. Ansonia, 54 Fed. 495; 4 C. C. A. 484. 
 
 Dunbar v. Meyers, 94 U. S. 187; Holland v. Shipley, 127 U. S. 398; Schlict v. 
 Sherwood, 36 Fed. 591. 
 
 In this case there is no joint operation or effect in the construction of 
 a railway car and the oil tank combined which is in any manner due from 
 the simultaneous or successive action of the two combined. It is a mere 
 aggregation of old elements, producing no new results by the combination. 
 — Standard v. Southern, 54 Fed. 521 ; 4 C. C. A. 491. 
 
 The invalidity of the claim rests upon the fact that the separate sets of 
 devices are an aggregation which do not combine with each other, and each 
 of which works out an independent and separate result, which is not due to 
 any co-operating action. — Bagley -y. Empire, 58 Fed. 212; 7 C. C. A. 191. 
 
 Pickering v. McCullough, 104 U. S. 310. 
 
 A mere aggregation of old elements performing no new function, and ac- 
 complishing no new results, presents no patentable novelty. — Muller v. 
 Lodge, 77 Fed. 621; 23 C. C. A. 357. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Lock v. Mosler, 127 U. S. 354; Knapp 
 V. Morss, 150 U. S. 221. 
 
 That the adaptation of known mechanical devices to attain a desired end 
 in engineering, although the end attained may be highly useful, in the ab- 
 sence of a novel function, is mere aggregation or engineering skill, see Dodge 
 V. New York, 150 Fed. 738; 80 C. C. A. 404. 
 
 Dunbar v. Eastern, 81 Fed. 201; New Departure v. Bevin, 73 Fed. 469. ■ 
 
 Can a monopoly be properly granted for coupling without modification 
 a motor that will run any kind of a machine, to a machine that will run 
 with any kind of a motor? The answer to the question thus stated is found
 
 §§ 597-598 INVENTION 531 
 
 in Blake v. San Francisco, 113 U. S. 682; Royer v. Roth, 132 U. S. 201. 
 The result was a distinct step in advance. But it was the inevitable result 
 of attaching to each other the luichanged appliances. — National v. Powers, 
 160 Fed. 460; 87 C. C. A. 444. 
 
 § 597. Aggregation — Old Elements, Old Result. 
 
 The combination of old elements to produce all old result, where the com- 
 bination was a mere adaptation of well known mechanical means for pro- 
 ducing similar results is not valid. — Stimpson v. Woodman, 77 U. S. 117; 
 19 L. Ed. 866. 
 
 Where a combination of old devices produces a new result, such combina- 
 tion is doubtless patentable; but when the combination is not only of old 
 elements, but of old results, and no new function is evolved from such com- 
 bination, it falls within the rulings of this court. (Cited below.) — Office v. 
 Fenton, 174 U. S. 492; 43 L. Ed. 1058; 19 S. Ct. 641. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Reckendorfer v. Faber, 92 U. S. 347; 
 Phillips V. Detroit, 111 U. S. 604; Brinkerhoff v. Aloe, 146 U. S. 515; Palmer v. 
 Corning, 156 U. S. 342; Richards v. Elevator Co. 158 U. S, 299. 
 
 All the elements of this combination were old, and the absence from it of 
 a single essential element was fatal to the claim of infringement. — Buffing- 
 ton's V. Eustis, 65 Fed. 804; 13 C. C. A. 143. 
 
 HaUes v. Van Wormer, 20 Wall. 353; Bragg v. Fitch, 121 U. S. 478. 
 
 To combine old parts in such manner as to produce a new result by their 
 harmonious co-operation may be patentable ; but it is equally true that where 
 the combination is not only of old parts, but of old results, without the 
 addition of any new and distinct function, the combination is not patent- 
 able. — Goodyear v. Rubber, 116 Fed. 363; 53 C. C. A. 583. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Pickering v. McCullough, 104 U. S. 310; 
 Florsheim v. Schilling, 137 U. S. 64; Ivnapp v. Morss, 150 U. S 221; Office v. 
 Fenton, 174 U. S. 492; Stearns v. Russell, 85 Fed. 218; Overweight v. Vogt, 102 
 Fed. 957; Brinkerhoff v. Aloe, 146 U. S. 515; Reckendorfer v. Faber, 92 U. S. 
 347; Muller v. Lodge, 77 Fed. 621. 
 
 § 598. Beneficial Uses and Scope of. 
 
 The inventor of a machine is entitled to the benefit of all the uses to 
 which it can be put, no matter whether he has conceived the idea of the use 
 or not. — Roberts v. Ryer, 91 U. S. 150; 23 L. Ed. 267. 
 
 It is, of course, true that a mistaken description, or even misconception, 
 of the operation of a device which is itself fitly described and claimed, does 
 not vitiate a patent. — Temple v. Goss, 58 Fed. 196; 7 C. C. A. 174. 
 
 Western v. Sperry, 58 Fed. 186. 
 
 When the language of both application and grant is so positively and 
 directly declaratory of what was asked and granted as we find in this case, 
 we consider that it would be going beyond a safe rule to extend the operation 
 and protection of the patent further. If appellant has originally made 
 application for an " improvement in a locking device for safes, jails, and 
 other similar structures," which he now insists upon claiming that his in- 
 vention covers, the public would have had notice of his claim, but the lan- 
 guage conveyed no such idea. If we should declare that a peculiarity in a 
 locking device for a jail cage was an improvement in a burglar-proof safe, 
 we should be construing a patent in a manner different from the plain import
 
 532 THE FIXED LAW OF PATENTS § 598 
 
 of its terms, and thereby doing an injustice to the public. -^ Gerard v Die- 
 bold, 61 Fed. 209; 9 C. C. A. 451. 
 
 White V. Dunbar, 119 U. S. 47; Keystone v. Phoenix, 95 U. S. 274; Vance v- 
 Campbell, 1 Black, 427; Burns v. Meyer, 100 U. S. 671; Railroad v. Mellon, 
 104 U. S. 112; McClain v. Ortmayer, 141 U. S. 419. 
 
 Note: This rule, in derogation of the older rule that the inventor is en- 
 titled to all the uses to which his invention may be put, is one which must be 
 applied with care. 
 
 The rule is clear that ordinarily a patentee who is first to make an inven- 
 tion is entitled to his claim for all the uses and all the advantages which 
 belong to it, so far as the new application does not itself involve further in- 
 vention. — Reece v. Globe, 61 Fed. 958; 10 C. C. A. 194. 
 
 Roberts v. Ryer, 91 U. S. 150; Stow v. Chicago, 104 U. S. 547; Miller v. Mfg. 
 Co. 151 U. S. 186; Electric v. LaRue, 139 U. S. 601. 
 
 It is contended that the patentee did not contemplate or foresee what is 
 now claimed. Be this as it may, admitting it to be true that he did not 
 realize the full extent of his discovery, still he would be entitled to all the 
 necessary and legitimate results attained by his invention, including even 
 such as were unexpected. — Thomson-Houston v. National, 65 Fed. 427 ; 
 12 C. C. A. 671. 
 
 Wells V. Jacques, 5 O. G. 364; Eames v. Andrews, 122 U. S. 40; Brown v. 
 D. C. 130 U. S. 87; Stow v. Chicago, 104 U. S. 457; Gandy v. Belting Co. 143 
 U. S. 587. 
 
 If the idea was not present to his mind, but is an afterthought perceived 
 from subsequent experience or scientific inspection or analysis, it is obvious 
 that there was no invention in thus by accident, as it were, supplying the 
 means of a function not contemplated. — Wells v. Curtis, 66 Fed. 318; 13 
 C. C. A. 494. 
 
 That an inventor is entitled to all the uses to which his invention may be 
 put, see, Dueber v. Robbins, 75 Fed. 17; 21 C. C. A. 198. 
 
 An inventor is entitled to all the uses of which his invention is capable, 
 whether he then knew of all such uses or not. It is not necessary that he 
 shall state all the beneficial results, effects, uses, or advantages of the mech- 
 anism which he has devised. — Muller v. Lodge, 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Goshen v. Bissell, 72 Fed. 67. 
 
 A man may, under certain circumstances, be protected in building stronger 
 than he knows. And in this sense it is broad enough to cover the idea that, 
 if the momentum element which was described, or at least illustrated by the 
 drawings, becomes, in practical operation, a more potent and efficient 
 element than was understood, still the patent should not be rendered invalid 
 for that reason. — Parsons v. Seelye, 100 Fed. 455 ; 40 C. C. A. 486. 
 
 Wright V. Clinton, 67 Fed. 790. 
 
 A patentee is entitled to all of the advantages of his invention. — Dowagiac 
 V. Superior, 115 Fed. 886; 53 C. C. A. 36. 
 
 Goshen v. Bissell, 72 Fed. 67; Stearns v. Russell, 85 Fed. 218; Palmer v. 
 Lozier, 90 Fed. 732; National v. Interchangeable, 106 Fed. 693. 
 
 Whether the inventor knew or not the full measure of the beneficial func- 
 tions of his structure, he is entitled to all the uses of his invention, — Good- 
 year V. Rubber, 116 Fed. 363; 53 C. C. A. 583.
 
 § 599 INVENTION 533 
 
 Goshen v. Bissell, 72 Fed. 67; Dowagiac v. Superior, 115 Fed. 886; Wells v. 
 Curtis, 66 Fed. 318. 
 
 If the patent gave reason to suppose that the inventor may probably 
 have contemplated that his device was capable of other uses, and made 
 adequate provision therefor, his invention should be regarded as covering 
 them, whether he mentioned them or not, or whether he contemplated any 
 other use or not. — Cauda v. Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 Goshen v. BisseU, 72 Fed. 67; Stillwell-Bierce v. Eufaula, 117 Fed. 410. 
 
 Possibly he valued no other two-phased alternating current motors, 
 or he conceived that there were no others, so that naturally the practical 
 application which he had in mind was limited accordingly. Nevertheless 
 he is entitled to the advantage of the well-settled rule by virtue of which an 
 inventor who has patented his invention is entitled to all the uses to which 
 it may be applied of the class to which he himself practically applied it. — 
 Westinghouse v. Stanley, 133 Fed. 167; 68 C. C. A. 523. 
 
 The object that the inventor seemed to have chiefly in mind was to avoid 
 the useless converting of energy into heat by the constant and rapid changing 
 of poles of the transformer apparatus then in use. As things have turned 
 out, this has not proven the chief actual advantage. Now though these 
 advantages be different from the one chiefly in the patentee's mind, the in- 
 vention will not on that account fail, if there be in the concept _an actual 
 advantage, and the structure embodying it evinces patentable invention; 
 for a patentee is entitled, not only to what he specifically sees, but to what 
 has been brought about by his invention, even though not at the time 
 actually seen. — Kuhlman v. General, 147 Fed. 709; 78 C. C. A. 97. 
 
 It is true that a patentee is entitled to all the beneficial uses of his real 
 invention whether stated or not. But the fact that this patentee, while 
 enumerating in his specifications some 12 advantages resulting from the 
 improved construction, has not even hinted at or suggested any resulting 
 capacity for vertical removal of the plunger, is very persuasive that this 
 element, instead of being " the aim and purpose of the invention " of the 
 patentee, is rather the discovery of his expert. — Bates v. Force, 149 Fed. 
 220; 79 C. C. A. 178. 
 
 These patents are for a structure, and the patentees are clearly entitled 
 to the benefit of all the advantages which that structure possesses over prior 
 structures intended to accomplish a similar purpose. This is not a case of 
 preferred structure, but only of the use to which the structure shown in the 
 drawings and covered by the claims may be put. It would, indeed, be an 
 unjust and novel doctrine to hold that a patentee is to be deprived of the 
 benefits which may characterize the use for which the patented structure 
 was mainly designed. — Warren v. Blake, 163 Fed. 263; C. C. A. 
 
 But the failure of a patentee to realize all the benefits and possibilities of 
 his invention is not fatal. The after-discovery of unsuspected usefuhiess in 
 a disclosed apparatus, far from detracting from its value, may serve to 
 enhance it. — Westmoreland v. Hogan, 167 Fed. 327; C. C. A. 
 
 § 599. Carrying Forward. 
 
 A mere carrying forward or new or more extended application of the origi- 
 nal thought, a change only in form, proportions or degree, doing substantially
 
 534 THE FIXED J.AW OF PATENTS §600 
 
 the same thing in the same way by substantially the same means with better 
 results is not invention. — Roberts v. Ryer, 91 U. S. 150; 23 L. Ed. 267. 
 
 Smith V. Nichols, 21 Wall. 112. 
 
 Distinguishing, Roberts v. Harnden, 2 Cliff. 500. 
 
 A mere carrying forward of the original idea, or the substitution of other 
 elements, producing better results, is not invention. — Dunbar v. Meyers, 
 94 U.S. 187; 24 L. Ed. 34. 
 
 Smith V. Nichols, 21 Wall. 115. 
 
 A mere carrying forward, or new or more extended application of the origi- 
 nal thought, a change only in form, proportions, or degree, the substitution 
 of equivalents doing substantially the same thing in the same way, by sub- 
 stantially the same means with better results, is not invention. — Gibbon v. 
 Loewer, 79 Fed. 325 ; 24 C. C. A. 612. 
 
 Smith V. Nichols, 21 Wall. 112; Trimmer v. Stevens, 137 U. S. 432; Ansonia 
 V. Electrical, 144 U. S. 11. 
 
 Lynch carried forward the old idea by a mechanical change in one of the 
 elements which produced better results. Such a change is not patentable. 
 — Galvin v. City, 115 Fed. 511 ; 53 C. C. A. 165. 
 
 Guidet V. Brooklyn, 105 U. S. 550; Rob. Pat. sec. 238; Reckendorfer v. Faber, 
 92 U. S. 347. 
 
 The mere carrying forward a new or more extended application of the 
 original thought, is not such invention as will sustain a patent. Smith v. 
 Nichols, 21 Wall. 112; Soehner v. Favorite, 84 Fed. 182; American v. Wyeth, 
 139 Fed. 389 ; Schreiber v. Grimm, 72 Fed. 671 ; Dunbar v. Meyers, 94 U. S. 
 187; Goodyear v. Rubber, 116 Fed. 363; Burnham v. Union, 110 Fed. 765; 
 Overweight v. Vogt, 102 Fed. 957 ; Campbell v. Duplex, 101 Fed. 282. 
 
 There is a recognized exception to this rule, or rather counterpart of it, 
 when in the new combination a new mode of operation is effected which 
 produces an original result. Dowagiac v. Superior, 115 Fed. 886. — Bullock 
 V. General, 149 Fed. 409; 79 C. C. A. 229. 
 
 § 6oo. Change of Form — Same Function. 
 
 An invention consisting of a change of form without change of principle is 
 not invention. — Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 472. 
 
 A change of form of a machine without a change of mode of operation, 
 is not patentable. A change of mechanical structure is not patentable 
 unless it produces a new and entirely different result. — Mast v. Rude, 53 
 Fed. 120; 3 C. C. A. 477. 
 
 Winans v. Denmead, 15 How. 330; Sargent v. Larned, 2 Curt. 340; Mabie v. 
 Haskell, 2 Cliff. 510; Aiken v. Dolan, 3 Fish. P. C. 204. 
 
 Under ordinary circumstances, the removal of surplus material or needless 
 parts of a physical structure, without changing the relation, connection, or 
 operation of the essential elements, cannot be invention. — Ferguson v. 
 Roos, 71 Fed. 416; 18 C. C. A. 162. 
 
 To change the degree of a thing, or of one of its features, is not patentable 
 invention. Guidet v. Brooklyn, 105 U. S. 550; Walk. Pat. (3d Ed.) sec. 31. 
 And so of any change in the " form of embodiment," of mere degree or quality 
 of action, without changing the function of any element, or adding a new
 
 § 601 INVENTION 535 
 
 element, although it may greatly improve the old combination. 1 Rob. 
 Pat. sec. 237. — Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 593. 
 
 It was not invention to put one (a tire) on a smaller wheel. The question 
 of size is mostly one of degree. — Hickory v'. Frazier, 100 Fed. 99 ; 40 C. C. A. 
 296. 
 
 Watson V. Railway, 132 U. S. 161; French v. Carter, 137 U. S. 239; Road 
 Machine v. Pennook, 164 U. S. 26; International v. Gaylord, 140 U. S. 55; Adams 
 V. Stamping Co. 141 U. S. 539. 
 
 Mere variations in the forms of means, not affecting the manner in which 
 the functions are performed, are not material. — Eames v. Worcester, 123 
 Fed. 67; 60 C. C. A. 37. 
 
 Bundy v. Detroit, 94 Fed. 524. 
 
 That a mere change in curvature or contour, involving no new function, 
 is not patentable, see Bradley v. Eccles, 126 Fed. 945; 61 C. C. A. 669. 
 
 If the mere narrowing of the ends of the belt be patentable, as to which 
 we do not express an opinion, the defendant's device is not within the patent, 
 for its ends are not in any real or functional sense narrowed at all. — Mills 
 V. Russell, 144 Fed. 700; 75 C. C. A. 516. 
 
 § 6oi. Change of Form — Mere Change. 
 
 A patent cannot be granted for a mere change of form. — Winans v. Den- 
 mead, 15 How. 330; 14 L. Ed. 717. 
 
 A mere change of size or form, as the change of thread or mesh in netting, 
 is not invention. — Dalton v. Jennings, 93 U. S. 271 ; 23 L. Ed. 925. 
 
 Our conclusion is that the absolute length and size of the valve opening 
 was a matter of judgement, in view of the state of the art shown, and that 
 there was no invention in making its length and size greater or less in a reed 
 board of a given width, or when the reed board was made wider or narrower 
 or had more or less sets of reeds in it, either full or partial. — Esty v. Bur- 
 dett, 109 U. S. 633; 27 L. Ed. 1058; 3 S. Ct. 531. 
 
 The complainant was the first to employ the combination claimed; but 
 the change was only a change of form, and not patentable. — Mosler v. 
 Mosler, 127 U. S. 354; 32 L. Ed. 182; 8 S. Ct. 1148. 
 
 Hailes v. Van Wormer, 87 U. S. 353; Reckendorfer v. Faber, 92 U. S. 347; 
 Pickering v. McCuUough, 104 U. S. 310. 
 
 Change of form is not invention. — Belding v. Challenge, 152 U. S. 100; 
 38 L.Ed. 370; 14 S. Ct. 492. 
 Roberts v. Ryer, 91 U. S. 150. 
 
 A mere change in form, as in the vamp of a rubber overshoe, so as to pro- 
 duce a gore-shaped extension above the foxing line, could not require any- 
 thing beyond the range of ordinary skill of the calling. — Williams v. Good- 
 year, 54 Fed. 498 ; 4 C. C. A. 485. 
 
 Burt V. Evory, 133 U. S. 349. 
 
 Mere increase of depth, without the discharge of any novel and additional 
 function, is not invention. — Benjamin v. Chambers, 59 Fed. 151; 8 C. C. A. 
 61.
 
 536 THE FIXED LAW OF PATENTS § 602 
 
 A mere change in curvature without specifically defining the degree thereof 
 is not patentable. — Davis v. Parkman, 71 Fed. 691 ; 18 C. C. A. 398. 
 
 The substitution of a curvilinear for a straight fine is not invention. — 
 Long V. Pope, 75 Fed. 835; 21 C. C. A. 533. 
 Winans v. Denmead, 15 How. 330. 
 
 Mere change of form, portability or lightness are not invention. — Olm- 
 sted V. Andrews Co. 77 Fed. 835; 23 C. C. A. 488. 
 McCIeary v. Baker, 63 Fed. 841. 
 
 A change of form although producing better results is not patentable. — 
 Birmingham v. Gates, 78 Fed. 350; 24 C. C. A. 132. 
 Smith V. Nichols, 21 Wall. 119. 
 
 It is a mere change of form and size and that is not invention. — Warren 
 V. Rosenblatt, 80 Fed. 540; 25 C. C. A. 625. 
 Smith V. Nichols, 21 WaU. 112. 
 
 He did nothing but adapt the old extinguisher to a lighter constructed 
 after the old designs; and this does not, in our opinion, in view of the well 
 trodden previous art, amount to invention. — Kessler v. Inks, 108 Fed. 
 412; 47 C. C. A. 442. 
 
 The mere change of size or form of a simple structure, or of an element 
 in a combination, made for the purpose of accommodating it to its work 
 within the sphere of its contemplated uses, does not amount to invention. — 
 Eames v. Worcester, 123 Fed. 67; 60 C. C. A. 37. 
 
 For an extreme holding that a change of form and also a change of ma- 
 terial (cast iron to steel) is not invention, see Harder v. United States, 160 
 Fed. 463. 
 
 § 6o2. Change of Form — When Patentable. 
 
 When form was the essence of the invention — a peculiar shaped car body 
 where its strength was due to the form was held to be patentable. — Winans 
 V. Denmead 15 How. 330; 14 L. Ed. 717. 
 
 To change the form of an existing machine, and by means of such change 
 to introduce and employ other mechanical principles or natural powers, 
 or, as it is termed, a new mode of operation, and thus attain a new and useful 
 result, is the subject of a patent. — Winans v. Denmead, 15 How. 330; 14 
 L. Ed. 717. 
 
 Where form is the essence of the invention, it is necessarily material; 
 and, if the same object can be attained by a machine different in form where 
 that form is inseparable from the successful operation of the instrument, 
 there is no infringement. — Werner v. King, 96 U. S. 218; 24 L. Ed. 613. 
 
 Winans v. Denmead, 15 How. 330. 
 
 Possibly an exact form of construction, possessing a distinct advantage over 
 other forms, may be patentable; but a form that is merely tentative and 
 varying with each case is not. — Western v. Standard, 84 Fed. 654; 28 
 C. C. A. 512. 
 
 Caverly v. Deere, 66 Fed. 305.
 
 § 603 INVENTION 537 
 
 There are cases where the form of a device is the principle of the invention. 
 There are other cases wherein the state of the prior art and the specific terms . 
 of the specifications and drawings leave no doubt of the intention of the 
 applicant to restrict his claim to the specific form of the device or element 
 he points out. In such cases claims of patents are sometimes limited to 
 the specific forms of the devices pointed out by letters or numbers in the 
 claims or specifications, — National v. Interchangeable, 106 Fed. 693; 45 
 C. C. A. 544. 
 
 Weir V. Morden, 125 U. S. 98; Railroad Co. v. Kearney, 158 U. S. 461; Craw- 
 ford V. Heysinger, 123 U. S. 589; McCormick v. Aultman, 58 Fed. 773; Newton 
 V. Mfg. Co., 119 U. S. 373; Bragg v. Fitch, 121 U. S. 478; Dryfoos v. Wiese, 124 
 U. S. 32; Hendy v. Iron Works, 127 U. S. 370. 
 
 The question is, was there enough in the recesses and projections, as there 
 used, to suggest the conception of the bands and grooves of the patent 
 in suit? We think not, and conclude that these modifications of form and 
 arrangement were new and valuable improvements, and involved sufficient 
 inventive thought to sustain a patent. — American v. Driggs-Seabury, 114 
 Fed. 936; 52 C. C. A. 556. 
 
 The fact that this result was accomplished by a single change does not 
 detract from its patentability. — Hutter v. De Q. Bottle, 128 Fed. 283; 62 
 C. C. A. 652. 
 
 § 603. Combinations — Co-Action of Elements. 
 
 The appellant contends that this is not a patentable combination. We 
 do not think the contention supportable. All the parts of the device co- 
 operate to produce one result, and it is easily distinguishable from that 
 denied in Reckendorfer v. Faber, 92 U. S. 347 and Adams v. Stamping Co. 
 141 U. S. 539. In the former case the pencil and rubber performed different 
 and independent things. In the latter, the hinge attachment to the lantern 
 was a substitute for a detachable fastening, and went no further. — Butte 
 City V. Pacific, 60 Fed. 90; 8 C. C. A. 484. 
 
 Invention is that which brings out of the realms of the mind something 
 that never existed before. It may consist in the combination of old elements, 
 the invention being in the combination. To make it so there must be a 
 joint action or operation of the elements, — i. e. the elements must co- 
 operate or act jointly to produce the result or object of the combination, — 
 or else the assembled elements is a mere aggregation, and is not patentable. 
 It is not necessary, however, that their action should be simultaneous. — 
 San Francisco v. Keating, 68 Fed. 351 ; 15 C. C. A. 476. 
 
 Standard v. Southern, 48 Fed. 110; Engraving v. Hoke, 30 Fed. 444; Blessing 
 V. Copper, 34 Fed. 753; Root v. Sontag, 47 Fed. 309; Mfg. Co. v. Brill, 54 Fed. 
 383; National v. American, 53 Fed. 371; 3 Rob. Pat. 1016. 
 
 No combination of elements that so operate can be regarded as a mere 
 aggregation, for each one has a direct influence upon the action of each of 
 the others, the result necessarily being the product of the combination itself, 
 and not a mere aggregate of several units, each the complete product of 
 one of the combined elements. — Von Schmidt v. Bowers, 80 Fed. 121 ; 
 25 C. C. A. 323. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Royer v. Roth, 132 U. S. 201; Recken- 
 dorfer V. Faber, 92 U. S. 347; Beecher v. Atwater, 114 U. S. 524. 
 
 Nor are the claims in question subject to the objection urged that it is 
 *' a mere collocation or aggregation of old elements," as it is plain that the
 
 538 THE FIXED LAW OF PATENTS § 603 
 
 several elements are brought into co-operation and thus " perform addi- 
 tional functions and accomplish additional results." — Milwaukee v. Bruns- 
 wick-Balke, 126 Fed. 171; 61 C. C. A. 175. 
 Rob. Pat. sec. 155. 
 
 It is not necessary to a valid combination that all the parts shall co- 
 operate at the same time. It is enough that, in the normal and progressive 
 use of the machine, they do so at some time. — Sanders v. Hancock, 128 
 Fed. 424; 63 C. C. A. 166. 
 
 To constitute a combination it is essential that there should be some 
 joint operation performed by the elements, producing a result due to their 
 joint and co-operating action, while in an aggregation there is a mere adding 
 together of separate contributions, each operating independently of the other. 
 — American v. Helmstetter, 142 Fed. 978; 74 C. C. A. 240. 
 
 Hailes v. Van Wormer, 20 Wall. 353; Reckendorfer v. Faber, 92 U. S. 347; 
 Pickering v. McCullough, 104 U. S. 310. 
 
 It is true that these elements do not act synchronously, but this is not 
 necessary, simultaneous action being frequently absent from patentable 
 combinations. — International v. Dey, 142 Fed. 736; 74 C. C. A. 68. 
 
 National v. American, 53 Fed. 367; Heath v. Hay, 67 Fed. 246; Furbush v. 
 Cook, 2 Fish. P. C. 668. 
 
 The elements of the claims, considered separately or in different environ- 
 ments, were, speaking generally, all old. The question here is was the com- 
 bination old? That the claim covers a combination, and not a mere aggre- 
 gation, we have no doubt, even though the operations of the separate ele- 
 ments do not synchronize. — United v. Beattie, 149 Fed. 736; 79 C. C. A. 
 442. 
 
 Furbush v. Cook, 2 Fish. Pat. Cas. 668; Heath v. Hay, 67 Fed. 246; Inter- 
 national V. Dey, 142 Fed. 736. 
 
 The argument that the straightening press does not act simultaneously 
 with the other devices included in the combination, if true, is not enough to 
 defeat a patent. If that device is so arranged with the other devices made 
 elements in the combination so that each part co-operates to produce a 
 single, practical and beneficial result, it is not important that the final result 
 shall have been produced by a simultaneous or successive action of the 
 combined elements. — National v. Aiken, 163 Fed. 254; C. C. A. 
 
 Sanders v. Hancock, 128 Fed. 424; Stilwell-Bierce v. Eufaula, 117 Fed 410- 
 Furbush v. Cook, 2 Fish. 688. 
 
 Note: The last clause must be read in the disjunctive sense. The action 
 must be either simultaneous or successive. 
 
 If, however, the adaptation of old and separate elements, so that they 
 co-act with each other in a unitary organization, involves the exercise of 
 something more than the skill of an ordinary mechanic, the result may be 
 patentable, if a more beneficial result is effected than by the separate opera- 
 tion of the parts. So if a new combination and arrangement of old elements 
 produces a new and beneficial result, as to greatly increase the productive 
 efficiency of a machine, it is evidence of invention. — National v. Aiken. 
 163 Fed. 254; CCA. 
 
 Thatcher v. Burtis, 121 IT. S. 286; Overweight v. Vogt, 102 Fed. 957; St. Louis 
 v^ American, 156 Fed. 574; Muller v. Tool Co. 77 Fed. 621; Star v. General, 111 
 Fed. 398; Loom Co. v. Higgins, 105 U. S. 589.
 
 §§ 604-605 INVENTION 
 
 539 
 
 It is true that the elements of the combination do not act simultaneously; 
 but that is immaterial, since they are nevertheless so arranged that the 
 action of each is necessary and contributes to the general result. — Maimen 
 V. Union, 165 Fed. 440; C. C. A. 
 
 The fact that the completed nipple is developed by successive steps in 
 the same machine does not prevent the organized mechanism, which produces 
 the result, from being considered a combination. — Manville v. Excelsior, 
 167 Fed. 538; CCA. 
 
 Furbush v. Cook, Fed. Cas. 4931; National v. American, 53 Fed. 367. 
 
 A construction of the claims requiring such simultaneous action would 
 relegate even such a marvelously organized machine as the Mergenthaler 
 linotype to the unprotected and defenseless class of aggregations. — Manville 
 V. Excelsior, 167 Fed. 538; C. C A. 
 
 Mergenthaler v. Press, 57 Fed. 505. 
 
 § 604. Combinations — Entirety. 
 
 A combination is an entirety; if one of the elements is given up, the thing 
 claimed disappears. — Vance v. Campbell, 66 U. S. 427; 17 L. Ed. 168. 
 
 Argument to show that an invention consisting of a combination of three in- 
 gredients which are old is not the same as that of a combination of four old in- 
 gredients is quite unnecessary, as the negative of the proposition is as well 
 settled in the patent law as it is in mathematics. — Gill v. Wells, 89 U. S. 1 ; 22 
 L. Ed. 699. 
 
 A combination is always an entirety. In such cases the patentee cannot 
 abandon a part and claim the rest, nor can he be permitted to prove that a 
 part is useless and therefore immaterial. — Schumacher v. Cornell, 96 U. S. 
 549; 24 L. Ed. 676. 
 
 Vance v. Campbell, 1 Black, 427. 
 
 None of the elements or devices of the patented machine are new, and the 
 invention itself consists in a combination of old devices. Such a combination 
 is an entirety, though more than one combination may be included in the 
 same patent. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Gill V. Wells, 22 Wall. 2-24. 
 
 If a useful and new unitary result appears as the product of the inter- 
 action of the elements, though all be old, the union is a true combination; 
 and, if unpatentable, it is for want of invention. — Regent v. Penn, 121 Fed. 
 80; 57 C C A. 334. 
 
 Parks V. Booth, 102 U. S. 96; Johnson v. R. Co. 33 Fed. 499; National v. 
 American, 53 Fed. 367. 
 
 § 605. Combinations — Limitation. 
 
 Four propositions were decided in the case of Vance v. Campbell, 1 Black, 
 4''8- (1) That a patentee, in a suit for an infringement of an invention con- 
 sistinii of a combination of old ingredients, cannot in his proofs abandon a 
 part of such combination and maintain his claim to the rest, for the reason 
 that unless the patented combination is maintained, the whole of the in- 
 vention falls. (2) That the patentee in such a suit cannot be allowed to 
 prove that anv part of the combination is immaterial or useless. (3) That 
 the combination is an entirety, and that if one of the ingredients be given 
 up the thing claimed disappears, which is an obvious truth, as the invention
 
 540 THE FIXED LAW OF PATENTS § 606 
 
 in such a case consists simply in the combination. (4) That the clause which 
 provides that the suit shall not be defeated where the patentee claims more 
 than he has invented, in case he shall disclaim such part, applies only when 
 the part invented can be clearly distinguished from that improperly claimed, 
 which shows that the clause cannot apply to a patent granted for an inven- 
 tion consisting of a combination of old ingredients. — Gill v. Wells, 89 U. S. 
 1; 22L. Ed. 699. 
 Case V. Brown, 2 Wall. 320; Burr v. Duryee, 1 Wall. 566. 
 
 That a combination will be strictly limited to its elements, see Knapp v. 
 Morss, 150 U. S. 221 ; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 It is material to observe that the invention claimed is the combination 
 of certain described elements. This amounts to a disclaimer of anything 
 new in the elements, so far as this patent is concerned. — Wells v. Curtis, 
 66 Fed. 318; 13 C. C. A. 494. 
 
 Corn Planter Pat. 23 Wall. 181; Miller v. Brass Co. 104 U. S. 350; Rowell v. 
 Lindsay, 113 U. S. 97. 
 
 His claim is for the combination of three parts. His claim, then, is for 
 an entirety. He cannot abandon a part, and claim the rest. He must stand 
 by his claim as he has made it. If more or less then the whole of his ingredients 
 are used by another, such party is not an infringer, because he has not used 
 the invention or discovery patented. Shumacher v. Cornell, 96 U. S. 549. 
 When a patent is for a combination only, none of the separate elements of 
 which the combination is composed are included in the monopoly. Rowell 
 V. Lindsay, 113 U. S. 101. Or, as expressed by Mr. Justice Bradley in the 
 Corn Planter Patent (Brown v. Guild) 23 Wall. 181 : 
 
 " When a patentee, after describing a machine, claims as his invention a 
 certain combination of elements, or a certain device or part of the machine, 
 this is an implied declaration, as conclusive, so far as that patent is concerned, 
 as if it were expressed, that the specific combination or thing claimed is the 
 only part which the patentee regards as new." 
 
 See, also, Voss v. Fisher, 113 U. S. 213. — Carter v. Hanes, 78 Fed. 346; 
 24 C. C. A. 128. 
 
 The patent should not be limited to the particular form of devices described 
 but it should be limited to cover a combination of these elements or their 
 known equivalents, at the date of the patent. — Beach v. Hobbs, 92 Fed. 
 146; 34 C. C. A. 248. 
 
 Winans v. Denmead, 15 How. 330; Machine Co. v. Lancaster, 129 U. S. 263; 
 Tilghman v. Proctor, 102 U. S. 707; Proctor v. Bennis, 36 Ch. Div. 740. 
 
 § 6o6. Combinations — Necessary Elements. 
 
 One who has made a combination of three elements, all necessary to opera- 
 tion, cannot by making a claim for two of them forestall another who has 
 so combined these two elements that they perform the same function as 
 the three elements. — National v. Hedden, 148 U. S. 482; 37 L. Ed. 529; 
 13 S. Ct. 680. 
 
 The magnetic current itself, is not a part of the device, any more than is 
 water an element of a water-wheel. In the one, the water is the power 
 and in the other the electric current, and the devices are contrived for the 
 purpose of controlling and applying the power. — Western v. Sperry, 58 
 Fed. 186; 7 C. C. A. 164.
 
 § 607 INVENTION 541 
 
 The specification contains no suggestion that this particular arrangement 
 of parts may be dispensed with; and when a patentee has there carefully 
 and specifically pointed out the details of a structure, which details, as he 
 shows, discharge a stated function, it is not for the courts to declare them 
 immaterial. — Philadelphia v. Weeks, 61 Fed. 405; 9 C. C. A. 555. 
 
 A mechanical connection would not be indispensable, unless there was a 
 necess'ty for it, or unless a mechanical connection created a difference in 
 the means by which the result was accomplished, which, in view of the narrow- 
 ness of the invention, was a radical difference. — Westinghouse v. N. Y. 63 
 Fed. 962; 11 C. C. A. 528. 
 
 Where an alternative construction is shown, dispensing with one element 
 made essential to the principal construction such element cannot be claimed 
 as essential in itself. — Wells v. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Trimmer v. Stevens, 137 U. S. 423. 
 
 If the broader of two claims is valid, the narrower for the same combination 
 with limitations which include some additional minor improvements, is 
 also valid. — Schenck v. Singer, 77 Fed. 841 ; 23 C. C. A. 494. 
 
 It is difficult to understand why, if the drawings should be considered as 
 controlling the " scroll shaped or convoluted plate," which they also depict, 
 ought not to be regarded as a material feature, and this plate, it is admitted, 
 the appellees do not use. — Boynton v. Norris, 87 Fed. 225; 30 C. C. A. 617. 
 
 Note: The attempt here was to introduce an element into a claim to make 
 the case by reading in a minor element shown and described as a preferred 
 form but not made an element of the claim itself, and the court held it could 
 not be so read in. 
 
 Each element of the combination set forth in this claim is distinct in its 
 character, and clearly and specifically described, and there is nothing m its 
 structure to make it an exception to the general rule, that every part of 
 the combination claimed is conclusively presumed to be material, so that 
 if one of its elements is omitted, the thing claimed does not exist. — Spear v. 
 Kelsey, 158 Fed. 622; 85 C. C. A. 444. 
 
 § 607. Combinations — New Result. 
 
 Improvements in an apparatus may be valid, if new and if they accom- 
 plish a new and useful result, even though all the elements of the same are 
 old, provided the combination or arrangement of the elements is new and 
 of such a character as to involve invention. — Fuller v. Yentzer, 94 U. S. 
 299; 24 L. Ed. 107. 
 
 Dissenting: Waite, Strong, Miller, Bradley. 
 
 The combination of old and well known elements so as to produce a useful 
 machine which is new is patentable. — Wicke v. Ostrum, 103 U. S. 461; 
 26 L. Ed. 409. 
 
 A combination is patentable only when the essential elements of which 
 it is composed produce by their joint action a new and useful result, or an 
 old result in a cheaper or otherwise more advantageous way. — Stephenson 
 V. Brooklyn, 114 U. S. 149; 29 L. Ed. 58; 5 S. Ct. 777. 
 
 Hailes v. Van Wormer, 87 IT. S. 353; Reckendorfer v. Faber, 92 U. S. 347; 
 Pickering v. McCullough, 104 U. S. 310.
 
 542 THE FIXED LAW OF PATENTS § 608 
 
 To sustain a patent on a combination of old devices it is well settled that 
 a new result must be obtained which is due to the joint and co-operating 
 action of all the old elements. Either this must be accomplished or a new 
 machine of distinct character and function must be constructed, — Brinker- 
 hoff V. Aloe, 146 U. S. 515; 36 L. Ed. 1068; 13 S. Ct. 221. 
 
 Pickering v. McCulIough, 104 U. S. 310; Hailes v. Van Wormer, 87 U. S. 353; 
 Double Pointed v. Two Rivers, 9 Biss. 258; Metropolitan v. Young, 14 Blatchf. 
 46. 
 
 The use of cast lines of type, as the unit of composition, instead of individ- 
 ual type, is an improvement in the art of unsurpassed value. Not only, then, 
 are the combinations novel, but the result is entirely new and highly bene- 
 ficial. In our judgment these inventions are fundamental, coming within 
 the principle of the ruling in Morley v. Lancaster, 129 U. S. 263. We find 
 nothing in the prior art to limit these claims, or to deprive the patentee of 
 a liberal construction thereof. — Rogers v. Mergenthaler, 64 Fed. 799; 12 
 C. C. A. 422. 
 
 The argument that the claim is void for lack of novelty if construed to 
 cover a stiff sectional brush, because such brushes were old, loses sight of 
 the distinction, which we have endeavored to point out, that it is not the 
 brush alone which gives patentability to the claim, but the novel motion of 
 the brush. It would be better to hold the patent invalid at the outset than 
 to destroy it by the illiberal construction for which the appellant contends. 
 Few patents can survive if such criticisms are allowed to prevail. — Ci- 
 miotti V. American, 115 Fed. 498; 53 C. C. A. 230. 
 
 § 6o8. Combinations — Old Elements, New Results. 
 
 The combination must be new; and if productive of new and useful re- 
 sults, and not a mere aggregation of results, it might be the subject of a 
 patent, though all the parts were used before. — Dane v. Chicago, 131 U. S. 
 exxvi, app. ; 23 L. Ed. 82. 
 
 If a combination of old elements, as such, produces no new and useful 
 results, there can be no doubt but that the combination is unpatentable. — 
 Palmer v. Corning, 156 U. S. 342; 39 L. Ed. 445; 15 S. Ct. 381. 
 
 Hailes v. Van Wormer, 87 U. S. 350; Reckendorfer v. Faber, 92 U. S. 347; 
 Pickering v. McCuUough, 104 U. S. 310; Thatcher v. Burtis, 121 U. S. 286. 
 
 The mere fact that the patented invention is but a combination of old 
 ingredients or materials is not a tenable objection to the patent, since it is 
 a general rule that a patentable invention may consist entirely in a new 
 combination or arrangement of old and well-known ingredients or elements, 
 provided a new and useful result is thereby attained. — Thomson v. Citizens 
 Nat. Bk., 53 Fed. 250; 3 C. C. A. 518. 
 
 Seymours. Osborne, 11 Wall. 516; Rees v. Gould, 15 Wall. 187. 
 
 If it were essential to a valid patent for any combination whatever that 
 the mode of action of every element included in the combination should be 
 changed by each of the others, it would have been impossible to sustain 
 several combination patents which have in fact been upheld, as, indeed, 
 it would be difficult to conceive of any mechanical combination which would 
 be both possible and patentable. A screw or a lever can act only in one- 
 way, yet a screw and a lever may so act in combination as to produce, in con- 
 sequence of their combination, a single, new and useful result. Moreover, 
 there is no intimation in the opinion in Pickering v. McCulIough of a purpose
 
 J 608 " INVENTION 543 
 
 to overrule the earlier decisions with which (upon the view taken of it by 
 counsel) it would appear to conflict, nor has it in later cases (which, of course, 
 are to be followed) prevented the Supreme Court from declaring the law of 
 this subject in accordance with our misunderstanding of it. — National v. 
 American, 53 Fed. 367 ; 3 C. C. A. 559. 
 
 Explaining Pickering v. McCuUough, 104 U. S. 310. 
 
 Blake v. Robertson, 94 U. S. 728; Parks v. Booth, 102 U. S. 96; Loom Co. 
 V. Higgins, 105 U. S. 580; Clough v. Barker, 106 U. S. 166; Railway v. National, 
 110 U. S. 229; Lock Co. v. Sargent, 117 U. S. 536. 
 
 But the mere fact that the patentee's invention is but the combination of old 
 ingredients or materials is no answer to the patent, for it is a general rule 
 that a patentable invention may consist entirely in a new combination or 
 arrangement of old or well known ingredients or elements, provided a new 
 and useful result is thereby attained. — Griswold v. Harker, 62 Fed. 389 ; 
 10 C. C. A. 435. 
 
 Thomson v. Bank, 53 Fed. 250; Seymour v. Osborne, 11 Wall. 516; Gould v. 
 Rees, 15 Wall. 187. 
 
 Drawings and a model have been submitted showing how easy it is to 
 unite the C. patent with the W. patent. In our view this is but wisdom 
 after the fact. The combination shown in the drawings and model submitted 
 is a combination suggested by the patent in suit, and which but for the patent 
 in suit, would seem much more difficult than it now does. More than this, it 
 involved patentable invention to see that a union of the elements of the W. 
 patent with those of the C. patent would have a beneficial result.— Columbus 
 V. Robbins, 64 Fed. 384; 12 C. C. A. 174. 
 
 The elaborate effort of the defendant to show that the different elements 
 of the Hook machine existed in scattered form in mechanism relating to 
 arts remote from that of a continuous cigarette rod was superfluous. It is 
 admitted by the complainant that each element per sewas old, and it is prac- 
 tically admitted by the defendant that the combination of the several ele- 
 ments was new. — Bonsack v. Elhott, 69 Fed. 335 ; 16 C. C. A. 250. 
 
 If there is anything new or patentable in the construction described by 
 Murphy, it is not in any of the elements he has used, but in the novelty 
 of their combination. His patent must stand, if it can be maintained at all, 
 on the principle that a new combination or arrangement of old or well known 
 ingredients, by which a new and useful result is attained, may be a patentable 
 invention. — Murphy v. Excelsior, 76 Fed. 965 ; 22 C. C. A. 658. 
 
 Griswold v. Marker, 62 Fed. 389; Thomson v. Bank, 53 Fed. 250; Seymour v. 
 Osborne, 11 WaU. 516; Gould v. Rees, 15 WaU. 187. 
 
 In Hoffman v. Young, 2 Fed. 74, the claim in a combination patent was 
 sustained on the ground that it presented evidence of invention, because 
 a new result had been produced, though it was conceded the case was near 
 the border hne of nonpatentability. In National v. American, 53 Fed. 369, 
 this court decided that the invention there in suit achieved by the inventor 
 was absolutely and entirely new, and had not by any means been pre\aously 
 attained. In each of these cases, cited by counsel for the appellee, the 
 production of a new result is made the test of patentability. On the other 
 hand, numerous authorities may be found in which patents for cornbinations 
 in machinery and in compositions have been held void for want of invention. 
 We refer to a few only: Vinton v. Hamilton. 104 U. S. 485; Heald r. Rice, 
 104 U. S. 737; Heating Co. v. Burtis, 121 U. S. 286. In Aron v. Railroad Co., 
 132 U. S. 84, a patentee had made use of devices of earlier patents. All that
 
 544 THE FIXED LAW OF PATENTS § 609 
 
 he did was to adapt them to the special purpose to which he contemplated 
 their application, by making modifications which did not require invention, 
 but only the exercise of ordinary mechanical skill. This was held insufficient 
 to sustain a patent. — Green v. American, 78 Fed. 119; 24 C. C. A. 41. 
 
 It is insisted that novelty of the combination can only be destroyed by 
 showing that all of its elements have been used together before, and in the 
 same relation to each other. The contrary is well established. — Kelly v. 
 Clow, 89 Fed. 297 ; 32 C. C. A. 205. 
 
 Thompson v. Boisselier, 114 U. S. 1; Hill v. Wooster, 132 U. S. 693; Burt v. 
 Every, 133 U. S. 349; Pickering v. McCulIough, 104 U. S. 310; Florsheim v. 
 Schilling, 137 U. S. 634; Adams v. Stamping Co. 141 U. S. 539; Deere v. Plow- 
 Works, 56 Fed. 841; Lumber Co. v. Perkins, 80 Fed. 528. 
 
 Every element of the combination in controversy was unquestionably 
 old, but there was nothing in the prior art to suggest a rotary brush working 
 in the environment shown in the Sutton patent. There was nowhere a 
 rotary brush making a " part " on a keen edged stretcher bar and brushing 
 the fur down and out of reach of the cutting knives during the moment 
 necessary for the removal of the stiff hairs. It is the presence of this element 
 in the combination which produces the new result and entitles its originator 
 to protection. — Cimiotti v. American, 115 Fed. 498; 53 C. C. A. 230. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Topliff v. Topliff, 145 U. S. 156; Hobbs 
 V. Beach, 180 U. S. 383. 
 
 Even if it be conceded that the individual elements composing the com- 
 bination are to be found in the prior art, yet to make the selection of these 
 parts from the prior art, and to combine them so as to produce a clutch which 
 is at the same time simple, compact, effective and useful, required more than 
 ordinary mechanical skill. — Fairbanks v. Stickney, 123 Fed. 79; 59 C. C. A. 
 209. 
 
 It is not of consequence that the elements of each claim may be old, for 
 the claims are for a combination, and if the combination be new, or if by a 
 new mode of organization new or better results are obtained, the patent may 
 be sustained. — Dunn v. Standard, 163 Fed. 521 ; C. C. A. 
 
 Davis V. Perry, 120 Fed. 941; Brown v. Huntington, 134 Fed. 735; Hobbs v. 
 Gooding, 111 Fed. 403; Dececo v. Gilchrist, 125 Fed. 293; Western v. North, 
 135 Fed. 80; Sanders v. Hancock, 128 Fed. 424; Stilwell v. Eufaula, 117 Fed. 410. 
 
 That the fact that all of the elements of a combination may be found in 
 the prior art, and apparently in combination in the claims of prior patents, 
 does not anticipate unless when read in connection with the specification 
 of the patent in suit the structure and function of the invention appears, see 
 — Warren v. Blake, 163 Fed. 263; C. C. A. 
 
 § 609. Combinations — Old Elements, Old Result. 
 
 None of the separate elements of which the combination is composed 
 are claimed as the invention of the patentee, therefore none of them standing 
 alone are included in the monopoly of the patent. — Rowell v. Lindsay, 113 
 U.S. 97; 28L. Ed. 906; 5 S. Ct. 507. 
 
 Corn Planter Pat. 23 Wall. 224; Merrill v. Youmans, 94 U. S. 573; Water v. 
 Desper, 101 U. S. 332; Miller v. Brass Co 104 U. S. 350. 
 
 The mere adaptation of an old device to a new combination, involving no 
 functional change, is not invention. — Royer v. Roth, 132 U. S. 201 ; 33 
 L. Ed. 322; 10 S. Ct. 58.
 
 I 
 § 610 INVENTION 545 
 
 Double Pointed v. Two Rivers, 109 U. S. 117; Pomice v. Ferguson, 119 U. S. 
 335; Thatcher v. Burtis, 121 U. S. 286; Dre\^us v. Searle, 124 U. S. 60; Hendy 
 V. Golden, 127 U. S. 370. 
 
 The combination of old devices into a new article, without producing any 
 new mode of operation is not invention. — Florsheim v. Schilling, 137 U. S. 
 64; 34 L. Ed. 574; 11 S. Ct. 20. 
 
 Burt V. Evory, 133 U. S. 349; Hailes v. Van Wormer, 87 U. S. 353; Recken- 
 dorfer v. Faber, 92 U. S. 347; Double Pointed v. Two Rivers. 109 U. S. 117; 
 Bussey v. Excelsior, 110 U. S. 131; Phillips v. Detroit. Ill U. S. 604; Stephenson 
 V. Brooklyn, 114 U. S. 149; Beecher v. Atwater, 114 U. S. 523; Thatcher v. 
 Burtis, 121 U. S. 286; Hendy v. Golden, 127 U. S. 370. 
 
 A new combination of old elements, by which an old result is attained in a 
 more economical and efficient way may be protected by a patent. — Ide v. 
 Trorlicht, 115 Fed. 137; 53 C. C. A. 341. 
 
 National v. Interchangeable, 106 Fed. 693; Seymour v. Osborne, 11 Wall. 
 516; Rees v. Gould, 15 Wall. 187; Thomson v. Bank, 53 Fed. 250. 
 
 His device may not have been a great improvement, but it was certainly 
 a marked advance in the art, and, in view of the numerous less successful 
 attempts to take the step he took which were rewarded with patents by the 
 government, and in view of the evident inability of those inventors and of 
 the proprietors of mere mechanical skill to reach the point to which Collins 
 attained, the title of inventor ought not to be denied him. His invention 
 is one of those intermediate steps in the gradual progress of a useful art 
 tovi'ard perfection which are evidenced by the great majority of patented 
 inventions, and it falls within the familiar rules that a new- combination of 
 old elements by which an old result is attained in a more facile, economical, 
 and efficient way may be protected by a patent. — Anderson v. Collins, 122 
 Fed. 451 ; 58 C. C. A. 669. 
 
 National v. Interchangeable, 106 Fed. 693; Seymour v. Osborne, 11 Wall. 516; 
 Rees V. Gould, 15 Wall. 187; Thomson v. Bank, 53 Fed. 250; Ide v. Trorlicht, 
 115 Fed. 137. 
 
 § 6io. Combinations — Presumptions. 
 
 A claim for a combination carries with it an implication that the separate 
 elements are old. — Westinghouse v. Edison, 63 Fed. 588; 11 C. C. A. 342. 
 Corn Planter Pat. 23 Wall. 181. 
 
 When a combination is claimed, there arises an implied concession that 
 the elements are old and not separately patentable. — Hay v. Heath, 71 
 Fed. 411; 18 C. C. A. 157. 
 
 The claim under consideration being, as finally amended in the patent 
 office, " for a combination," it would seem clear that we may hold that the 
 de\nees entering into such combination are old and common property. — 
 Birmingham v. Gates, 78 Fed. 350; 24 C. C. A. 132. 
 
 Corn Planter Patent, 23 Wall. 181. 
 
 The invention claimed is a combination of the elements. This implies that 
 all the rest is old, or, at least, that the patentee does not so far as this patent 
 is concerned, claim the elements separately. — St. Louis v. National, 87 
 Fed. 885; 31 C. C. A. 265. 
 
 Corn Planter Pat. 23 Wall. 181.
 
 546 THE FIXED LAW OF PATENTS §§ 611-612 
 
 § 6ii. Combinations — Sub-Combinations. 
 
 Undoubtedly a patentee may claim and obtain a patent for an entire 
 combination or process, and also for such parts of the combination or process 
 as are new and useful, or he may claim and obtam a patent for both. — Rail- 
 road V. DuBois, 79 U. S. 47 ; 20 L. Ed. 265. 
 
 A sub-combination may be the subject of a claim for an improvement, 
 and such sub-combination in combination with the machine or apparatus may 
 be the subject of a claim. - Parks v. Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 Many subcombinations, although new, are not useful, except to perform 
 their appropriate functions in the machine of which they are a part, ihe 
 description in the patent of the whole machine, and of the means or mode 
 by which the subcombination is brought into co-operative relation with the 
 other parts, usually indicates how the subcombination may effect a useful 
 result When this is so, the combination need not be operative alone, because 
 (to use the language of Mr. Walker) " utility is justly ascribed to things which 
 have their use in co-operating with other things to perforni a useful work. 
 — Thomson-Houston v. Black River, 135 Fed. 759; 68 C. C. A. 461. 
 
 Taylor v. Sawyer, 75 Fed. 301; Loom Co. v. Higgins, 105 U. S. 585; Thomson- 
 Houston V. Elmira, 71 Fed. 396. 
 
 § 6i2. Combinations — Miscellaneous Rulings. 
 
 Cases arise where a patentee, having invented a new and useful combination 
 consisting of several ingredients, which, in combination, compose an organ- 
 ized machine, also claims to have invented new and useful combinations 
 of fewer numbers of the ingredients and, in such cases, the law is well settled 
 that, if the several combinations are new and useful and will severally produce 
 new 'and useful results, the inventor is entitled to a patent for the several 
 combinations, provided that he complies with the requirement of the Patent 
 Act and files in the Patent Office a written description of each of the alleged 
 new and useful combinations and of the manner of making, constructing and 
 using the same. . . 
 
 He may give the description of the several combinations in one specihca- 
 tion and, in that event, he can secure the full benefit of the exclusive right 
 to each of the several inventions, by separate claims referring back to the 
 description in the specification. — Gill v. Wells, 89 U. S. 1 ; 22 L. Ed. 699. 
 
 The object of the patented combination was the accomplishment of a 
 particular result. But this result or idea is not monopolized by the patent. 
 The thing patented is the particular means devised by the inventor by which 
 the result is attained, leaving it open to any other inventor to accomplish 
 the samo result by other means. To constitute identity of invention, and 
 therefore infringement, not only must the result attained be the same, but 
 in case the means used for its attainment is a combination of known elements, 
 the elements combined in both cases must be the same, and combined in the 
 same way, so that each element shall perform the same function, provided, 
 however, that the differences alleged are not merely colorable, according to the 
 rule forbidding the use of known equivalents. — Electric v. Hall, 114 U. S. 
 87; 29 L. Ed. 96; 5 S. Ct. 1069. 
 
 Prouty V. Ruggles, 16 Pet. 336; Silsby v. Foote, 14 How. 217; McCormick v. 
 Talcott, 20 How. 402; Vance v. Campbell, 1 Black, 427; Eames v. Godfrey, 1 
 Wall. 78; Dunbar v. Myers, 94 U. S. 187; Fuller v. Yentzer, 94 U. S. 288; Im- 
 hauser v. Buerk, 101 U. S. 647; Gage v. Herring, 107 U. S. 640; Seymour v. 
 Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 194; Gill v. Wells, 22 Wall. 1; 
 McMurray v. Mallory, 111 U. S. 97; Fay v. Cordesman, 109 U. S. 408.
 
 § 612 INVENTION 547 
 
 The most that can be said of the invention of the patent in suit, is that 
 it shows on the part of the inventor great industry in acquiring a thorough 
 knowledge of what others had done in a rapid and improved mode by the 
 various devices perfected by patents for that purpose, good, judgement in 
 selecting and combining the best of them with no httle mechanical skill 
 in their application ; but it presents no discoverable trace of original thought. 
 Busell V. Stevens, 137 U. S. 423; 34 L. Ed. 719; 11 S. Ct. 150. 
 
 A grating which performed no mechanical function in the combination 
 claimed in an improvement in the construction and operation of prisons 
 cannot be considered as a part of a patentable mechanical combination. — 
 Fond Du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 11 S. Ct. 98. 
 
 Brown v. Davis, 116 U. S. 237; Forncrook v. Root, 127 U. S. 176. 
 
 It is true that the combination of known devices in such manner as to 
 produce results new in kind or character is patentable; yet when patents for 
 the combination of known devices in such manner as to produce results 
 new and better in degree only than others pre\4ously produced are brought 
 before the courts, they are held to be non-patentable. — Ashton v. Coale, 52 
 Fed. 314; 3 C. C. A. 98. 
 
 The constituent elements of the claims in suit are proved and conceded 
 to be all old. As combined, they are without essential change of indi\'idual 
 structure or function, and they effect by their co-operation, no distinctly new 
 result. In the specification of the patent, the only noA'elty claimed is in 
 features of construction. The one feature insisted upon in argument is 
 the diverging and adjustable arms, and it is the adjustability on which chief 
 reliance seems to be placed. But there is no novelty in that, nor in the means 
 of producing it. — Deere v. Case, 56 Fed. 841 ; 6 C. C. A. 157. 
 
 Florsheim i'. SchiUing, 137 U. S. 64; Burt v. Evory, 133 U. S. 349; Pickering 
 V. McCullough, 104 U. S. 310; HiU v. Wooster, 132 U. S. 693; Thompson v. 
 Boisselier, 114 U. S. 1. 
 
 • In determining whether a new combination of old elements constitutes 
 invention, the most important and controlling considerations are, the in- 
 trinsic noveltv and utility of the concrete invention. — Kelly v. Clow, 89 
 Fed. 297; 32 C. C. A. 205. 
 
 A plausible and persuasive argument may be made that this combination 
 falls under either class of cases (Atlantic Works v. Brady, 107 U. S. 192 or 
 Loom Co. V. Higgins, 105 U. S. 580) that it might have been and was pro- 
 duced by the skill of the trained mechanic or by the intuitive genius of the 
 inventor. The patent which describes it, however, raises a presumption in 
 favor of its novelty and its patentabihty. It was a new combination. No 
 such separate yet uniform grouping of corresponding annunciators and 
 answering jacks with a multiple switchboard had ever been made or used 
 before Seeley conceived and described it. That combination was not a pioneer ; 
 perhaps it was not a great invention. But it discharged the functions of the 
 multiple switchboard, its annunciators, and switches more speedily and effi- 
 ciently than they had ever been performed without it, and a new combination 
 of old elements by which an old result is attained in a more facile, economical, 
 and efficient way may be protected by a patent. — Kinloch v. Western, 113 
 Fed. 659; 51 C. C. A. 369. 
 
 National v. Interchangeable, 106 Fed. 693; Seymour v. Osborne, 11 Wall. 516; 
 Gould V. Rees, 15 Wall. 187; Thomson v. Bank, 53 Fed. 250. 
 
 The addition of the drill-rest does not defeat the claim ; for assuming that 
 it is not of itself sufficient to support a patent, the uniting it with a combina-
 
 548 THE FIXED LAW OF PATENTS § 613 
 
 tion which is patentable cannot render the new combination invalid. Com- 
 bined with the new device, the conjoint mechanical effect is new. — Eames v. 
 Worcester, 123 Fed. 67; 60 C. C. A. 37. 
 
 If it be true that the elements which make up the combination had never, 
 before the date of that patent, been placed in precisely the same relation to 
 each other as he placed them, yet it is by no means certain that the con- 
 struction of his machine called for the exercise of the inventive faculty. — 
 Wilson V. Townley, 125 Fed. 491 ; 60 C. C. A. 327. 
 
 Convinced, as we are, that the plaintiff has supplied features that have 
 brought success, where others who had preceded him failed, we are inclined 
 to scan narrowly the means by which it has been obtained. The mechanical 
 elements combined are no doubt old, and so, to a certain extent, may be the 
 result accomplished. But nowhere do we find the same combination em- 
 ployed to produce it, and the efficiency attained is so much in advance of 
 what had gone before as of itself to suggest, if it does not prove, the exercise 
 of inventive skill. — Boyer v. Keller, 127 Fed. 130; 62 C. C. A. 244. 
 
 Sessions t-. Romadka. 145 U. S. 29; Hobbs v. Beach, 180 U. S. 383; Taylor v. 
 Sawyer, 75 Fed. 301; Stevenson v. McFassell, 90 Fed. 707; National v. I • 
 changeable, 106 Fed. 693. 
 
 The invention is not a generic one, far from it. Every element of the 
 claims, considered separately and in different environment, was old, but 
 Yawman was the first to assemble them in the combinations in contro- 
 versy. By so doing he made an advance, which, though it did not go far, 
 entitled him to protection. — Yawman v. Vetter, 159 Fed. 443; 86 C. C. A. 
 473. 
 
 Hobbs V. Beach, 180 U. S. 383; Magowan v. Packing Co. 141 U. S. 332; Davis 
 V. Perry, 120 Fed. 941; Hutter v. Stopper Co. 128 Fed. 283. 
 
 § 613. Date of Completion. 
 
 A patent relates back, where the question of novelty is in issue, to the 
 date of the invention, and not to the time of the application for its issue. — 
 Klein v. Russell, 86 U. S. 433; 22 L. Ed. 116. 
 
 In the absence of other evidence, the invention of the patent is presumed 
 to be identical with that disclosed by the application. — Drewson v. Hartje, 
 131 Fed. 734; 65 C. C. A. 548. 
 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 The following opinion by Judge Holt is so complete a monograph upon 
 this subject that it must be given well-nigh in full. 
 
 This is a bill in equity under 4920 R. S. for infringement. The only 
 defense is priority of invention. Under sec. 4920 the defendant contends, 
 first, that Watson was the original and first inventor of the thing patented, 
 and, second, that Thomas unjustly obtained his patent for that which was 
 in fact invented by Watson, vv-ho was using reasonable diligence in adapting 
 and perfecting the same. The first defense turns upon the respective dates 
 of the Thomas and Watson inventions, and the second defense raises a. 
 question of fact as to Watson's diligence in adapting and perfecting his 
 invention. Thomas filed his application Dec. 17, 1896, and his patent 
 issued July 26, 1904. Watson conceived his invention, illustrated it by a 
 drawing, and disclosed it to others as early as Jan. 10, 1896. He reduced his 
 invention to practice by the building of a machine in Apr., 1897. He filed 
 his application Mar. 11, 1898, and his patent issued Sept. 26, 1899. It 
 may be noted, first, that Thomas' application antedates Watson's reduction
 
 S 613 INVENTION 549 
 
 to practice by 4 months, and Watson's application by 15 months; and 
 second, that Watson's conception antedates Thomas' application by 11 
 months. The main controversy with respect to the Thomas invention is 
 whether the date of his invention is the date of his application, Dec. 17, 
 1896, and the main controversy with respect to the Watson invention is 
 whether the date of his invention is the date of his conception, Jan. 10, 1896. 
 
 Under a rule of the Patent Office, the filing of an allowable application 
 is a constructive reduction to practice. In accordance with this rule, the 
 date of the Thomas invention was fixed as of Dec. 17, 1896, the date of his 
 application ; and the burden of proof was throv^n upon Watson to estabhsh 
 the fact of reasonable diUgence from the date of his prior conception, Jan. 
 10, 1896, to the time Thomas filed his application. Upon this issue of dili- 
 gence on the part of Watson, the Examiner of Interferences and the Com- 
 missioner of Patents, and the Court of Appeals, D. C, found against Watson, 
 and adjudged Thomas the prior inventor, and accordingly a patent was issued 
 to Thomas under sec. 4904. As a result of the interference proceedings, there 
 are two outstanding patents for the same invention issued to independent 
 inventors. 
 
 The decision in interference proceedings is not conclusive on the question 
 of priority of invention. The same question may arise in subsequent suits 
 instituteci under sees. 4915, 4918 and 4920, R. 8. In the present suit, the 
 question of priority is raised under paragraphs 2 and 4 of sec. 4920. In 
 order to determine the question of priority under these paragraphs, we 
 must ascertain the respective dates of the Thomas and Watson inventions. 
 If we find the date of the Thomas invention is prior to the date of the Watson 
 invention, then Thomas is the original and first inventor, unless Watson 
 was using reasonable diligence in adapting and perfecting his invention from 
 the time of his conception. On the other hand, if w^e find that the date of 
 the Watson invention is prior to the date of the Thomas invention, then 
 Watson is the original and first inventor. No question of dihgence arises 
 reijarding the Thomas invention, because the complainant does not under- 
 take to carry the date of the Thomas invention back of his application, while 
 in the case of Watson it is sought to carry the date of invention back to his 
 conception. 
 
 In patented inventions there are several distinct stages of the invention. 
 Some patented inventions comprise only three stages, namely, conception 
 (evidenced by drawings, disclosures, or models), apphcation, patent; while 
 other patented inventions comprise four stages, namely, conception, reduc- 
 tion to practice, application, patent. 
 
 The date of the first class of patented inventions must be either (1) the 
 
 date of the patent, or (2) the date of the application, or (3) the date of the 
 
 .conception; while the date of the second class must be either (1) the date of 
 
 the patent, or (2) the date of the application, or (3) the date of the reduction 
 
 to practice, or (4) the date of the conception. 
 
 When two patents for the same invention have been issued to independent 
 inventors, we understand the rule to be that the dates of their respective 
 inventions are, (1) the dates of the patents; (2) the dates of the applications, 
 provided the application sufficiently describes the invention; (3) the dates of 
 actual reduction to practice; (4) the dates of conception; with this quahfica- 
 tion, that, if either patentee seeks to carry the date of his invention back to 
 the date of his conception, he must show reasonable diligence in adapting and 
 perfecting his invention, either by actual reduction to practice or by fifing 
 his apphcation. 
 
 Applving this rule, it appears that Thomas' application of Dec. 17, 1896, 
 carries the date of his invention back of Watson's application. Mar. 11, 1898, 
 and back of Watson's conception, Jan. 10, 1896. It follows, therefore, that 
 Watson, in order to establish an earlier date than Thomas, must show that
 
 550 THE FIXED LAW OF PATENTS § 613 
 
 between the date of his conception, Jan. 10, 1896, and the date of his actual 
 reduction to practice, Apr., 1897, he was " using reasonable diligence in 
 adapting and perfecting " his invention. 
 
 The defendant contends that the courts have adopted another and a 
 different rule for determining the dates of inventions under the patent laws, 
 and that rule is as follows: Inventions are divided into two classes, simple 
 and complicated. Simple inventions may be completed by drawings or dis- 
 closure which sufficiently describe the invention, while complicated inven- 
 tions require for their completion actual reduction to practice. With respect 
 to this theory of the defendant, it is sufficient to say that it is novel and 
 plainly unsound. No such distinction between inventions is found in the 
 statutes, or has ever been recognized by the courts in any adjudicated cases. 
 It m.ay be further observed that any such artificial distinction would lead to 
 hopeless confusion and great injustice. 
 
 In the present case the question of priority of invention involves two 
 fundamental inquiries: First, is the date of the patented invention as early 
 as the date of the application? In other words, can Thomas carry back the 
 date of his invention to the date of his application? Second, is the date of a 
 patented invention as early as the date of conception? In other words, can 
 Watson carry back the date of his invention to the date of his drawing and 
 disclosure? 
 
 First. With respect to the first proposition it may be said that the law 
 is well settled that the date of a patented invention is at least as early as the 
 date of the appfication, provided it sufficiently describes the invention to 
 enable those skilled in the art to understand it; and we have found no de- 
 cision in which this rule is questioned. (Quoting and reviewing Walk. 
 Pat. 4th ed. § 70; Kearney v. Railroad, 32 Fed. 320; National v. Brown, 36 
 Fed. 317; Prindle v. Brown, 155 Fed. 531 ; Bates v. Coe, 98 U. S. 31 ; Barnes 
 V. Walworth, 51 Fed. 88, affd. 60 Fed. 605; Barbed Wire Case, 143 U. S. 
 275; Miller v. Eagle, 151 U. S. 186; Westinghouse v. Chartiers, 43 Fed. 582.) 
 
 The rule of the Patent Office that the fifing of an allowable appfication is 
 constructive reduction to practice is only the expression in another form of 
 the rule that the application for a patented invention, if it sufficiently de- 
 scribes the invention, is conclusive evidence that the invention was made at 
 least as early as that date. (Quoting and reviewing Lorraine v. Thurmond, 
 51 O. 0. 1781; Agawam v. Jordan, 7 Wall. 583; Sevmour v. Osborne, 11 
 Wall. 516; Clark v. Wilfimantic, 140 U. S. 481; Woodcock v. Parker, Fed. 
 Cas. 1813; Bedford v. Hunt, Fed. Cas. 1217; Reed v. Cutter, Fed. Cas. 
 11,645; Washburn v. Gould, Fed. Cas. 17,214; White v. Allen, Fed. Cas. 
 17,535; Winans v. New York, Fed. Cas. 17,864.) 
 
 At the same time we have the equally well settled rule that an invention 
 need not be perfected and adapted to use, or reduced to practice, in order to 
 obtain a valid patent, since no such condition is contained in the statute. 
 Wheeler v. Clipper, Fed. Cas. 17,493; Telephone Cases, 126 U. S. 1. 
 
 The cases which hold that a rejected application is not sufficient to estab- 
 lish priority of invention under the statutes have no bearing on the question 
 of the legal effect of a complete and allowable appfication which will result 
 or has resulted in the granting of a patent. Corn Planter Pat. 23 Wall. 181 ; 
 Lyman v. Lalor, Fed. Cas. 8632; Northwestern v. Philadelphia, Fed. Cas. 
 10,337. 
 
 Second. We have now to consider the question whether Watson can carry 
 the date of his invention back to the time of his conception, Jan. 10, 1896. 
 This question must be viewed from two standpoints: First, can it be said 
 that Watson's conception, drawings and disclosure to others, of themselves, 
 or without regard to his subsequent acts, can constitute a complete invention 
 within the meaning of the patent laws? Second, can Watson as a patentee 
 carry back the date of his invention to the time of his conception?
 
 § 614 INVENTION 551 
 
 (1) The law appears to be well established that a conception evidenced 
 by disclosure, drawings, and even a model, confers no rights upon an inventor 
 unless followed by some other act, such as actual reduction to practice, or 
 filing an application for a patent. A conception of this character is not a 
 complete invention under the patent laws. If it did constitute an invention 
 under the statutes, then an inventor might stop with his drawings and dis- 
 closure, and hold the field for all time against a subsequent inventor who had 
 reduced his invention to practice, or who had obtained a patent. The law 
 will not permit this. An inventor must not stop with this stage of his inven- 
 tion, but he must proceed with reasonable diligence to perfect his invention, 
 either by actual reduction to practice, or by filing his application for a patent. 
 (Quoting and reviewing Detroit v. Renchard, 9 Fed. 293; Reeves v. Key- 
 stone Fed. Cas. 11,660; Pennsylvania r'. Simpson, 29 Fed. 288; Winans v. 
 New York, Fed. Cas. 17,864; Electric v. Hall, 6 Fed. 603; Draper v. Po- 
 tomska, Fed. Cas. 4072; Ellithorp v. Robertson, Fed. Cas. 4408.) 
 
 (2) The next question we have to consider is whether Watson as a patentee 
 can carry back the date of his invention to the date of his conception; that 
 is, to his drawing and disclosure of Jan. 10, 1896. We understand the true 
 rule to be that a patentee who undertakes to carry back the date of his 
 invention to his drawings and disclosure m.ust show reasonable diligence in 
 adapting and perfecting^his invention, either by actual reduction to practice 
 or by filing his application. This rule is supported by the great weight of 
 authority, and we have found no cases which directly hold that this is not the 
 law, though there are some cases in which a patentee has been permitted_ to 
 carry back his invention to his drawings and disclosure, where the question 
 of diligence was not raised or passed upon. Loom Co. r. Higgins, 105 U. S. 
 580; Dodger. Porter, 98 Fed. 624; Westinghouse r. Stanley, 133 Fed. 167. 
 No sound reason has been advanced why the doctrine of diligence should 
 not apply to a patentee as well as an inventor who has not secured a patent. 
 On the other hand, any such distinction in favor of patentees is not in har- 
 mony with the patent laws. We have seen that an invention in the sense of 
 the patent law signifies a completed invention, and that the earliest date of 
 an invention is the time of its completion. We have also seen that an inven- 
 tion may be completed either by actual reduction to practice or by fifing a 
 complete and allowable application in conformity '\\ith the statutes. 
 
 This general principle, however, is subject to this quahfication: (Here 
 follows a discussion of the acts of July 4, 1836, sec. 15; Feb. 21, 1793, sec. 
 6; and a re\dew of the cases bearing thereon: Reed v. Cutter, supra: Loom 
 Co. V. Higgins, supra; Odell v. vStout, 22 Fed. 159; Reeves v. Keystone, 
 supra; Christie v. Seybold, 55 Fed. 69; :\Ierrow v. Shoemaker, 59 Fed. 120; 
 Detroit v. Renchard, supra; Pennsvlvania v. Simpson, supra; Electric v. 
 Hall, supra; IMorgan v. Daniels, 153 U. S. 120). — Automatic v. Pneumatic, 
 166 Fed. 288; C. C. A. ■ . 
 
 § 614. Definitions of. 
 
 The invention itself is an intellectual process or operation; and like all 
 olher expressions of thought, can in many cases scarcely be made known, 
 except by speech. The invention may be consummated and perfect and 
 may be susceptible of complete description in words, a month or even a 
 year before it can be embodied in a \nsible form, machine or composition 
 of matter. — Raihoad v. Stimpson, 14 Pet. 448; 10 L. Ed. 535. 
 
 The complainant alleges that he has invented a new and useful improve- 
 ment in the construction of jails. Now a jail can hardly come under the 
 denomination of a "machine;" nor, though made by hands, can it well 
 be classed with " manufactures; " nor, although compounded of matter can 
 it be termed a " composition of matter " in the meaning of the Patent Act.
 
 552 THE FIXED LAW OF PATENTS §614 
 
 " But if the subject matter be neither a machine nor a manufacture nor a 
 composition of matter," then, says Curtis Pat. 91, "it must be an art, for 
 there can be no vaUd patent except it be for a thing made or for the art or 
 process of making a thing." Now, without attempting to define the term 
 " art " with logical accuracy, we take as examples of it, some things which, 
 in their concrete form, exhibit what we all concede to come within a correct 
 definition, such as the art of printing, that of telegraphy, or that of photog- 
 raphy. The art of tanning might also come within the category, because it 
 requires various processes and manipulations. The difficulty still exists 
 however, under which category of the Patent Act an improvement in the 
 construction of jails is to be classed or whether under any. — Jacobs v. 
 Baker, 74 U. S. 295; 19 L. Ed. 200. 
 
 A patentable invention is a mental result. It must be new and shown to 
 be of practical utility. Everything within the domain of the conception 
 belongs to him who conceived it. The machine, process or product is but 
 the material reflex and embodiment. — Smith v. Nichols, 88 U. S. 112; 22 
 L. Ed. 566. 
 
 Reviewed at length by Justice Brown in McClain v. Ortmayer, 141 U. S. 
 419; 35L. Ed. 800; 12 S. Ct. 76. 
 
 A discovery which adds to our knowledge and makes a substantial advance 
 in the useful arts is invention. — Magowan v. N. Y. 141 U. S. 332; 35 L. Ed. 
 781; 12S. Ct. 62. 
 
 Atlantic v. Brady, 107 U. S. 192; HoUister v. Benedict, 113 U. S. 59. 
 
 Specifications and claims are necessary, but inventions consist in things, 
 not in words. — Thomson-Houston v. Western, 72 Fed. 530; 19 C. C. A. 1. 
 
 It is not mere novelty. — Tiemann v. Kraatz, 85 Fed. 437; 29 C. C. A. 257. 
 Thompson v. Boisselier, 114 U. S. 11; Gardner v. Herz, 118 U. S. 191. 
 
 As I look at it, the life germ of any creation is not so much the mechanical 
 form in which it finally becomes embodied, as the flash of inspiration, out 
 of the darkness in which it lay concealed, first revealed its possibility. The 
 possibility of a thing once seen, it is of no great moment that a ready me- 
 chanical means of bringing it into form is at hand; nor that the mechanical 
 means used are similar to those employed before in the allied arts; nor 
 that any mind would have seen the adaptability, mechanically, of what al- 
 ready existed to what was now^ for the first time, about to exist. Invention 
 is not, in my judgment, confined to the concrete mechanical form into which 
 an idea ultimately evolves. Invention is the idea itself, the burst of new 
 thought, the discovery; and patentable invention is the conjunction of these 
 two appropriate and efficient mechanical means. Confessedly, an old idea, 
 carried out mechanically in a new form, is patentable invention. To my 
 mind, a new idea, carried out mechanically in an old form, ought equally 
 to be regarded as patentable invention. To hold otherwise is to dethrone 
 the head and enthrone the hands — to leave genuine genius unrecompensed, 
 while placing the crown on mechanical skill. (Grosscup, J. concurring 
 unwillingly in view of Kokomo v. Kitselman, 189 U. S. 8.) — Brown v. 
 Crane, 133 Fed, 235; 66 C. C. A. 676. 
 
 Whether, in a given case, there has been the exercise of the inventive 
 faculty, within the meaning of the patent laws, is always a delicate and 
 sometimes difficult question addressed to the sound judgment of the court. 
 It is difficult, perhaps impossible, to describe general rules for the exercise
 
 § 615 INVENTION 553 
 
 of this judicial function. It demands careful consideration of the prior 
 art and the essential and distinguishing feature of the device or combina- 
 tion, as to which invention is alleged, and appreciation of the practical 
 working of the mental faculties. But it must often happen, and is unavoid- 
 able, that what is evidence of inventive genius to one mind, may only suggest 
 the exercise of mechanical skill to another equally sincere and intelligent. 
 — Buchanan v. Perkins, 135 Fed. 90; 67 C. C. A. 564. 
 
 It is said that from time immemorial eye shades have been made by 
 cutting visors from papers and tying them on with strings. If this was a 
 matter of common knowledge, so much more the marked was the intuitive 
 flash that finally came to Mahony's mind, and to his alone. We think there 
 was invention of the " happy thought " kind. — Mahony v. Malcom, 143 
 Fed. 124; 74 C. C. A. 318. 
 
 Williams v. American, 86 Fed. 641; Eastman v. Mayor, 134 Fed. 844; Regent 
 V. Penn, 121 Fed. 80. 
 
 § 615. Dividing or Uniting Parts. 
 
 It is not invention to make the frame of a machine integral rather than to 
 bolt two sections together when both perform the same service. — Bagley v. 
 Empire, 58 Fed. 212; 7 C. C. A. 191. 
 
 It does not involve invention to cast a part of a machine in two pieces 
 which before was cast in one piece. — Birmingham v. Gates, 78 Fed. 350; 
 24 C. C. A. 132. 
 
 It could not involve any invention to make a complete door frame in two 
 parts. All that was necessary to be done by the carpenter was to make a 
 complete frame, and then divide the jamb longitudinally into two sections 
 by the saw. — Roehr v. Bliss, 102 Fed. 692; 42 C. C. A. 593. 
 
 The conclusion from all the cases must be that the mere making in one 
 piece of a device formerly made in two parts mechanically attached is not 
 invention. The exception to the general rule must depend upon special 
 facts indicating the presence of inventive faculty in a degree greater than 
 the mere mechanical knowledge exhibited by so simple an improvement. 
 Much stress has been laid upon the alleged large use and sale of this improved 
 socket. The evidence upon this point is not very forceful in respect to this 
 particular invention. The sales were chiefly of a structure which included 
 track plate and socket, or these in combination with a caster, the track plate 
 and caster being the subject of other patents; and it is not made plain 
 that any more of the alleged success of the sale of the track plate socket was 
 due to the socket than to the track plate. However this may be, we do not 
 think the question of patentability is doubtful, and it is only when the pa- 
 tentability of a device is doubtful that the general use of the patented article 
 may turn the scale. — Standard v. Caster, 113 Fed. 162; 51 C. C. A. 109. 
 
 McClain v. Ortmayer, 141 U. S. 419; Duer v. Lock, 149 U. S. 216; Krementz 
 V. Cottle, 143 U. S. 556; Howard v. Stove, 150 U. S. 164; Mfg. Co. v. Holtzer, 
 67 Fed. 907. 
 
 All that this claim requires is that there shall be air-passages and that 
 they shall be screened. Since this is so, there surely is no invention in merely 
 reducing the number of air-passages from two to one. — Murray v. Conti- 
 nental, 149 Fed. 989; 79 C. C. A. 499.
 
 554 THE FIXED LAW OF PATENTS §616 
 
 There is no invention in making two parts of one thing, or one of two, when 
 by such change no different result is attained. — D'Arcy v. Staples, 161 Fed. 
 733; 8S C. C. A. 606. 
 
 Bundy v. Detroit, 94 Fed. 524; Fames v. Worcester, 127 Fed. 67; General 
 V. Yost, 139 Fed. 568; Standard v. Caster, 113 Fed. 162; Howard v. Detroit, 
 150 U. S. 164. 
 
 § 6i6. Double or Analogous Use — Analogous Use Non-Pat- 
 entable. 
 
 The application of a patented device to another use, where such new appli- 
 cation does not involve the exercise of the inventive faculty, is as much an 
 infringement as though the machine were an exact copy of the old. — West- 
 ern V. LaRue, 139 U. S. 601 ; 35 L. Ed. 294; 1 S. Ct. 670. 
 
 Winans v. Denmead, 56 U. S. 330; Sewell v. Jones, 91 U. S. 171; Howe v. 
 Abbott, 2 Story, 190; Walton v. Potter, 1 Web. P. C. 585. 
 
 Mere analogous use is not patentable. — Grant v. Walter, 148 U. S. 547; 
 37L. Ed. 552; 13 S. Ct. 699. 
 
 Brown v. Piper, 91 U. S. 37; Pennsylvania v. Safety Truck, 110 U. S. 491; 
 Miller v. Foree, 116 U. S. 22; Dreyfus v. Searle, 124 U. S. 60. 
 
 The adaptation of an old device to an analogous purpose in the same art 
 is mere double use. — Griswold v. Wagner, 68 Fed. 494; 15 C. C. A. 525. 
 
 Potts V. Creager, 155 U. S. 597; Brown v. Piper, 91 U. S. 27; Penna. v. Loco- 
 motive, 110 U. S. 490; Atlantic v. Brady, 107 U. S. 192; Tucker v. Spalding, 13 
 Wall. 453. 
 
 Complainants seek to eliminate the Elston patent from the case by the 
 suggestion that the workmen who make mattresses for beds, do not make 
 seats for railroad cars (the Elston patent was for a seat for railroad car). 
 That circumstance, however, is immaterial when an old contrivance is ap- 
 plied in an old way to an analogous subject, without any novelty in the 
 mode of applying such a contrivance to the new purpose. — Rogers v. 
 Fitch, 81 Fed. 959; 27 C. C. A. 23. 
 
 Penna. v. Locomotive, 110 U. S. 497; Aron v. Railway, 132 U. S. 89; Briggs 
 V. Ice Co. 60 Fed. 87. 
 
 The form of his stay was old, the material was old, and in bringing them 
 together in the particular form described in the patent, he did not develop 
 in either any new characteristics or capacity. — Janowitz v. Levison, 82 
 Fed. 63; 27 C. C. A. 61. 
 
 It is true as already stated, that nearly all, if not all, the elements of 
 Grosselin's combination were so common in the practical arts that their 
 use anywhere must be regarded as analogous to previous uses; and especially 
 is this true of the cone pulle}\s. But this does not wholly settle the matter. 
 The statements of the rule in Potts v. Creager, 155 U. S. p. 606, show that 
 the rule is not rigid but that it merely lays the basis of presumptions which 
 ordinarily are against patentabihty. — Heap v. Tremont, 82 Fed. 449; 27 
 C. C. A. 316. 
 
 National v. Boston, 156 U. S. 502; Watson v. Stevens, 51 Fed. 757; Osgood v. 
 Metropolitan, 75 Fed. 670; Mfg. Co. v. Holtzer, 67 Fed. 907. 
 
 That the mere transfer of a device from one field to an analogous use, 
 without change of function is not patentable, see Cushman v. Goddard, 95 
 Fed. 664; 37 C. C. A. 221. 
 
 Penna. v. Locomotive, 110 U. S. 490; Heap v. Tremont, 82 Fed. 449.
 
 § 616 INVENTION 550 
 
 The prior art showed both the ordinary atomizer and the especially designed 
 atomizer for the use of pigments, the latter being especially designed to 
 throw a much finer stream. The Fry patent required, for ceramic work, 
 an ordinary atomizer, and the specially designed pigment atomizer would 
 not do the work. It was held that the mere transfer of an ordinary atomizer 
 to do the work which the existing pigment atomizer would not perform, was 
 not invention. — Fry v. Rookwood, 101 Fed. 723; 41 C. C. A. 634. 
 
 The object is the old object, and the result is simply the old result of in- 
 sulation, which is to prevent discharges at an injurious place. We cannot 
 perceive that the effect of the insulation in an arc-rupturing device was any- 
 thing more than the old effect, which has always accompanied insulation, 
 and which was accomplished by the old mechanical means, although it 
 was used to prevent lateral discharges in connection with an arc-rupturmg 
 device. — Thomson-Houston v. Nassau, 107 Fed. 277; 46 C. C. A. 263. 
 
 The only difference is that Bemis claimed his combination " in a trans- 
 planting machine," while the existing combinations appeared in seed planters. 
 Granting that Bemis made a new and useful improvement in transplanters, 
 the substitution of a known part of a seed planter for the corresponding part 
 of a transplanter, with the required and self-suggesting changes, did not, 
 in our judgment, involve the exercise of the inventive faculty. — Seller v. 
 Fuller, 121 Fed. 85; 57 C. C. A. 339. 
 
 In view of the fact that Gendron showed that his invention was designed 
 to be used in vehicle manufacture in joining hollow seamless malleable 
 castings " to whiffletrees, axles, and other similar bodies," we cannot ascribe 
 to the transfer of the process to joining hollow seamless malleable spoke 
 sockets to spokes the dignity of invention. — Bettendorf v. Little, 123 Fed. 
 433; 59 C. C. A. 473. 
 
 Lovell V. Carv. 147 U. S. 623; Potts v. Creager, 155 U. S. 597; Mast v. Stover, 
 177 U. S. 485; '^Johnson v. Toledo, 119 Fed. 885. 
 
 Whether houses and incubators are or are not in the same class is unim- 
 portant. The patent in suit deals with the problem of ventilating an incu- 
 bator; the two earlier patents, with the problem of ventilating a house or a 
 room; and we are clearly of the opinion that the devising of systems of 
 ventilation belongs to a single art, whether such systems are to be apphed 
 to a hospital, a sewer, a ship's hold, a cold-storage box, an incubator or any 
 other structure where circulation of air is sought to be secured. — Jones v. 
 Cyphers, 126 Fed. 753; 62 C. C. A. 21. 
 
 It is possible that the inventor was the first to conceive that windows thus 
 constructed would be a valuable adjunct to fire-proof buildings. If so, it is 
 the pre\'iousness of his conception that constitutes the merit of his so-called 
 invention ; for the mechanical embodiment of that conception is old. But 
 it does not follow that a conception is patentable merely because it is first 
 in time. Concept alone is not patentable. Concept must be accompanied 
 by mechanical embodiment; and as the law now stands, the mechanical 
 embodiment, to make the invention patentable, must itself be unanticipated. 
 — Voightmann v. Perkinson, 138 Fed. 56; 70 C. C. A. 482. 
 
 As no adaptation beyond known equivalents was made or needed, and 
 as the transfer was from the very same art, the claims must be void. — 
 Covel V. Rich, 142 Fed. 468 ; 73 C. C. A. 584. 
 
 Potts V. Creaeer, 155 U. S. 597; Mast v. Stover, 177 U. S. 485; Stearns v. Russell, 
 85 Fed. 229; Chisholm r. Johnson, 115 Fed. 625.
 
 556 THE FIXED LAW OF PATENTS § 617 
 
 The new and analogous use to which the old and familiar process was put 
 (winnowing coffee after it had been roasted and slightly crushed) does not 
 amount to invention. — Baker v. Buncombe, 146 Fed. 744; 77 C. C. A. 234. 
 
 Slawson v. Grand, 107 U. S. 649; Grant v. Walter, 148 U. S. 547; Knapp v. 
 Morss, 150 U. S. 221; Aron v. Manhattan, 132 U. S. 84. 
 
 § 617. Double or Analogous Use — Double Use Non- Patentable. 
 
 If what it actually did is in its nature the same as sawing, and its structure 
 and action suggested to the mind of an ordinary skilled mechanic this double 
 use to which it could be put without material change, it is not invention. 
 — Tucker v. Spalding, 80 U. S. 453 ; 20 L. Ed. 515. 
 
 A double use is not patentable, nor does its cheapness make it so. — Reck- 
 endorfer v. Faber, 92 U. S. 347; 23 L. Ed. 719. 
 Curtis, sec. 56, 73. 
 
 The employment of old mechanism producing the same mechanical 
 effect, the only advantage being an increased degree of security or safety 
 is not invention. — Fond du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 
 11 S. Ct. 98. 
 
 Tucker v. Spalding, 80 U. S. 453; Corn Planter Patent, 90 U. S. 181; Brown v. 
 Piper 91 U. S. 37; Dunbar v. Meyers, 94 U. S. 187; Vinton v. Hamilton, 104 U. S. 
 485- Heald v. Rice, 104 U. S. 737; Hall v. Macneale, 107 U. S. 90; Thompson 
 V Boisselier, 114 U. S. 1; Stephenson v. Brooklyn, 114 U. S. 149; Aron v. Man- 
 hattan, 132 U. S. 84; Watson v. Cincinnati, 132 U. S. 161; Hill v. Wooster, 132 
 U. S. 693; Burt v. Evory, 133 U. S. 349; St. Germain v. Brunswick, 135 U. S. 
 227. ' 
 
 The public cannot be deprived of an old process because some one has 
 discovered that it is capable of producing a better result or has a wider range 
 of use than was before known. — Lovell v. Gary, 147 U. S. 623 ; 37 L. Ed. 307 ; 
 13 S. Ct. 472. 
 
 Smith V. Nichols, 88 U. S. 112; Roberts v. Ryer, 91 U. S. 150. 
 
 The mere carrying forward of an old process to perform an analogous use 
 not invention. — Lovell v. Gary, 147 U. S. 623; 37 L. Ed. 307; 13 S. Gt. 472. 
 
 The combination of old elements which perform no new function and ac- 
 complish no new results does not involve patentable novelty. — Knapp v. 
 Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Mosler v. Mosler, 127 U. S. 361; Hailes v. Van Wormer, 87 U. S. 353; Recken- 
 dorfer v. Faber, 92 U. S. 347; Pickering v. McCullough, 104 U. S. 310; Peters 
 V. Hanson, 129 U. S. 541. 
 
 Dissented to. Brown and Shiras. While change was not radical it was still 
 invention. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Washburn v. Beat Em All, 143 U. S. 275; 
 Gandy v. Main, 143 U. S. 587; Topliff v. Topliff, 145 U. S. 156. 
 
 For the leading cases on this subject (quoted under §671) see Potts v. 
 Creager, 155 U. S. 597; 39 L. Ed. 275; 15 S. Gt. 194. 
 
 He invented no new device, he used it for no new purpose ; he applied it 
 to no new machine. All he did was to apply it to a new purpose in a machine 
 where it had not before been used for that purpose. In our opinion this 
 transfer does not rise to the dignity of invention. — Mast v. Stover, 177 
 U. S. 485; 44 L. Ed. 856; 20 S. Gt. 708. 
 
 Potts V. Creager, 155 U. S. 597.
 
 §§ 618-620 INVENTION 557 
 
 § 6i8. Double or Analogous Use — Double Use Patentable. 
 
 The distinction between a double use, as the result of mere mechanical 
 skill, and a new use created by the inventive faculty is strikingly illustrated 
 in the case of Colgate v. Western, 15 Blatchf. 365. — Busell v. Stevens, 137 U, 
 S. 423; 34 L. Ed. 719; 11 S. Ct. 150. 
 
 As a broad invention it has nothing which was not fully described in the 
 prior systems except a single receiver in lieu of two. It is apparent that, 
 when a single receiving instrument was desired in the place of two,^he change 
 could easily have been made by any person skilled in the art. 
 
 Therefore I felt at liberty to proceed in this case on my own convictions, 
 on my understanding of the tendency and practical effect of the decisions 
 of the Supreme Court during the last few years which have sustained so 
 many decrees in the circuit courts holding patents invalid for want of patent- 
 able novelty, and reversed so many in which the patents have not been held 
 invalid for that reason, and especially the tendency and practical effect 
 of the series of cases concerning " double use," so called, beginning with 
 Penna. v. Locomotive, 110 U. S. 490 and ending with Knapp v. Morss, 150 
 U. S. 221 and of the rule in Gordon v. Warder, 150 U. S. 47. But, apparently 
 the trend of this court, as shown in Folding Bed Co. v. Osgood, 58 Fed. 583 
 and Herrick v. Leveller Co. 60 Fed. 80, precludes me from following my own 
 views, as above expressed. (Dissenting opinion of Putnam, C. J.). — Game- 
 well V. Municipal, 61 Fed. 948; 10 C. C. A. 184. 
 
 This was an action for infringement of a tanning process. Respondent 
 set up as anticipatory a similar process for dyeing. Held: In dyeing and 
 printing on fabrics and in the treatment of wools, the end finally accomphshed 
 is not at all analogous to that of manufactured leather. The same ingredi- 
 ents may be used to reach the one result as the other but they are 
 not used for a like purpose. They do not affect the different materials 
 in the same way, and the product evolved in the one case is wholly unlike 
 the change effected in the other. The fact that hides are substituted for 
 fabrics or wool, and that the thing produced is leather, and not dyed fabric 
 or treated wool distinguishes the two processes. The art of dyeing and 
 of leather making are wholly unallied, and therefore the doctrine of double 
 use has no pertinency. — Tannage v. Zahn, 70 Fed. 1003; 17 C. C. A. 552. 
 
 Potts V. Creager, 155 U. S. 606. 
 
 § 619. Duplication. 
 
 Mere duplication is not invention. — Topliff v. Topliff, 145 U. S. 156 ; 36 L. 
 Ed. 658; 12S.Ct. 825. 
 
 Dunbar v. Meyers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649. 
 
 Note: Further cases bearing on this subject will be found under Aggre- 
 gation, Adaptation, Mechanical Skill and Novelty. 
 
 § 620. Evidence of — Acquiescence. 
 
 In view of the Moore patent and of the state of the art, the patent in suit 
 is an extremely narrow one ; but in view of the favor with which it has been 
 recei->'ed by the trade, and the long acquiescence shown, we are not prepared 
 to hold that there was no invention in so reorganizing the fastener of the 
 prior art as to produce for the first time a device such as that described. — 
 Acme V. Gary, 101 Fed. 269; 41 C. C. A. 338. 
 
 Here was an invention which, if it was an invention, was of such a charac- 
 ter that, notwithstanding the parties are at issue in regard to the extent
 
 558 THE FIXED LAW OF PATENTS §§621-622 
 
 of its practical value, it promised and accomplished great pecuniary advan- 
 ta'^e Yet it must be conceded, as is apparent from the general tone of the 
 whole record, and from the way in which the case has been developed before 
 us that the patent was long acquiesced in. It is also certani from the testi- 
 mony in the case that an interference was declared between Perraris and 
 Tesla and decided in favor of the latter. While, of course, such decisions 
 are not formally operative as between other parties, as we have shown in 
 Wilson V. Consolidated, 88 Fed. 286, especially when, as in the present case, 
 courts are not advised what the nature of the contest was, or even whether 
 it was a real one, yet such issues, when determined, necessarily contribute, 
 with other adjudications, to make up the body of expert and legal opinion 
 which goes to show that the patent has been approved and acquiesced in 
 by those who understand its relations to the art. Although such general 
 judgment cannot be measured by the law, yet it must be conceded that it has 
 its weight, especially with regard to the state of the art at a period some 
 years remote. In some cases, after a long lapse of time, it is the most re- 
 Uable test in reference thereto; and, in any event, it affords material support 
 to the patentee on issues of fact of the kind at bar, relating to occurrences 
 as to which so many years have gone by. — Westinghouse v. Stanley, 133 
 Fed. 167; 68 C. C. A. 523. 
 
 Never until this cause was instituted, so far as we are informed, was the 
 validity of the patent disputed. During all that period of 10 years there 
 seems to have been a public acquiescence in its validity. With these facts 
 before us we think we are not justified in holding the first claim of the patent 
 invahd. — Wolff v. Du Pont, 134 Fed. 862; 67 C. C. A. 488. 
 
 Although the letters patent issued more than 14 years before the filing of 
 this bill, no practical use was ever made of the alleged invention covered by 
 the claim now in issue. Consequently the patent lacks the support coming 
 from public acquiescence which is often of great value, not only in giving 
 support to an alleged invention, but also in justifying a breadth of con- 
 struction of the patent itself, so that the complainant is subject to the 
 scrutiny and the limitations of the class observed in our opinion in U. S. 
 Hog 7). 'North, 158 Fed. 818, and in the cases there cited, and in Deering 
 V. Harvester, 155 U. S. 286. — Boston v. Pennsylvania, 164 Fed. 557; 
 C. C. A. 
 
 §621. Evidence of — Attempted Evasion. 
 
 Indeed, its great usefulness and ingenuity are especially illustrated by 
 the cumbersome efforts of the respondent to accomplish the results of the 
 patented device by its alleged infringing machine. — Heap v. Tremont, 82 
 Fed. 449; 27 C. C. A. 316. 
 
 § 622. Evidence of — Commercial Success. 
 
 The argument drawn from commercial success is not always to be relied 
 on. Other causes, such as the enterprise of the vendors and the lavish ex- 
 penditures in advertising may cooperate to promote a large demand. But 
 when the other facts in the case leave the question of invention in doubt, 
 the fact that the device has gone into general use and has displaced other 
 devices which had previously been employed for analogous uses is suffi- 
 cient to turn the scale in favor of the existence of invention. — Krementz 
 V. Cottle, 148 U. S. 556; 37 L. Ed. 558; 13 S. Ct. 719. 
 
 Quoting from Con. B. S. Co. v. Detroit, 47 Fed. 894. 
 
 Loom Co. V. Higgins, 105 U. S. .580: Con. S. V. Co. v. Crosbv, 113 U. S. 157; 
 Magowan v. N. Y. 141 U. S. 332; Washburn v. Beat Em All, 143 U. S. 275; 
 Gandy v. Main, 143 U. S. 587; Topliff v. Topliff, 145 U. S. 156.
 
 § 622 INVENTION ^59 
 
 The shredders failed to properly prepare the cane for ^^^^ m;"- The Kra- 
 jewski machine succeeds. — Krajewski v. Pharr, 105 Fed. 514; 44 L. L. A. 
 572 
 
 In Re Barbed Wire Patent, 143 U^ S. 275; Schroeder v. Brammer ^f J.^'^aS 
 Dudley V. Hunger, 1 C. C. A 158; Consohdated ^-Crosby, 113 US^ 157 Smith 
 V Vulcanite, 93 U. S. 486; Magowan v. Packing Co., 141 U. S. 3S2-6i6, ifoUs 
 V. Creager, 155 U. S. 597. 
 
 The fact that the device was at once successful, and that, to a large extent, 
 it practically displaced all lifting jacks in previous use, must be regarded as a 
 circumstance of decided significance. Such circumstance clearly discloses the 
 meritoriousness of the device. And it is well settled that when the question 
 of patentable novelty is fairly open to doubt, the practical success of the 
 device, with the fact that it displaced similar devices in previous use, is 
 sufficient to turn the scale in favor of the invention. — Kalamazoo v. Dull, 
 113 Fed. 264; 51 C. C. A. 221. 
 
 Smith V. Vulcanite, 93 U. S. 486; Magowan i;. Packing Co. 141 US. 333; 
 National v Interchangeable, 106 Fed. 693; Hallock v. Davison 107 Fed. 482, 
 Barbed Wire Pat. 143 U. S. 275; Topliff v. Topliff, 145 U S. 156; Krementz v. 
 Cottle 146 U. S. 556; Consolidated v. Detroit, 47 Fed. 894; Mfg. Co. v. Adams, 
 151 U'. S. 139. 
 
 If there is any doubt upon the question of patentability, the practical 
 and commercial results of the improvement must resolve such doubt in its 
 
 ^^Ytis it^mlfst merely the use of an old device for a new and analogous pur- 
 pose without the necessity of any adaptation in order to discharge the old 
 function in the new device. Its confessed commercial sucx;ess therefore, 
 cannot be accepted as evidence of invention, (p. 501.) - Westinghouse v. 
 Union, 117 Fed. 495; 55 C. C. A. 230. 
 
 Note- It is true, these two conflicting statements, seemingly so, refer to 
 two different patents; but it is perhaps as good an illustration how a so- 
 called rule of law becomes a " wax nose " as can be found. 
 
 The testimony shows that the public by large purchases appreciated Hoyt's 
 device- and while this fact is not controlHng, it is entitled to consideration, 
 when commercial success is not shown to be due to other causes. — Dowagiac 
 V. Minnesota, 118 Fed. 136; 55 C. C. A. 86. 
 
 Gandy v. Belting, 143 U. S. 587; Lane v. Welds, 99 Fed. 286; Dowagiac v. 
 Superior, 115 Fed. 886. 
 
 Commercial success is not an infallible staridard by which to test the 
 merit of an invention. Such success is often due to mere business ability 
 h^ manufacturing, exploiting, and advertising; but given a large demand 
 for a Darticular thing, a market already created, and an invention which it 
 is free to use, the fact that it is not used strongly demonstrates its inade- 
 quacy. - Ideal V. Crown, 131 Fed. 244; 65 C. C. A. 436. 
 
 The hard-headed men of trade do not place themselves in a position where 
 thev must accept the alternative of an infringement suit or the payment 
 of license fees for the use of an article when an equally good article may 
 be had for nothing. It should be and is the desire of the court in approaching 
 the consideration'of a patent for a structure which has thus won a position 
 of unchallenged supremacy in the commercial world to endeavor to sustain 
 rather than defeat the patent. — Consolidated v. Firestone, 151 l^ed. Z6r, 
 80 C. C. A. 589.
 
 560 THE FIXED LAW OF PATENTS §§ 623-624 
 
 Even if appellee's commercial success with a ventilated armature core 
 was due to Reist's teachings, rather than to the skill of appellee's mechanics 
 in working out indispensable features that were not disclosed by Reist, that 
 fact " would only be influential in resolving a doubt " — it would not also 
 serve to inject a doubt into an otherwise clear case. — National v. General, 
 159 Fed. 934; 87 C. C. A. 462. 
 
 § 623. Evidence of — Commercial Success — When Not. 
 
 The appellants rely on the fact that the patented machine was the first 
 successful one, and on the fact that it had great commercial success. The 
 decisions touching the effect of these propositions are so numerous and modern 
 that they need not be referred to specifically, but they limit the application 
 of them to doubtful cases turning on questions of utility or patentable in- 
 vention. They have no pertinency in cases which turn on the construction 
 of the patent. — DeLoriea v. Whitney, 63 Fed. 611 ; 11 C. C. A. 355. 
 
 The rule of commercial success determining invention is applied only in 
 cases of doubtful invention, and not where there is palpable want of any 
 inventive art. — Olmsted r. Andrews, 77 Fed. 835; 23 C. C. A. 488. 
 
 There is too much evidence in this record as to consent decrees against 
 rival makers of tires to predicate much upon the mere fact that the Grant 
 tire has met with a large sale. The general use of a patented article is only 
 evidence of value when the novelty or utility of the article is a matter of 
 great doubt, and its evidential value in even such cases is nothing when it 
 can be attributed to something other than novelty. — Goodyear v. Rubber, 
 116 Fed. 363; 53 CCA. 583. 
 
 Watch Co. V. Robbins, 75 Fed. 17; Lane v. Welds, 99 Fed. 286; McClain v. 
 Ortmayer, 141 U. S. 419. 
 
 In considering the question of the patentable character of the machine in 
 question, we must not be misled by the fact that its use has been attended 
 with commercial success in the way of a large, better, and cheaper product; 
 for, in the steady advance incident to progress in manufacturing, many non- 
 patentable processes and methods have proved most original and exceed- 
 ingly profitable, and it must be remembered that everything novel and useful 
 is not therefore necessarily patentable. — Daylight v. American, 142 Fed. 454; 
 73 C C A. 570. 
 
 That mere evidence of large sales without proof that the same was due to 
 the improvement is not proof of novelty, see Fielding v. Grouse, 154 Fed. 
 377; 83 CC A. 331. 
 
 The commercial success of the article manufactured under the complain- 
 ant's patent is also pointed out as indicating invention. But this is only 
 one element to be considered, and then only when patentability is doubtful. 
 Moreover, it is not entirely clear that this commercial success is not in some 
 measure due to the machines used by the complainants and their licensees 
 for attaching the binder. — Lockhn v. Buck, 159 Fed. 434; 86 C C A. 414. 
 
 § 624. Evidence of - — Efficiency. 
 
 That a combination making a superior and cheaper article is itself a 
 patentable invention, we are unable to agree with. — Florsheim v. Schilling, 
 137 U. S. 64; 34 L. Ed. 574; 11 S. Ct. 20. 
 
 Pickering v. McCuUough, 104 U. S. 310.
 
 § 624 INVENTION 561 
 
 Large capacity of device is persuasive but by no means conclusive proof 
 of invention. — National v. Hedden, 148 U. S. 482; 37 L. Ed. 529; 13 S. Ct. 
 680. 
 
 A glance at the patent and the invention itself, and the fact that the de- 
 fendant used and paid royalty for the use of it for years, and now infringes, 
 sufficiently establish utility. — Thomson v. Citizens Nat. Bk., 53 Fed. 
 250; 3 C. C. A. 518. 
 
 The patent was a notable step in advance, — a marked improvement; 
 and, to those who made it, we think the quality of inventors ought not to be 
 denied. — Griswold v. Harker, 62 Fed. 389; 10 C. C. A. 435. 
 
 Thomson v. Bank, 53 Fed. 250; Loom Co. v. Higgins, 105 U. S. 580; Con- 
 solidated V. Crosby, 113 U. S. 157; Magowan v. Packing Co. 141 U. S. 332; 
 Barbed Wire Case, 143 U. S. 275. 
 
 It is argued that there must be invention in complainant's machine from the 
 fact that it produces more per diem than any that preceded it. But the 
 increased speed is due, not to the introduction of a new element into his com- 
 bination, or to a new combination of known elements; it is attributable 
 only to the superior strength and firmness. It requires no reasoning to prove 
 that if the prior machines were constructed with equal strength and rigidity, 
 they will run at the same speed and accomplish the same result with com- 
 plainant's machine. — Vulcan v. Smith, 62 Fed. 444; 10 C. C. A. 493. 
 
 The protection of the statute is granted for things invented, not for things 
 produced. The qualities claimed belong, as we think, to the domain of 
 mechanical skill and not to the domain of the inventive faculty. It is ex- 
 cellence of workmanship, superiority and lightness of material, structural 
 changes of form and proportion which produce the claimed result. — 
 Olmsted v. Andrews Co. 77 Fed. 835; 23 C. C. A. 488. 
 
 "When the increase of speed is so great as it appears to be in this instance, 
 and that, too, in a part where increase of speed (efficiency being preserved) 
 is of such practical importance, we are disposed to consider the changes 
 in parts and arrangement of parts as showing meritorious invention. This 
 capacity for high speed is not an afterthought, for at the beginning of the 
 specification, is found a statement that the machine has been contrived with 
 reference to running at a very high speed. — Willcox v. Merrow, 93 Fed. 206; 
 35 C. C. A. 269. 
 
 It is an improvement because it saves time. How much time is thus saved 
 is not entirely clear. But whether it were greater or less, the majority of 
 the court are of the opinion that the device employed to effect it is a simple 
 and obvious mechanical contrivance, quite within the intelligence of the ordi- 
 nary skilled workman to produce, and that it does not disclose patentable 
 invention. — Doig v. Morgan, 122 Fed. 460; 59 C. C. A. 616. 
 
 Consolidated v. Barnard, 43 Fed. 527; Office Specialty v. Globe, 77 Fed. 465; 
 Aron V. Manhattan, 132 U. S. 84. 
 
 While the mere assembling in a new organization of parts of old structures 
 to perform the same function in their new place that they did in the old is 
 not invention, yet where they are so taken and are organized in a new and 
 useful manner, so as to produce a more beneficial result, there may be inven- 
 tion; and when the combination displays the exercise of intuitive skill and 
 genius beyond that possessed and exercised bv those well skilled in the prac- 
 tice of their art, and the discovery is of something new and useful, invention 
 should be recognized. — Western v. North, 135 Fed. 79; 67 C. C. A. 553.
 
 562 THE FIXED LAW OF PATENTS §§ 625-626 
 
 Not only is there a judicious selection by the inventor of the mechanism 
 employed, but there is a discriminating adaptation of it to the work to be 
 performed, which suggests something more than the mere skill of the ordinary 
 mechanic, and partakes rather of the inventive insight and discovery which 
 it is the design of the patent law to foster and protect. — American v. Mills, 
 149 Fed. 743; 79 C. C. A. 449. 
 
 In a very considerable sense, and from the very nature of things, every 
 patent so far as the fact of invention is concerned, is to stand, if it stands at 
 all, upon its own inherent merit, and therefore a given situation is not much 
 aided by authorities otherwise than by the relative measure of merit ascer- 
 tained under somewhat unsatisfactory methods of comparison; but if the 
 ingenious barbed wire twist, which " turned a failure into a success " was 
 invention, surely what Houghton accomplished through a successful sub- 
 stitution of metal parts for wood and by way of an ingenious adaptation of 
 hard-tempered wire and sheet metal parts, so assembled as to be easily 
 adjustable to old and new machines alike, ought to be accepted as invention. 
 — Houghton V. Whitin, 153 Fed. 740; 83 C. C. A. 84. 
 
 Notwithstanding the fact that the vertical strip is new, the invention 
 after all, resides in a broader sense, in the conception of the combination, 
 and in the exceedingly practical and meritorious adaptation of the various 
 metal parts in a complete mechanical appliance capable of doing the work 
 and of successfully meeting the requirements of an existing necessity. — 
 Houghton V. Whitin, 153 Fed. 740; 83 C. C. A. 84. 
 
 That a machine shall produce an original result is not necessary to patenta- 
 bility. If the new arrangement increases the effectiveness of the old by 
 increased product or by lessening the expense, the fact affords evidence of 
 invention. — National v. Aiken, 163 Fed. 254; C. C. A. 
 
 Loom Co. V. Higgins, 105 U. S. 589; Star v. General, 111 Fed. 398. 
 
 § 625. Evidence of — Extensive Litigation. 
 
 The extent of this litigation attests at least the utility of the process 
 supposed to be described in the patent, as it shows and measures the extent 
 of the public demand for its use. — Eames v. Andrews, 122 U. S. 40 (Driven 
 Well Pat.); 30 L. Ed. 1064; 7 S. Ct. 1073. 
 
 Another volume of 500 pages has been added to the library which has 
 accumulated during the last ten years through the efforts of many defendants 
 who seem determined to use what they, in effect, assert to be a useless device. 
 The indomitable persistency with which these people have fought for the 
 right to use the Grant patent is more persuasive evidence of its merits than 
 the opinions of experts. — Consolidated v. Diamond, 162 Fed. 892; 89 
 C. C. A. 582. 
 
 §L 626. Evidence of — Extensive Use. 
 
 We do not say, the single fact that a device has gone into general use and 
 has displaced other devices which had previously been employed for analo- 
 gous uses establishes invention. It may, however, always be considered; 
 and when the other facts in the case leave the question in doubt, it is sufficient 
 to turn the scale. — Smith v. Goodyear, 93 U. S. 486; 23 L. Ed. 952. 
 
 This was a problem of the reconciliation of antagonisms, which so often 
 occur in mechanics and without which practicallv successful results are not 
 attained. — Consolidated v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 
 513.
 
 § 626 INVENTION 563 
 
 The testimony is very full and clear that, as a process, it was not known 
 or used before in the art; that it worked a valuable and important change in 
 that art, in the particulars set forth in the specification; that it went at once 
 extensively into use in Europe and the United States; and that it was recog- 
 nized as a new and valuable invention in published works on the subject, 
 immediately after it was made known. — New Process v. Maus, 122 U. S. 
 413; 30 L. Ed. 1193; 7 S. Ct. 1304. 
 
 The fact that an article sold generally on the market at from 15 to 20 
 per cent, more than other similar articles ahhough it cost 10 per cent, less to 
 produce it, is evidence of novelty. — Magowan v. N. Y. 141 U. S. 332; 35 
 L.Ed. 781; 12 S. Ct. 62. 
 
 Where an article went at once into such extensive public use as almost to 
 supersede all others; that fact was pregnant evidence of novelty, value, and 
 usefulness. — Magowan v. N. Y. 141 U. S. 332; 35 L. Ed. 781 ; 12 S. Ct. 62. 
 
 Smith V. Goodyear, 93 U. S. 486; Webster v. Higgins, 105 U. S. 580. 
 
 The fact that the salient feature of an invention has gone into general use 
 is evidence that that feature was novel. — Hoyt v. Home, 145 U. S. 302; 
 36L. Ed. 713; 12 S. Ct. 922. 
 
 While the question of patentable novelty in this device is by no means 
 free from doubt, we are inclined, in view of the extensive use to which these 
 springs have been put by manufacturers of wagons, to resolve the doubt in 
 favor of the patentees. — Tophff v. Topliff, 145 U. S. 156; 36 L. Ed. 658; 
 12 S. Ct. 825. 
 
 Taylor seems to have been the first to invent a practical trunk fastener to 
 take the place of the old fashioned strap and buckle, and that, improved 
 upon, as it undoubtedly has been, it has completely taken the place of the 
 earlier devices, we should be inclined to resolve the doubt in favor of the 
 patentee. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 
 799. 
 
 General use evidence of. — Keystone v. Adams, 151 U. S. 139; 38 L. Ed. 
 103; 14S. Ct. 295. 
 
 The strongest evidence that the invention is a useful one is the fact that 
 more than one-half of all the articles to which it is particularly appHcable, 
 are made under it and embody the combination of elements which is set 
 forth in its specifications. Nor 'is it any answer that the companies using it 
 have a monopoly of the business. They would use ordinary business discre- 
 tion, and would be guided by the demands of the puUic. — Columbus v. 
 Robbins, 64 Fed. 384; 12 C. C. A. 174. 
 
 Yet these are the facts that various crude and unsatisfactory expedients 
 had been used by manv persons for the purpose of accomplishmg what 
 Davis accomplished bv his simple expedient, that this occurred to none of 
 them, and- that after it had been suggested by him it came mto general use. 
 The basis of the claim seems feeble, and, if it had nothmg m its behalf except 
 what we can find as a matter of first impression, we might reject it. \ et the 
 presumptions arising in its favor from the findings of the patent ofhce and 
 the circuit court, in connection with those coming from the facts we have 
 stated, prevent us from reversing the decree below. — Davis v. Parkman, 
 71 Fed. 961 ; 18 C. C. A. 398. 
 
 Watson V. Stevens, 51 Fed. 757.
 
 564 THE FIXED LAW OF PATENTS § 626 
 
 The fact that this device may have gone into general use, and may have 
 displaced other devices previously used for the same or analogous purposes, 
 might be sufficient to turn the scale in favor of patentability, if the question 
 were doubtful; but it is not sufficient in this case, when the court is clearly 
 satisfied that there was no invention, in view of what was old and well 
 known. — Codman v. Amia, 74 Fed. 634; 20 C. C. A. 566. 
 
 If this invention had been put in early use, and so continued with a long 
 public acquiescence, it might, perhaps, have safely received therefrom a 
 practical construction more favorable to the complainants. But in view of 
 the rapidity with which mechanical improvements advance in this age, it 
 would establish a very dangerous precedent to give a mere paper patent, ■ 
 which has lain dormant for years, a breadth not contemplated on its face, 
 by reason of some new function discovered long after its issue, and after 
 the function had been availed of in practice by others. — Long v. Pope, 
 75 Fed. 835; 21 C. C. A. 533. 
 
 The fact that a device has had large use when sold in combination with 
 another patented device does not argue novelty when the extended use is 
 due to the novelty of the device used in conjunction with it. — Dueber v. 
 Robbing, 75 Fed. 17; 21 C. C. A. 198. 
 
 Extensive use is only an element to be considered in a case where patenta- 
 bility and invention are doubtful. Where, as here, the extended use can be 
 attributed to something other than the mere novelty of the device it loses its 
 evidential force. — Dueber v. Robbins, 75 Fed. 17; 21 C. C. A. 198. 
 
 In view of the prior state of the art thus exhibited, it seems now to have 
 been a very simple thing to do what was done by the patentees. It was only 
 necessary for them to take the Levitt frame, change the location of the brace, 
 perhaps enlarge the diameter of its arms, remove the metallic loop, and insert 
 in the cross brace the short shaft shown in the patent to Brill. But the record 
 in this case affords extrinsic evidence of a most convincing kind that what was 
 done by the patentees was not an obvious thing, and that the change of 
 organization was not one which the skilled mechanics of the particular art 
 could have suggested and introduced without the exercise of inventive 
 faculty. This evidence is supplied, not only by the many patents for improve- 
 ments, which fell short of producing the simple, compact, less expensive, 
 and more efficient bearings of the patent, but by the sterility, during 20 
 years, of the great army of mechanics employed by the various sewing 
 machine manufacturers. The complainant itself, from 1865 to 1879, used the 
 overhung stud, and for several years of that period its machines contained 
 cross braces readily adaptable to the office of the patented brace. It em- 
 ployed a vast number of skilled workmen. Yet to none of them did the 
 suggestion occur which is embodied in the new organization of the patentees. 
 The simple change made by the patentees has proved so valuable that the 
 complainant has adopted it in more than 9,000,000 sewing machines. The 
 sewing machine company whose president is the defendant in this suit has 
 also adopted it. No one can examine the bearings of the patent, even cursorily, 
 and compare them with those previously in use, without recognizing the 
 meritorious improvements which they embody. We agree with the court 
 below that these improvements were invention, and not merely the exercise 
 of mechanical skill and adaptation. — Schenck v. Singer, 77 Fed. 841 ; 23 
 C. C. A. 494 
 
 Whether it was an obvious thing or not is a question of fact; and if it 
 should appear upon the introduction of the patented article, it commended
 
 § 626 INVENTION 565 
 
 itself to the public, and was accepted as supplying what had long been 
 wanted, and obtained an extensive sale and use, these facts might be decisive. 
 According to bill of complainant, the invention has been introduced in pubhc 
 use, articles have been largely introduced embodying the invention and it has 
 made practically successful the use of asbestos fire-proof cloth for the pur- 
 poses suggested in the patent. — Beer v. Walbridge, 100 Fed. 465; 40 C. 
 C. A. 496. 
 
 Krementz v. Cottle, 148 U. S. 556. 
 
 About thirty millions of such bottle stoppers were put upon the market 
 by the complainant company alone during the last year, and the fact that, 
 until the Painter patents were issued, no other bottle stoppers of like char- 
 acter or based upon like principles, were ever sold, is of itself strong evidence 
 of the individuality of the Painter devices. — Crown v. Aluminum, 108 Fed. 
 845; 48C. C. A. 72. 
 
 Within three years after the issuance of the patent, 90 per cent, of the 
 existing bowUng alleys have had the new style of returnways. In the face of 
 this evidence, we cannot hold that his improvement is devoid of patentable 
 invention. — Brunswick v. Thum, 111 Fed. 904; 50 C. C. A. 61. 
 
 The combination had great utility. It went into immediate and general 
 use. While this fact is insufficient in itself to sustain a patent where the 
 machine or combination is clearly without novelty, yet where the question 
 of novelty is fairly open under the law, the fact that a patented device or 
 combination has displaced others which had previously been used to perform 
 its function and has gone into immediate and general use, is pregnant and 
 persuasive evidence that it involved invention. — Kinloch v. Western, 113 
 Fed. 659; 51 C. C. A. 369. 
 
 National v. Interchangeable, 106 Fed. 693; Smith v. Vulcanite, 93 U. S. 486; 
 Loom Co. V. Higgins, 105 U. S. 580; Mfg. Co. v. Adams, 151 U. S. 139; Magowan 
 V. Packing, 141 U. S. 332; Graphophone v. Leeds, 87 Fed. 873; Topliff v. Topliff, 
 145 U. S. 156. 
 
 That a vital demand, a successful meeting of that demand, and extensive 
 use is sufficient to establish invention over a prior unsuccessful device, see 
 Dececo v. Gilchrist, 125 Fed. 293; 60 C. C. A. 207. 
 
 It is urged that the great commercial success which has attended the 
 introduction of the patented cap is persuasive that it supplied a long felt want, 
 and which previous inventors had not been able to meet, and is therefore 
 evidence of its patentable novelty. Such an argument is always legitimate, 
 but in this case has not the usual force, first, because the caps put upon the 
 market seem to have been made according to the earlier patent ; and, secondly 
 because the success is largely attributable to the machine used for fastening 
 the caps on the bottles, and which enables it to be done with great rapidity 
 and efficiency. — Crown v. Standard, 136 Fed. 841 ; 69 C. C. A. 200. 
 
 The disk produced by the patented process responds to the test of success 
 when others have failed. But in addition to the inventive success, there is 
 also a commercial success. And this success is not subject to the criticism 
 that is due to extensive advertising, or the attractive manner of placing the 
 articles before the public, or " the energy with which they were forced upon 
 the market." McClain v. Ortmayer, 141 U. S. 428. Nor is the disk merely 
 such an element of a device that its sales may be ascribed to the popularity 
 of the elements thereof, or of the entire organism. Doig r. Morgan, 122 Fed. 
 460. The patentable novelty of the process of the patent is not only indicated
 
 566 THE FIXED LAW OF PATENTS § 627 
 
 by larger sales, but also by the unassailable evidence of that most sincere 
 form of flattering recognition, namely, imitation and appropriation by rival 
 manufacturers. In short, it has so far supplanted other methods previously 
 used that apparently all disk records are now made by said process. The 
 validity of the patent 'is thus estabhshed by commercial success, resultant 
 solely from inventive success, and such extensive public use as to supersede 
 disks made by other processes, which is " pregnant evidence of its novelty, 
 value and usefulness." — American v. Universal, 151 Fed. 595; 81 C. C. A. 
 139. 
 Magowan v. N. Y., 141 U. S. 332. 
 
 The industry of manufacturing mats and the like out of wild marsh grass 
 or sedge is due, we think, rather to the commercial abihty and financial 
 resources at the command of appellant than to Lowry's conception of making 
 binder twine from common products. But, if appellant's assertion were to 
 be taken as true, it would only be influential in resolving a doubt. It would 
 not also serve to inject a doubt into an otherwise clear case. — American v. 
 Choate, 159 Fed. 140; 86 C. C. A. 330. 
 
 Apart from the presumption of novelty that always attends the grant 
 of a patent, the law is that where it is shown that a patented device has 
 gone into general use, and has superseded prior devices having the same 
 purpose, it is sufficient evidence of invention in a doubtful case. — Morton v. 
 Llewellyn, 164 Fed. 693; C. C. A. 
 
 Barbed Wire Pat. 143 U. S. 275; Keystone v. Adams, 151 U. S. 139; Irwin v. 
 Hasselman, 97 Fed. 964; Wilkins v. Webb, 89 Fed. 982; National v. Interchange- 
 able, 106 Fed. 693. 
 
 § 627. Evidence of — Extensive Use — When Not. 
 
 The fact that plaintiffs had been able to overcome a prejudice against 
 machine made articles, and established a trade is not in itself evidence of 
 invention. — Butler v. Steckel, 137 U. S. 21 ; 34 L. Ed. 582; 11 S. Ct. 25. 
 
 The application of the rule of evidence of novelty, the success and general 
 use of the invention, should be applied with caution to a limited class of cases. 
 — ConsoHdated v. Holtzer, 67 Fed. 907 ; 15 C. C. A. 63. 
 
 Olin V. Timkin, 155 U. S. 141; De Loriea v. Whitney, 63 Fed. 611. 
 
 We think the sudden and peculiar demand for some material of this kind 
 (fibre chamois) in the sheet form in which it was put upon the market in 
 1894 explains its great sale, rather than any marked improvement in its mode 
 of manufacture. — American v. Port Huron, 72 Fed. 516; 18 C. C. A. 670. 
 
 From aught that appears, it may have come from his superior construction, 
 or the other claims of the patent, and especially from the fact that he omitted 
 all adjusting devices. — Kenney v. Bent, 97 Fed. 337; 38 C. C. A. 205. 
 
 Public use, so far as any is shown, may have relation to other elements of 
 their device than those covered by Claim 1 ; and as it relates to a discrimi- 
 nate use rather than to use by manufacturers and other persons engaged in the 
 art, it can, in no event, be that kind of public use which the courts regard as 
 of especial value in patent suits. — Nutter v. Brown, 98 Fed. 892; 39 C. C. 
 A. 332. 
 
 DeLoriea v. Whitney, 63 Fed. 611; Mfg. Co. v. Holtzer, 67 Fed. 907; Bates 
 V. Keith, 84 Fed. 1014.
 
 §§ 628-629 INVENTION 567 
 
 Extensive use does not of itself conclusively establish either novelty or 
 utihty; but if, upon technical grounds, the matter is doubtful, it is per- 
 suasive evidence of those qualities, unless it appears that such commercial 
 success was due to other causes. — Dowagiac v. Superior, 115 Fed. 886; 
 53 C. C. A. 36. . 
 
 Gandy v. Belting Co. 143 U. S. 587; Lane v. Welds, 99 Fed. 286. 
 
 That the large demand for and use of a device, in and of itself without 
 other evidence of invention, is not evidence sufficient to sustain invention; 
 especially so when the demand may have arisen from other conditions, see 
 Burns v. Mills, 143 Fed. 325; 74 C. C. A. 525. 
 
 § 628. Evidence of — Obvious Demand. 
 
 It appears from the record that prior to the granting of the patent in 
 suit there had been manufactured by complainants what was known as the 
 four-section track scale, which might be varied in length from 24 to 22 feet; 
 that there was a large and growing demand for a longer scale; and, while the 
 complainants had one upon the market, it was not satisfactory, though, with 
 the aid of experts and skilled mechanics, they had been endeavoring to make 
 it so. Under these circumstances we are unable to conclude that the result 
 so long and unsuccessfully sought for was apparent, and did not need more 
 than mechanical skill to construct. — Standard v. Fairbanks, 125 Fed. 4; 
 60 C. C. A. 91. 
 
 He was satisfied that such a machine would meet with a market and he 
 constructed one. As soon as the want was apparent, he supplied that obvious 
 want by what confessedly amounted only to the ordinary skill of a mechanic. 
 — Fay V. Mason, 127 Fed. 325; 62 C. C. A. 159. 
 
 HoUister v. Benedict, 113 U. S. 59. 
 
 Note: The evidence showed that the inventor made extended inquiry 
 as to an existing demand for the machine. He found such demand general. 
 Extended inquiry among the several manufacturers of laundry rnachinery 
 showed that no one had in any way met the demand. Fay met it, and as 
 soon as he met it others began to infringe. This decision seems a perversion 
 of the rule. 
 
 § 629. Evidence of — Patent Prima Facie. 
 
 Letters patent are prima facie evidence of invention and of the regularity 
 of their issuance. — Railroad v. Stimpson, 14 Pet. 448; 10 L. Ed. 535. 
 
 The act of 1790 made the patent prima facie evidence of invention. The 
 act of 1793 repealed it. With the organization of the Patent Office under 
 the act of 1836 the prima facie was restored and has since remained. — Corn- 
 ing V. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 Letters patent, when introduced in evidence, are prima facie evidence of 
 invention. — Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433. 
 
 Curt. Pat. sec. 118; Pitts v. Hall, 2 Blatchf. 229; Cahoon v. Ring, 1 Cliff. 625. 
 
 Letters patent are prima facie evidence of invention, unless sufficient evi- 
 dence appears to overcome fhe presumption. — Mitchell v. Tilghman, 86 
 U. S. 287; 22 L. Ed. 125. 
 
 R. R. V. Stimpson, 14 Pet. 458; Curt. Pat. 4 ed. sec. 472.
 
 568 THE FIXED LAW OF PATENTS § 629 
 
 The action of the commissioner of patents in granting a patent is not con- 
 clusive either as to novelty, utility or prior use. — Reckendorfer v. Faber, 
 92 U. S. 347; 23 L. Ed. 719. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Stimpson v. Woodman, 10 Wall. 117; 
 Hailes v. Van Wormer, 20 Wall. 353; Rubber v. Howard, 20 Wall. 498; Smith v. 
 Nichols, 21 WaU. 115; Hicks v. Kelsey, 18 Wall. 670; Seymour v. Osborne, 11 
 WaU. 516. 
 
 The patent is prima facie evidence of the novelty of the invention. — Smith 
 V. Goodyear, 93 U. S. 486; 23 L. Ed. 952. 
 
 In a suit where no proof was adduced to prove want of novelty, the defense 
 relying upon an interference adjudication in their favor, Held: that in the 
 absence of any proof the decree will be affirmed. — Garratt v. Siebert, 98 
 U.S. 75; 25 L. Ed. 84. 
 
 Power to grant patents is conferred upon the commissioner; and when that 
 power has been duly exercised, it is, of itself, when introduced in evidence in 
 cases like the present, prima facie evidence that the patentee is the original 
 and first inventor of that which is therein described as his invention. Proof 
 may be introduced by the respondent to overcome the presumption but in 
 the absence of such proof, the prima facie presumption is sufficient to enable 
 the party instituting the suit to recover for the alleged violation of his rights. 
 ~ Bates V. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Blanchard v. Putnam, 8 Wall. 420; Seymour v. Osborne, 11 Wall. 538. 
 
 The letters patent are prima facie evidence of invention. — Parks v. 
 Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 Are prima facie evidence of their novelty and utility. — Lehnbeuter v. 
 Holthaus, 105 U. S. 94; 26 L. Ed. 939. 
 Whitney v. Mowry, 4 Fish. 207. 
 
 The patent issued by the Commissioner to the defendant as assignee is only 
 prima facie evidence that the assignor was the inventor of the improvement 
 patented. — Kennedy v. Hazelton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 
 202. 
 
 Patent prima facie evidence of. — Gandy v. Main, 143 U. S. 587; 36 L. Ed. 
 272; 12S. Ct. 598. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94. 
 
 There is no doubt that the letters patent are prima facie evidence that the 
 device was patentable. Still, we are always required, with this presumption 
 in mind, to examine the question of invention vel non upon its merits in each 
 particular case. — Palmer v. Corning, 156 U. S. 342; 39 L. Ed. 445; 15 S. Ct. 
 381. 
 
 When both applications were pending at the same time, and no interfer- 
 ence was declared, the issue of the subsequent patent is evidence that it was 
 distinguishable from the former patent. — Boyd v. Janesville, 158 U. S. 260; 
 39 L. Ed. 973; 15 S. Ct. 831. 
 
 American v. Elizabeth, 4 Fish. P. C. 189; Burns v. Meyer, 100 U. S. 671. 
 
 The patent was prima facie evidence of its own validity, and the burden of 
 proof was upon the defendant to establish its want of novelty. — Singer 
 V. Brill, 54 Fed. 380; 4 C. C. A. 374.
 
 § 629 INVENTION 569 
 
 Cantrell v. Wallick, 117 U. S. 690; Smith v. Goodyear, 93 U. S. 486; Lehn- 
 beuter v. Holthaus, 105 U. S. 94. 
 
 If a machine has not been constructed and put into practical use, it may- 
 be difficult to determine whether it ever can be ; but notwithstanding this, 
 the grant of the patent makes a prima, facie case in this particular, and the 
 court may not be able to find in the record proofs to overcome this presump- 
 tion. When such is the fact, and when, also, the device is of such a character, 
 or relates to such special and peculiar subject matter, that it does not conie 
 within the range of common experience or judicial knowledge, the prima facie 
 showing must stand. — Packard v. Lacing, 70 Fed. 66; 16 C. C. A. 639. 
 
 The presumption referred to is sometimes defined to mean that the patent 
 itself is prima facie evidence of novelty and of invention, but the presumption 
 is probably a mere rule of evidence, which casts the burden of proof upon 
 the alleged infringer. This presumption cannot usurp the province of the 
 court to declare what constitutes novelty. The court should give due con- 
 sideration to the action of the patent office, but should not permit that action 
 to control its deliberate judgment when it is manifest there is no invention. — 
 Warren v. Rosenblatt, 80 Fed. 540; 25 C. C. A. 625. 
 
 HoUister v. Mtg. Co. 113 U. S. 69. 
 
 The patent is prima facie evidence that the invention it protects was not 
 in public use or on sale for more than two years prior to the time of the 
 application on which it was based, and that it was not proved to be aban- 
 doned. On the other hand, the application for the patent within two years 
 after the invention was made, was presumptive evidence of an intention not 
 to dedicate it to the public, and the issue of the patent was prima facie proof 
 that it had not been abandoned. — Mast v. Dempster, 82 Fed. 327; 27 
 C. C. A. 191. But see 177 U. S. 485. 
 
 The line of demarkation between invention and mechanical skill is not well 
 defined, and is often, especially in this age of improvement, difficult to follow. 
 In case of doubt the law has wisely required the consideration of certain facts 
 outside the question of invention or mechanical skill to resolve the doubt. 
 The patent itself is, in a restricted sense, prima facie evidence of novelty and 
 invention. — Streator t;. Wire-glass, 97 Fed. 950; 38 C. C. A. 573. 
 
 Warren v. Rosenblatt, 80 Fed. 540. 
 
 A patent carries with it the presumption of novelty, and the trained experts 
 of the patent office have decided that what was done arose to the dignity of 
 an invention. — Beer v. Walbridge, 100 Fed. 465; 40 C. C. A. 496. 
 
 The patent itself is prima facie evidence of the novelty of his combination, 
 and if that issue was doubtful this presumption would entitle it to a con- 
 struction which would sustain, in preference to one which would destroy, 
 the grant it evidences. — National v. Interchangeable, 106 Fed. 693; 45 
 C. C. A. 544. 
 
 That while the letters patent are evidence prima facie of invention the 
 presumption is cancelled by the fact that the patentee signed as a witness 
 the prior application of another for the same invention, see Barr v. Chicago, 
 110 Fed. 972; 49 C. C. A. 194. 
 
 There is in every case a prima facie presumption in favor of the validity 
 of every patent issued by the Patent Office. Due heed and consideration 
 must always be given by the court or jury to this presumption, but the real
 
 570 THE FIXED LAW OF PATENTS § 630 
 
 question in all cases is whether or not the evidence in the case is or is not suffi- 
 cient to overcome the prima facie presumption which the patent affords. — 
 Los Angeles v. ^olian, 143 Fed. 880; 75 C. C. A. 88. 
 
 Hays V. Sulsor, 1 Fish. P. C. 532; Corning v. Burden, 15 How. 252; Recken- 
 dorfer v Faber, 92 U. S. 347; Bates v. Coe, 98 U. S. 31; Lehnbeuter v. Holthaus, 
 105 U. S. 94; Miller v. Eagle, 151 U. S. 186; Boyd v. Janesville, 158 U. S. 260; 
 Ransome v. Hyatt, 69 Fed. 148; Wilgus'r. Germain, 72 Fed. 773. 
 
 The grant of a patent is presumptive evidence that the patentee is entitled 
 to the monopoly fairly covered by his claims. He who asserts to the contrary 
 must prove his assertions. — American v. DeGrasse, 157 Fed. 660; 87 C. 
 C. A. 260. 
 
 The presumption that he believed himself to be the inventor of the pave- 
 ment for which he was given a patent must be our starting point in deter- 
 mining whether his patent is defeated by anticipation. That somebody had, 
 in fact, made the same composition before he did does not necessarily 
 defeat his patent. In one sense he would not be the first inventor in such case. 
 But in the sense of the patent statute, he is the first inventor who, by his own 
 thought, makes an article or material and first perfects and adapts his dis- 
 covery to actual use, although someone may have previously made a similar 
 article without putting it to practical use or given his discovery to the public 
 in any way. — Warren v. City, 166 Fed. 309; C. C. A. 
 
 Gayler v. Wilder, 10 How. 477; Seymour v. Osborne, 11 Wall. 517; Albright v. 
 Celluloid, Fed. Cas. 147; Bullock v. Jones, Fed. Cas. 2132; Agawam v. Jordan, 
 7 Wall. 583; Whiteley v. Swayne, 7 Wall. 685; Deering v. Winona, 155 U. S. 
 286; Corn Planter Pat. 23 Wall. 181; Smith v. Goodyear, 93 U. S. 486; Game- 
 well V. Municipal, 61 Fed. 948. 
 
 § 630. Evidence of — Patent Office Action. 
 
 It is significant that the application was some four years in being allowed, 
 that it was three times rejected, and that it was finally allowed by an 
 examiner who had not previously dealt with the application. — Richmond 
 V. Atwood, 48 Fed. 910; 1 C. C. A. 144. 
 
 The action of the patent office, taken in connection with other matters, is 
 evidence of novelty. — Davis v. Parkman, 71 Fed. 961 ; 18 C. C. A. 398. 
 Watson V. Stevens, 51 Fed. 757. 
 
 In view of the fact that the examiners-in-chief seem not to have had the 
 remotest conception of what the specifications showed, or of what Fulton 
 claimed, the presumption in this case of patentability arising from the allow- 
 ance of the application by the patent office is of no practical value. — 
 Rogers v. Fitch, 81 Fed. 959; 27 C. C. A. 23. 
 
 The record shows that the complainant's application was seven times 
 rejected on references to prior patents, and was finally granted on an amend- 
 ment to the claim, with expressed reluctance. — Smidth v. Bonneville, 114 
 Fed. 262; 52 C. C. A. 148. 
 
 The officials of the Patent Office, with the prior art before them so found, 
 and granted a patent. This action on their part creates a presumption of 
 patentable novelty, which presumption can be overcome only by clear proof 
 that they were mistaken, and that the combination lacks patentable novelty. 
 — Fairbanks v. Stickney, 123 Fed. 79; 59 C. C. A. 209. 
 
 Cantrell v. Wallick, 117 U. S. 689; Coffin v. Ogden, 18 Wall. 120; Streator v. 
 Wire, 97 Fed. 950; Fraim v. Keen, 25 Fed. 820; Osborne v. Glazier, 31 Fed. 402.
 
 § 631 INVENTION 571 
 
 There is the presumption arising from the granting of the patent, which, 
 in this case, was issued, as the proceedings in the Patent Office show, after 
 full and critical examination, and this after rejections and references to 
 previous patents of a character very similar to those we have in the present 
 record — indeed some of them are the same. — Cauda v. Michigan, 124 Fed. 
 486; 61 C. C. A. 194. 
 
 We do not agree with the contention that the fact that the file wrapper 
 discloses the patent to have been granted as first applied for, without any 
 references, adds any force to the presumption of novelty. On the contrary, 
 we think the force of that presumption is much diminished, if not destroyed, 
 by the lack of any reference by the examiner to, or consideration of, the 
 " Clark " patents. — American v. Sample, 130 Fed. 145; 64 C. C. A. 497. 
 
 If the patent relates to something of temporary interest, and the object 
 sought is of little importance, and offers but slight chance of profitable use, 
 it may receive but little attention in the Patent Office, and the presumption 
 therefore is slight ; but where the problem sought to be solved by the patent is 
 of such importance that the solution of it promises great pecuniary returns, 
 and the testimony shows that all the claims of the patent were subject to 
 critical analysis by trained experts in that office, resulting in amendments and 
 disclaimers designed to distinguish it from everything in the prior art, and the 
 subject appears to have been thoroughly threshed out, the presumption in 
 favor of novelty is greater than in those cases where the patent may have 
 passed by inadvertence. — Imperial v. Crown, 139 Fed. 312; 71 C. C. A. 442. 
 
 Note: The first part of this holding (Brawley, J.) will hardly square with 
 the experience of those who have done patent soliciting. To say that the 
 thoroughness with which the examiners examine an application varies with 
 the importance of the invention from a commercial point of view is wide of 
 the mark. 
 
 Although it is true that the patentee encountered great difficulty in the 
 Patent Office, his claims being rejected over and over again, yet we are 
 unable to see that the proceedings there require a construction of the claim 
 which will enable the defendant to escape the charge of infringement. — 
 Good Form v. White, 160 Fed. 661. 
 
 § 631. Evidence of — Prior Failures. 
 
 The very fact that the attempt which had been made to secure uniformity 
 of product seems to have been abandoned after the Jones invention came into 
 popular notice is strong evidence tending to show that the patent contains 
 something which was of great value to manufacturers of steel, and which 
 entitled Jones to the reward due to a successful inventor. — Carnegie v. 
 Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 The probative force of this fact (that the evil which the complainant's 
 invention remedied had been apparent for years), added to the presumption 
 arising from the letters patent, satisfies us of the novelty and patentability 
 of the invention. If the display of the expected skill of the calling or the 
 exercise of the ordinary faculties of reasoning had been sufficient to discover 
 and put in practice this improvement, some bookkeeper would have dis- 
 played that skill or exercised those faculties, and thus obtained this result 
 long ago. These were not sufficient. It required something more to attain 
 this result ; it required the exercise of " that intuitive faculty of the mind, put 
 forth in the search for new results or new methods, which creates what had 
 not before existed, or brings to light what lies hidden. " This faculty the com- 
 plainant exercised, and the result is this invention, — an invention, it is
 
 572 THE FIXED LAW OF PATENTS § 631 
 
 true, that now seems so simple that we marvel that it did not before occur to 
 every bookkeeper. — Thomson v. Citizens Nat. Bk., 53 Fed. 250; 3 C. C. 
 A. 518. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Consolidated v. Crosby, 113 U. S. 157; 
 Magowan v. Packing Co., 141 U. S. 332; Barbed Wire Pat., 143 U. S. 275. 
 
 Distinguishing Hollister v. Mfg. Co., 113 U. S. 59. 
 
 Various expedients for switching with such conductors have been resorted 
 to by experts in the art. The fact that they overlooked devices like the 
 patented device, and resorted to clumsy and inconvenient means, cannot be 
 ignored. It was not a great invention,but that it was an invention requiring a 
 degree of ingenuity somewhat beyond the ordinary skill of the calling we are 
 unable to doubt. — Thomson-Houston v. Elmira, 71 Fed. 396; 18 C. C. A. 145. 
 
 Inventors of known repute and genius who have studied the subject, and 
 who greatly desired to promote incandescent lighting, failed, and the patentee 
 succeeded because he adopted the means which apparently had not occurred 
 to them. — Maitland v. Goetz, 86 Fed. 124; 29 C. C. A. 607. 
 
 The fact that his combination had not suggested itself to any mechanic 
 skilled in the art during 12 years of diligent search and effort for improvement ; 
 the facility and rapidity with which it took the place of old devices and 
 went into immediate and extensive use as soon as it was disclosed, — all 
 these facts converge upon the mind with compelling force to prove that the 
 compelling and striking improvement he made was the production, not of the 
 skill of the mechanic, but of the intuitive genius of the inventor. — National 
 V. Interchangeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Thomson v. Bank, 53 Fed. 250; Griswold v. Harker, 62 Fed. 389; Loom Co. 
 V. Higgins, 105 U. S. 580; Consolidated v. Crosby, 113 U. S. 157; Magowan v. 
 Packing Co., 141 U. S. 332; In re Barbed Wire Patent, 143 U. S. 275. 
 
 It is a novel contention that admitted failures during the preliminary 
 stage of experiments should be adduced as evidence of want of utility in the 
 perfected invention. — Crown v. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 It aided to make a successful machine ; and the fact that Cushman failed 
 to accomplish that result notwithstanding his ingenuity, weighs strongly in 
 favor of the patentability of complainant's box form, simple as it is. — 
 Hobbs V. Gooding, 111 Fed. 403; 49 C. C. A. 414. 
 
 Watson V. Stevens, 51 Fed. 757. 
 
 It is a fact entitled to serious consideration in determining whether 
 Anderson's improvement was so obvious as to be one which would occur to 
 a mechanic skilled in the art that Van Depeole, with his conceded skill, did 
 not attain the desired end. His change seems simple enough now, but it was 
 the first to combine comprehension of the problem to be solved with practical 
 arrangement of parts for its solution. This entitles his advance to the merit 
 of invention. — Star v. General, 111 Fed. 398; 49 C. C. A. 409. 
 
 The fact that, in such circumstances, no one accomplished it, is cogent 
 evidence that the later inventions of Tesla were beyond the compass of the 
 ordinary skill of the profession and beyond the line which divides the products 
 of such skill from invention. — Dayton v. Westinghouse, 118 Fed. 562; 55 
 C. C. A. 390. 
 
 Dowagiac v. Superior, 115 Fed. 886.
 
 § 631 INVENTION 573 
 
 It is shown, however, that not only the skilled workmen, but those who 
 were giving this art special study and exploring for improvements in rotary 
 disk plows for several years, had not perceived this one, although the need 
 of it was always pressing. This is no new suggestion, but it has no special 
 relevancy when a series of improvements has culminated in one which con- 
 tributes so decisively to the utility of a machine which others have been long 
 trying to make operative. — Sanders v. Hancock, 128 Fed. 424; 63 C. C, A. 
 166. 
 
 We have been unable to find in the prior art any single device, or any 
 sufficiently definite suggestions derivable from the various devices, which 
 sustain the contention of defendants that the patented improvement is 
 merely the result of mechanical skill. The reasons for the conclusion that the 
 patented device involved invention sufficiently appear from a comparison of 
 its construction, adapted to attain the objects stated in the specification and 
 the practical results thereby secured, with the impracticality or insufficiency 
 of the devices of the prior art. The failure of defendants to avail themselves 
 of said earher devices or improve them, and their bodily appropriation of the 
 patented construction, is most persuasive upon the question of invention. — 
 Generals. Wagner, 130 Fed. 772; 66 C. C. A. 82. 
 
 The fact of discovery is often ascertained by results, and while it may be 
 difficult to put our finger upon any precise thing in Painter's device, and say 
 that Fainter invented that, we find in the results a substantial addition to our 
 stock of knowledge — a mode of application of simple forces embodied in an 
 instrumentality so simple that our wonder is that it was not done before. Its 
 very simplicity tends to raise a doubt whether the inventive faculty was 
 needed to produce the results which seem so obvious that we are prone to 
 think that any mechanic starting where Painter did, and with the knowledge 
 of previous inventions which he had, could by mere mechanical skill accom- 
 plish what he did. The fact that no mechanic did accomplish it, although 
 many inventors were eagerly trying to do so, and the world was eagerly await- 
 ing a simple and cheap bottle-stopper device, if not conclusive proof, is very 
 persuasive evidence, that something more than mechanical skill was required; 
 that it demanded inventive genius or faculty to bridge the chasm which 
 separated the bungling, imperfect, inoperative devices of previous inventors, 
 and the simple, economical, and, for its purpose, perfect device which Painter 
 gave to the world. If the subject-matter was of httle importance and of 
 merely transient interest, we might say that mechanical skill did not accom- 
 plish it, because it did not make the effort ; but if it was a matter of enduring 
 importance, and promised great profit if the problem was successfully solved, 
 it is safe to assume that there was great likelihood of some mechanic applying 
 his skill, if success could have been readily achieved by merely mechanical 
 means. — Imperial v. Crown, 139 Fed. 312; 71 C. C. A. 442. 
 
 Crown V. Aluminum, 108 Fed. 863; Farmers' v. Spruks, 127 Fed. 691. 
 
 Twelve earlier patents are shown in the record, none responds in any way to 
 the claims in suit. If, after the inventor had proven the advantages of his 
 impiovement, the skilled mechanic might reasonably have been expected to 
 produce the device in suit by combining the teachings of the prior patentees, 
 it is remarkable that the seven patentees during the succeeding 15 years 
 should have reverted to the old type. — Mahony v. Malcom, 143 Fed. 124; 
 74 C. C. A. 318. 
 
 That the construction of a machine capable of producing such a fabric was 
 not obvious appears from the 31 prior patents introduced by defendants, no 
 one of which showed a solution of the problem, and from the inability of
 
 574 THE FIXED LAW OF PATENTS § 631 
 
 defendants' experts to construct from the prior art any practical device or to 
 satisfactorily indicate how the prior structures could be so adapted without 
 radical and substantial modifications, involving the exercise of invention. — 
 Scott V. Fisher, 145 Fed. 915; 76 C. C. A. 447. 
 
 The fact that some manufacturers did not know how to do it, and that 
 successful results might not always have been obtained, even when the 
 formulas were followed, does not prove that it could not be done. — National 
 V. New England, 151 Fed. 19; 80 C. C. A. 485. 
 
 Indeed its inventive character is evidenced by the alleged anticipatory 
 uses in the respondent's works. The combined use of a pneumatic hammer 
 with a sieve was some years before there tried and abandoned. The evidence 
 of exact practice is not such as to establish an anticipatory use, for it is con- 
 tradictory as to how the hammer was applied, but the highly significant fact 
 is that, even with the thought of a possible combination of pneumatic ham- 
 mer and sieve suggested to men skilled in that art, they were not able to 
 mechanically place the two in successful operative relation. But Arrott did 
 just what they failed to do. He contributed to an important industry a 
 device, labor-saving, effective, and which, in relieving to a degree labor 
 under fierce heat conditions, rose to the plane of the humane. And it was 
 these results which the respondent failed to secure that made Arrott's work 
 invention, and theirs a fruitless and abandoned experiment. — Mott v. 
 Standard, 159 Fed. 135; 86 C. C. A. 325. 
 
 That these defects were appreciated, and that an earnest effort was made 
 to remedy them for more than ten years prior to the patent, is shown by the 
 record. Though belonging to a limited field and dealing with subordinate 
 improvements, we are of the opinion that the features added by Davies pro- 
 duced an advance in the art which required a higher grade of ability than can 
 be attributed to the skill of the calling. — Good Form v. White, 160 Fed. 
 661. 
 
 Frost V. Cohn, 119 Fed. 505; Young v. Wolfe, 120 Fed. 956; Parramore v. 
 Taylor, 114 Fed. 97. 
 
 It is always hazardous to assert the obviousness of a device which no one, 
 with the whole art before him, up to that time has conceived. Nor were the 
 benefits of the patented structure to be reasoned out, unaided. To deny to 
 its successful solution the merit of invention upon the contrary idea is to 
 declare that these efforts were needless, and that there was already disclosed 
 in the art an easy and obvious way out, which ought to have been, but 
 somehow was not, seen. — Edison v. Novelty, 167 Fed. 977 ; C. C. A. 
 
 In an art so highly advanced as the pump art, where all the elements 
 which enter into the construction may be said to be old, it is impossible, 
 in many cases, as an abstract proposition, to draw the line between invention 
 and the skill of the designer. There is, however, strong evidence of invention, 
 where we have presented the circumstances such as exist with respect to 
 the patents in suit, namely, a demand for a more efficient pump, the failure 
 of previous efforts to meet the demand, the immediate success of the patented 
 device, and its great utility. Again, it may be said that these patents belong 
 to the class which the patent law was designed to protect, inasmuch as they 
 cover a device which is new and useful, and which immediately met a public 
 want. — Warren v. Blake, 163 Fed. 263; C. C. A.
 
 §§ 632-633 INVENTION 575 
 
 § 632. Evidence of — Simplicity. 
 
 The greater simplicity of the Boyden patent certainly entitled it to a 
 favorable consideration. — Westinghouse v. Boyden, 170 U. S. 537; 42 L. 
 Ed. 1136; 18 S. Ct. 707. 
 
 It is easy after the event to see how simple an act turned failure into suc- 
 cess; but prior to the time of Shuman no mechanical skill had solved the 
 problem, and, if we may credit the testimony of this record, those engaged in 
 the art were diligently at work to accomplish that which only Shuman 
 effected. He has given to the world a new, useful, and valuable product. He 
 succeeded where others failed. — Streator v. Wire Glass, 97 Fed. 950; 38 
 C. C. A. 573. 
 
 Barbed Wire Patent, 143 U. S. 275. 
 
 The fact that a new combination or device may be simple and obvious to 
 the ordinary understanding, when once produced in concrete form, is not 
 necessarily proof that invention was not involved. This is almost common- 
 place in the jurisprudence of the patent law. It is also true that admitted 
 benefits resulting from the combination or device, and widely extended 
 adoption, are facts relevant to the novelty and usefulness of the alleged 
 invention. — Buchanan v. Perkins, 135 Fed. 90; 67 C. C. A. 564. 
 
 It may be conceded that the device is on the border line between invention 
 and mechanical skill. But, because of its simplicity, efficiency and cheapness 
 and the persistency with which the defendant insists upon using it, we are 
 inclined to resolve the doubt in favor of the patent. — Yawman v. Vetter, 
 159 Fed. 443; 86 C. C. A. 473. 
 
 § 633. Evidence of — Turning Failure into Success. 
 
 It is true that many valuable inventions seem simple when accomplished, 
 and yet are entitled to protection. The books abound in cases showing 
 inventions involving only small departure from former means, yet making 
 the difference between a defective mechanism and a practical method of 
 accomplishing results. In such cases a decision in favor of invention as dis- 
 tinguished from mere mechanical improvement has not infrequently resulted, 
 in view of the fact that the device has made the difference between an im- 
 practicable machine and a useful improvement displacing others theretofore 
 occupying the field. — Computing v. Automatic, 204 U. S. 609; 51 L. Ed. 
 645; 27 S. Ct. 307. 
 
 Krementz v. Cottle, 148 U. S. 556; Consolidated v. Detroit, 47 Fed. 894; Star 
 V. General, 111 Fed. 398. 
 
 The first to make such an improvement is not in fact an inventor, and to 
 infer invention merely because it had not been produced sooner, would be to 
 reach a false conclusion by an argument neither persuasive nor plausible. — 
 Stover V. Mast, 89 Fed. 333; 32 C. C. A. 231. 
 
 Parlin v. Moline, 89 Fed. 329. 
 
 Note: This is a ruling by Judge Woods, which though entirely proper when 
 taken with the facts in the case, is not capable of application as a general 
 rule. 
 
 If it be conceded that all prior machines were failures; that the machine 
 of the patent was the first practical and commercially successful one ; that it 
 was accepted by the art, and has since monopolized the field — nevertheless 
 such evidence is not helpful to the solution of the question presented on these 
 two claims. There is nothing to show that this minor improvement in one
 
 576 THE FIXED LAW OF PATENTS § 634 
 
 part of the machine contributed at all to any such far-reaching results. — 
 Doig V. Morgan, 122 Fed. 460; 59 C. C. A. 616. 
 
 "When it appears that the improvement, slight though it was, led from 
 failure to success; that, though failure was appreciated and success sought 
 for by skilled mechanics, no one before the patentee hit on this way to secure 
 it; and that, when the improvement was made, it was generally accepted 
 and the patent for it respected by those practising the art _ — courts are con- 
 strained to hold that the simple device is a patentable invention. — Doig 
 V. Morgan, 122 Fed. 460; 59 C. C. A. 616. 
 
 Schenck v. Singer, 77 Fed. 841; Brunswick v. Thum, 111 Fed. 904. 
 
 Chambers succeeded. Eastman failed. The one produced a lamp having 
 both these characteristics. The other a lamp having but one. Instead of 
 anticipating or seriously limiting the scope of the patent, Eastman offers mute 
 but persuasive tribute to Chambers' skill and ingenuity. — Eldred v. Kirk- 
 land, 130 Fed. 342; 64 C. C. A. 588. 
 
 § 634. Evidence of — Use by Defendant. 
 
 If the infringer claims to have known of the combination and to have 
 perfected it, why did he not put it into general use, and why did he not 
 apply for a patent upon it? He was already a patentee of a different and 
 inferior apparatus. He knew all about the method of going about to get a 
 patent. He belonged to a profession which is generally alive to the advan- 
 tages of a patent right. On the hypothesis of his being the real inventor his 
 conduct is inexpUcable. — Loom Co. v. Higgins, 105 U. S. 580; 26 L. Ed. 
 1177. 
 
 Where defendant took out a patent after commencement of suit claiming 
 the main element of the patent in suit to a new use, and upon hearing stipu- 
 lated that a decree for a certain royalty might be entered against him, is 
 estopped to deny the utility of the device in suit. — Western v. La Rue, 
 139 U. S. 601; 35 L. Ed. 295; 1 S. Ct. 670. 
 
 Walker on Pat. sec. 85; Lehnbeuter v. Holthaus, 105 U. S. 94; Morgan v. 
 Seaward, 1 Web. P. C. 170. 
 
 Use by a defendant of the patented process or article is evidence, at least 
 against that defendant, of utility. — Gandy v. Main, 143 U. S. 587 ; 36 L. 
 Ed. 272; 12 S. Ct. 598. 
 
 For the reasons stated we cannot doubt the validity of the patent. The 
 defendants did not doubt it, but admitted it, by the purchase and sale of 
 umbrellas under the patent, until dissatisfaction and dispute arose respecting 
 the prices they should pay. The admission is not, of course, an estoppel; 
 but in view of the defendants' presumed familiarity with the art, such an 
 expression of judgement is evidence, and worthy probably of as much weight 
 as that now expressed by their experts. — Rose v. Hirsch, 77 Fed. 469 ; 23 
 C. C. A. 246. 
 
 While the invention displayed is of a low order, it is sufficient to support 
 the patent. The device though simple, was new in the art, and was cheap, 
 convenient, and supplied a want distinctly felt. Manufacturers of matches 
 immediately recognized its usefulness, and sought the privilege of making it. 
 The defendants were among the first to do so, and seemed to have enter- 
 tained no doubt respecting the validity of the patent, until their efforts to 
 obtain such privilege on their own terms had failed. The defendants may well 
 be regarded as experts in the art, and their conduct was an unbiased and
 
 § 634 INVENTION 577 
 
 emphatic expression of judgement in favor of the patent; their present 
 expression and that of their experts are probably entitled to less weight. — 
 Schenck v. Diamond, 77 Fed. 208; 23 C. C. A. 122. 
 
 It is improbable that men will render themselves liable to actions for 
 infringement unless infringement be useful. And the fact that a patent has 
 been infringed by a defendant is, as against such infringer, sufficient to 
 establish its utility. — Goss v. Scott, 108 Fed. 253; 47 C. C. A. 302. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 96; Vance v. Campbell, Fed. Cas. 16,837. 
 
 No doubt is expressed of its utility. The defendants are engaged in the 
 business of manufacturing and selling something very similar to it, and this 
 must be accepted as verv cogent evidence for the purposes of this case. — 
 Lamb v. Lamb, 120 Fed^ 267; 56 C. C. A. 247. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Gandy v. Belting, 143 U. S. 587; Gibbs 
 V. Hoefner, 19 Fed. 323; La Rue v. Electric, 31 Fed. 82; SejTnour v. Osborne, 
 11 Wall. 516. 
 
 The defendant furnishes strong e\ndence of its utility by persistent adop- 
 tion of the means for like purpose. — Austin v. American, 121 Fed. 76 ; 57 
 C. C. A. 330. 
 
 And having regard to the presumption of validity arising from the grant, 
 the success which it has attained, the nonexistence of any anticipation, and 
 the adoption of it by the defendant in his business, with express notice of the 
 patent, and with a view to profit by it, we think we should hold the com- 
 bination of claim 2 to be vaUd. — Sanders v. Hancock, 128 Fed. 424; 63 
 C. C. A. 166. 
 
 Lamb v. Lamb, 120 Fed. 267; Lehnbeuter v. Holthaus, 105 U. S. 94; Kre- 
 mentz v. Cottle, 148 U. S. 556; Streator v. Wire, 97 Fed. 950. 
 
 The proof also shows that it met with considerable public favor, and what 
 is persuasive evidence of its advantages over those of the constructions the 
 defendant advances as anticipations, the latter appropriates Milner's pro- 
 duction as the foundation of his own business, and has therewith been 
 successful. — Milner v. Yesbera, 133 Fed. 916; 67 C. C. A. 210. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Gandy v. Belting, 143 U. S. 587; Lamb 
 V. Lamb, 120 Fed. 267. 
 
 At the time he obtained this patent (the defendant and his patent m 
 infringement of the patent in suit) he had been engaged for over 25 years in 
 the manufacture and sale of rolling metallic shutters, and it was open to him 
 to adopt the joint of the prior art. His adoption of the joint of the^patent in 
 suit is quite persuasive evidence of its merit. That the changes of form were 
 not an obvious thing, but involved invention, is shown by the fact that for a 
 period of 40 years since the earlier inventions in metallic shutters iio one 
 seems to have conceived of the practicability of the improvement. — Kinnear 
 V. Wilson, 142 Fed. 970; 74 C. C. A. 232. 
 
 It is difficult to imagine an instance where a patent should be defeated on 
 the ground of want of utility at the instigation of one who is himself per- 
 sistentlv using the verv^ thing which he denounces as useless. — Hillard v. 
 Fisher, "159 Fed. 439; 86 C. C. A. 469. 
 
 We have not only the persistency of the respondent corporation in availing 
 itself of the complainant's improvement, but also a mass of alleged antici- 
 patory patents introduced by it, both of which indicate the desirability of
 
 578 THE FIXED LAW OF PATENTS § 635 
 
 something better than the prior art. — Draper v. American, 161 Fed. 728; 
 8S C. C. A. 588. 
 
 § 635. Evidence of — Utility — When Evidence. 
 
 As a matter of law, in the absence of evidence, the court cannot pass upon 
 the efficiency of the device in suit. — Eddy v. Dennis, 95 U. S. 560; 24 L. Ed. 
 363. 
 
 It may be laid down as a general rule, though perhaps not an invariable 
 one, that if a new combination and arrangement of known elements produce 
 a new and beneficial result, never attained before, it is evidence of invention. 
 
 — Loom Co. V. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 We think from the evidence, that the modifications were new and useful, 
 and sufficient in character to sustain a patent. The burner in the form 
 patented by Barker appears to have superseded the burner in the form 
 patented by Clough, and, after Barker had introduced his burner into use, 
 Clough commenced making for market burners in the same form. — Clough 
 V. Gilbert, 106 U. S. 178; 27 L. Ed. 138; 1 S. Ct. 198. 
 
 Richardson's invention brought to success what prior inventors had essayed 
 and partly accomplished. He used some things which had been used before, 
 but he added just that which was necessary to make the whole a practically 
 valuable and economic apparatus. The facts that the known valves were not 
 used, and the speedy and extensive adoption of Richardson's valve, are facts 
 in harmony with the evidence that his valve contains just what the prior 
 valves lacked, and go to support the conclusion at which we have arrived on 
 the question of novelty. When the ideas necessary to success are made 
 known, and a structure embodying these ideas is given to the world, it is easy 
 for the skillful mechanic to vary the form by mechanism which is equivalent, 
 and is, therefore, in a case of this kind an infringement. — • Consolidated v. 
 Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 513. 
 
 Where the question before the court was upon the patentable character, 
 rather than the novelty, of the device, the court did not err in refusing to 
 instruct that the extensive use of the device was evidence of patentability. 
 
 — Adams v. Bellaire, 141 U. S. 539 ; 35 L. Ed. 849 ; 12 S. Ct. 66. 
 
 Utility is only evidence, not proof or even conclusive evidence of novelty. 
 
 — McClain v. Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76. 
 
 Criteria by which the one may be distinguished from the other in McClain 
 V. Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76. 
 
 Where the progress in allied arts is such as to render an old and well 
 known process of utility, where the utility of the process is referable to the 
 improvement in the subject matter to which it is applied, general use is not 
 evidence of invention. — Lovell v. Cary, 147 U. S. 623; 37 L. Ed. 307; 13 
 S. Ct. 472. 
 
 McClain v. Ortmayer, 141 U. S. 419. 
 
 Utility as an element of invention may be considered. Discriminating 
 and limiting Gorham v. White, 81 U. S. 511 (design case). — Smith v. Whit- 
 man, 148 U. S. 674; 37 L. Ed. 606; 13 S. Ct. 768. 
 
 Lchnbeuter v. Holthaus, 105 U. S. 94; Northrup v. Adams, 2 B. & A. 567; 
 Foster v. Crossin, 44 Fed. 62; Jennings v. Keble, 10 Fed. 669; Ripley v. Elson, 
 49 Fed. 927.
 
 § 635 INVENTION 579 
 
 Large capacity of device is persuasive but by no means conclusive proof 
 of invention. — National v. Hedden, 148 U. S. 482; 37 L. Ed. 529; 13 S. 
 Ct. 680. 
 
 While the patented article may have been popular and met with large 
 sales, that fact is not important when the alleged invention is without 
 patentable novelty. — Olin v. Timken, 155 U. S. 141; 39 L. Ed. 100; 15 
 S. Ct. 49. 
 
 Duer V. Corbin, 149 U. S. 216. 
 
 In passing upon the question of novelty we feel at liberty to consider 
 the fact that the Beach machine and its congeners have completely sup- 
 planted the former method; that no manufacturer can successfully compete 
 for the trade without adopting such machine; the work is done stronger and 
 cheaper, cleaner and more unifomi ; there is also a saving of material. — 
 Hobbs V. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 409. 
 
 We conclude, therefore, that in applying to cases of doubt the primary 
 rules touching what constitutes invention, and the secondary rules touching 
 what is a " new and useful result," a " new function," or a " new sphere of 
 action," we may be influenced by the facts that the improvement in question, 
 although desired for years, was not secured until brought out by the patentee; 
 that the product of the improved machine or process went into general use 
 by the manufacturer for whom it was intended, and displaced wholly or in a 
 very large degree prior products; and that, while prior products had been 
 unsuitable, either through lack of cheapness or adaptation, the new product 
 answered all reasonable requirements. — Watson v. Stevens, 51 Fed. 757; 
 2 C. C. A. 500. 
 
 Topliff V. Topliff. 145 U. S. 156; Adams v. Stamping Co., 141 U. S. 539; Wes- 
 tern V. La Rue, 139 U. S. 601; Ansonia v. Electric, 144 U. S. 11; Locomotive 
 Truck Case, 110 U. S. 490; McCIain v. Ortmayer, 141 U. S. 419; Loom Co. v. 
 Higgins, 105 U. S. 580; Barbed Wire Patent, 143 U. S. 275; Magowan v. Belting 
 Co., 141 U. S. 332; Gandy v. Belting Co. 143 U. S. 587. 
 
 The fact that the Edison lamp was capable of use by the public, while all 
 prior lamps had failed in practical use is evidence of invention and novelty. 
 — Edison v. U. S. 52 Fed. 300; 3 C. C. A. 83. 
 
 There was evidence that the plaintiffs' machine was used to a very con- 
 siderable extent by manufacturers; that the plaintiff sold numerous shop 
 rights for its use ; and that he manufactured and sold a number of his wheels 
 with their adjustable bearings. There were witnesses who testified to the 
 novelty and utility of his invention. There is testimony that the wheels in 
 use prior to his invention were unsatisfactory; that they were difficult to 
 operate and were noisy in operation; and that a considerable amount of 
 attention was bestowed upon the question of their improvement during a 
 period of several years antedating his patent. All these facts may be taken 
 into consideration in a doubtful case. — Singer Mfg. Co. v. Brill, 54 Fed. 380; 
 4 C. C. A. 374. 
 
 Topliff V. Topliff, 145 U. S. 164; Loom Co. v. Higgins, 105 IT. S. 591; Smith 
 V. Goodyear, 93 U. S. 495. 
 
 The plaintiff's machine, here involved, was devised with special reference 
 to paring peaches, and it proved that it was the first machine that suc- 
 cessfully did the work. Before it was put upon the market, peaches were 
 pared by hand. Its undoubted utility was quickly perceived by the trade 
 and immediately it went into extensive public use. This last mentioned
 
 5S0 THE FIXED LAW OF PATENTS § 635 
 
 fact, of itself, it is well settled, is evidence of patentable novelty, and in a 
 doubtful case will turn the scale in favor of the patentee. — Sayre v. Scott, 
 55 Fed. 971 ; 5 C. C. A. 366. 
 
 Smith V Vulcanite Co. 93 U. S. 486; Magowan v. Belting Co. 141 U. S. 332; 
 Topliff V Topliff, 145 U. S. 156; Loom Co. v. Higgins, 105 U. S. 580; Consoli- 
 dated V Crosby, 113 U. S. 157; Barbed Wire Patent, 143 U. S. 275; Gandy v. 
 Belting Co. 143 U. S. 587. 
 
 The machine with this improvement was accepted as perfected, and went 
 into extensive general use. It was the first that was ever so accepted and 
 used, and no machine without it has ever been commercially used since that 
 time'. We are of the opinion that the discovery by these patentees of the 
 proper means for remedying the fatal defect which existed in all prior 
 machines of this character, simple as the device was, amounted to something 
 more than the exercise of merely ordinary mechanical skill, and reached a 
 higher dominion of invention. The simplicity of the device, and its apparent 
 obviousness after the event, ought not to detract from its meritoriousness. 
 That it had never been suggested or thought of before, and effectually sup- 
 plied the one thing necessary to bring success, when before there had been 
 nothing but failure, is sufficient to entitle it to rank as a new and useful 
 improvement in the mechanical arts within the meaning of the patent law. — 
 M'Kay v. Dizer, 61 Fed. 102; 9 C. C. A. 382. 
 
 In determining the question of invention utility plays an important part. 
 It is not, however, conclusive. Combined with the presumption arising from 
 the grant of letters it is sufficient to sustain a patent in the absence of evi- 
 dence disproving invention. — Ritchie v. Obdyke, 65 Fed. 224; 12 C. C. A. 
 583. 
 
 The evidence leaves no doubt that it did the work it was desired to do. 
 Subsequent improvements made it do that work better, but that is immaterial 
 when it has been shown, as it has been here, that machines made in strict 
 conformity to the patent have been used by manufacturers for years in doing 
 this very work. — Inman v. Beach, 71 Fed. 420; 18 C. C. A. 165. 
 
 Where the question of novelty is in doubt, the fact that the device has 
 gone into general use, and has displaced other devices previously employed 
 for a similar purpose is sufficient to turn the scale in favor of the inventor. — 
 Mast V. Dempster, 82 Fed. 327; 27 C. C. A. 191. But see 177 U. S. 485. 
 
 Potts V. Creager, 155 U. S. 357; Smith v. Vulcanite, 93 U. S. 486; Magowan v. 
 Packing Co. 141 U. S. 332. 
 
 After careful consideration, we are of the opinion that the complainant's 
 patent relates to an article of substantial, practical merit, which excels in 
 operation and results other existing appliance*?, and that the patent is valid. 
 — Diamond v. Goldie, 84 Fed. 972; 28 C. C. A. 589. 
 
 Consolidated v. Detroit, 59 Fed. 902. 
 
 As shown by the record and the evidence, persons skilled in the art had 
 previously endeavored to accomplish the desired result, but without practi- 
 cal avail, and until McElroy combined the known electrical energy with his 
 happy mechanism, and described a device for putting the heat energy 
 involved in electricity into practical operation for this purpose, the public 
 had continued to rid6 in the cold. All agree that his device is practical, 
 useful, and a decided advance upon any theretofore described or known. It 
 does the work. Looking at the general use and the substantial results 
 accomplished through the mechanical arrangement and the device described,
 
 §635 INVENTION 581 
 
 with the practical view of giving the inventor, rather than with the view 
 through refining processes of reasoning, of depriving him of, what fairly be- 
 longs to him, it is difficult to see how the patentability of the device in suit 
 can be seriously challenged. — Consohdated v. West End, 85 Fed. 662; 29 
 C. C. A. 386. 
 
 He created a device — a composite structure — by which all need of the 
 former awkward and unhandy makeshift appliances was completely obviated. 
 It may be upon this showing Mr. Philips does not appear to have been a 
 pioneer, yet the fact remains that the device which he gave to the art was, in 
 its entirety, new, and was not only more convenient in its adaptation for use 
 than any appliance which had preceded it, but also performed its two-fold 
 function, so as in both respects to produce much better results than had ever 
 before been attained. Both in the character of the means which he employed 
 and in the improvement in operation which he achieved, there is evidence of 
 origination ; and therefore we cannot assent to the suggestion that his per- 
 formance amounted to nothing but ingenious aggregation of the varied, ofif- 
 hand, and inefficient contrivances which it was his declared object to sup- 
 plant. — Clinton v. Hendrick, 86 Fed. 137; 29 C. C. A. 612. 
 
 In a doubtful case, the fact that the patented device has gone into general 
 use, and superseded other devices, may be sufficient to turn the scale. — 
 Stevenson v. McFassell, 90 Fed. 707; 33 C. C. A. 249. 
 
 Smith V. Vulcanite Co. 93 U. S. 486. 
 
 It must be conceded that the sales were phenomenally large, and that the 
 evidence shows that the Christy saddle was received with great favor by those 
 who used the bicycle ; and also, it may be admitted, that it not only added 
 to their comfort but contributed to their safety. But still we do not think 
 that it follows that, therefore, that invention was not required to design and 
 construct it. — Christy v. Hygeia, 93 Fed. 965; 36 C. C. A. 31. 
 
 McClain v. Ortmayer, 141 U. S. 419; Klein v. Seattle, 77 Fed. 200; Grant v- 
 Walter, 148 U. S. 547; Aron v. Railway, 132 U. S. 84. 
 
 It contains much which requires that we should hold that the invention 
 consisted in producing the cap from a single blank, so as to be of the nature 
 of the invention in issue in Krementz v. Cottle, 148 U. S. 556. — B. & S. 
 Fastener v. Edgerton, 96 Fed. 489; 37 C. C. A. 523. 
 
 When the question of invention is doubtful, the presumption of validity 
 should have due consideration. In such case, also, the success which has 
 attended the patented thing ought not to be overlooked, and should be given 
 due weight. It is true that the success may have resulted in large measure 
 from the exercise of business energy and of liberal advertisement, but no 
 enduring success could be attained unless the thing patented had merit. — 
 Streator v. Wire-glass, 97 Fed. 950; 38 C. C. A. 573. 
 
 It is oftentimes sufficient to say that a thing is useful, and when the 
 new scheme for arranging old elements and using power is universally 
 adopted in place of the old, it is somewhat difficult to resist the conclusion 
 that the new is a substantial improvement upon the older conditions. It is 
 quite possible that the momentum caused, superadded to the belt power, is 
 a more valuable element in the combination than the patentee realized; but 
 this is hardly a reason for defeating the demonstrated practical usefulness of 
 such superadded power as an element in the combination. — Parsons v. 
 Seelye, 100 Fed. 455 ; 40 C. C. A. 486. 
 
 Potts V. Creager, 155 U. S. 597.
 
 582 THE FIXED LAW OF PATENTS §636 
 
 The utility of a machine, article of manufacture, process, and improvement 
 thereof, is only allowed to turn the scale in favor of its patentability in 
 those instances where the question whether the inventive faculty has been 
 exercised is balanced in doubt and uncertainty. — Falk v. Missouri 103 Fed 
 295; 43C. C. A. 240. 
 
 Duer V. Lock Co. 149 U. S. 216; McClain v. Ortmayer, 141 U. S. 419; Mao-owan 
 V. Packing Co. 141 U. S. 332; Smith v. Vulcanite Co. 93 U. S. 486. 
 
 These facts establish neither the novelty nor the patentability of his 
 device, but they certainly challenge admiration, and demand that the pre- 
 sumption of validity which supports his patents shall not be stricken down 
 without careful consideration and cogent and convincing proof. The keen, 
 shrewd, mercantile spirit of this age is seldom deceived into the purchase and 
 continued use of worthless improvements in mechanical devices, and, when 
 all is said, success is by no means the poorest criterion by which to judge of 
 the acts and words of men. — National v. Interchangeable, 106 Fed 693 • 
 45 C. C. A. 544. 
 
 In 5 years after Hein disclosed his invention and obtained his patent, his 
 brake beam was in use on 85 per cent, of the railroads controlling 80 per cent, 
 of the cars using iron brake beams in this country, and in 11 years from the 
 date of his patent, more than 1,000,000 of his brake beams had been made 
 and sold. But where the question of novelty is fairly open for consideration 
 under the law, the fact that a patented device or combination has displaced 
 others which had previously been used to perform its function, and has gone 
 into immediate and general use, is pregnant and persuasive evidence that it 
 involves invention. — National v. Interchangeable, 106 Fed. 693; 45 C. 
 C. A. 544. 
 
 Smith V. Vulcanite Co. 93 U. S. 486; Loom Co. v. Higgins, 105 U. S 580- 
 Mfg. Co. V.Adams, 151 U. S. 139; Magowan v. Packing Co., 141 U. S. 332- Graph- 
 ophone Co. v. Leeds, 87 Fed. 873; Topliff v. Topliff, 145 U. S. 156. 
 
 We have the prima facie arising from the grant. We have the fact that the 
 device has gone into extensive use, — an element entitled to regard. It is to 
 be noted that printing-press construction is mechanically a highly developed 
 industry. The complex and intricate details of these great presses ; the calls 
 upon them for speed, strength, and product; the constant demand upon 
 builders for improvement; and the keen rivalry existing among such builders 
 and the users of the presses, — are factors which brought the art to this high 
 mechanical standard. The very fact that, with all these stimulating con- 
 siderations, insuring the most rapid strides in mechanical advance, no such 
 step as Firm's was taken in duplex presses, shows that Firm's change was not 
 in the line of mechanical progress, but in the original, inventive sphere — 
 Goss V. Scott, 108 Fed. 253 ; 47 C. C. A. 302. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Smith v. Vulcanite, 93 U. S. 486. 
 
 The advance over Cushman in the substitution of a box form with a rear- 
 ward opening so simplified the construction as for that reason alone to be of 
 very considerable utility, and to raise a very strong presumption in favor 
 of patentabihty. — Hobbs v. Gooding, 111 Fed. 403; 49 C. C. A. 414. 
 
 It may be true that Anderson has only taken the familiar contact spring 
 or brush and placed it in a protected position, but this change seems to 
 have made the difference between a defective mechanism and a practical 
 method of attaining the desired result. Where, as in this case, the 
 departure from former means is only small, yet the change is import- 
 ant, the doubt as to whether the inventive faculty has been exer-
 
 § 635 INVENTION 583 
 
 cised is to be weighed in view of the fact that the device in question has 
 displaced others which had previously been employed for analogous uses, 
 and this may decide the issue in favor of invention, — Star v. General, 111 
 Fed. 398; 49 C. C. A. 409. 
 
 Krementz v. Cottle, 148 U. S. 556; Consolidated v. Detroit, 47 Fed. 894. 
 
 As organized, the heating apparatus supplied a practical and efficient 
 adjunct to the fire engines, and its value is shown by its adoption and use 
 by the officers of the fire department, and the fact that after it was intro- 
 duced there was no attempt by them to find a substitute for it, or to improve 
 it. In short, it fulfilled the requirements of the service for which it was 
 designed with a degree of success not before attained or subsequently ex- 
 ceeded. It did not evince a high order of inventive talent to organize and 
 construct it, but we think it did evince enough of thought and creative 
 faculty to support a patent, and re-inforce the presumption arising from 
 the grant. — Brickill v. Mayor, 112 Fed. 65; 50 C. C. A. 1. 
 
 The advance seems simple enough. One wonders why, pending its adop- 
 tion, twelve years went by. But the same wonder accompanies every step 
 forward in the useful arts. The eye that sees a thing already embodied in 
 mechanical form gives little credit to the eye that first saw it in imagination. 
 But the difference is just the difference between what is common observa- 
 tion and what constitutes an act of creation. The one is the eye of inventive 
 genius ; the other of a looker-on after the fact. Considering the utility of the 
 new knot, and the unavailing efforts prior to the patent in suit, to reach 
 some correction of the existing defects, and the length of time those efforts 
 went on, we are convinced that the patent under consideration evinces 
 something more than mere mechanical skill. — Faries v. Brown, 121 Fed. 
 547; 57 C. C A. 609. 
 
 The improvement is confessedly novel. Its utility, apparent on its face, 
 is reaffirmed by its great success. But did the production of it require the 
 exercise of the inventive faculty? The conjunction of its being a true mechani- 
 cal combination, its novelty, its great utility, and its notable commercial suc- 
 cess, is persuasive that more than mechanical skill was required in taking this 
 new step in the very, very ancient art of supporting and adjusting mirrors. The 
 device seems exceedingly simple. But its very simplicity in such an old field, 
 should be a warning against a too ready acceptance of the ex post facto 
 wisdom of the bystander. — Regent v. Penn, 121 Fed. 80; 57 C. C. A. 334. 
 
 The testimony is abundant that the East barrel had gone into general use, 
 that the public>ad attested its superior utility and value by adopting the 
 same, and that it had superseded all other barrels previously used for like 
 purposes. The fact that prior devices, such as the Roberts and the Georgia 
 barrel, had not been successful, and that the East barrel secured general 
 acceptance and extensive use, and was a commercial success, creates a strong 
 and almost conclusive presumption that the East barrel was the product of 
 invention and had patentable merit, and that something more than mere 
 application of mechanical skill was involved in its production. — Farmers' 
 V. Spruks, 127 Fed. 691 ; 62 C. C. A. 447. 
 
 But if the questions of novelty and merit were otherwise left in doubt 
 by the evidence, they would have to be resolved in favor of the patent, 
 because of the immediate and general use into which the device is shown to 
 have gone when it v/as put upon the market. — Heekin v. Baker, 138 Fed. 
 63; 70 C. C. A. 559. 
 
 Dowagiac v. Minnesota, 118 Fed. 136.
 
 584 THE FIXED LAW OF PATENTS § 636 
 
 The device in suit was a success from its inception, it came at once into 
 general use, and we are satisfied is of manifest novelty and great utility. 
 The testimony shows that it practically doubles the life of the belt. This 
 consideration, coupled with its undoubted commercial success from the out- 
 set, would be entitled to turn the scales in favor of the validity of the patent, 
 if it were otherwise in doubt. — Robins v. American, 145 Fed. 923 ; 76 C. C. A. 
 461. 
 
 Reviewing: Keystone v. Adams, 151 U. S. 139; Consolidated v. Detroit, 
 47 Fed. 894; Krementz v. Cottle Co. 148 U. S. 560. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Topliff v. Topliff, 146 U. S. 156; Con- 
 solidated V. Crosby, 11:3 U. S. 157; Magowan v. New York, 141 U. S. 332' Barbed 
 Wire Patent, 143 U. S. 275. 
 
 There is also evidence of more or less cogency that the device has superseded 
 other devices in the few cities which employ scouring and flushing machines 
 in use upon smooth or asphalt streets. These facts are entitled to weight 
 when the question is whether the machine exhibits patentable invention. 
 — St. Louis V. American, 156 Fed. 574; 84 C. C. A. 340. 
 
 Keystone v. Adams, 151 U. S. 139; National v. Interchangeable, 106 Fed. 693; 
 Kinloch v. Western, 113 Fed. 652; id. 659; Krementz v. Cottle, 148 U. S. 556. 
 
 Has the patentee added anything of value to the sum of human knowledge, 
 has he made the world's work easier, cheaper, safer, would the return to 
 the prior art be a retrogression? When the court has answered this question, 
 or these questions, in the affirmative, the effort should be to give the inventor 
 the just reward of the contribution he has made. The effort should increase 
 in proportion as the contribution is valuable. Where the court has to deal 
 with a device which has achieved undisputed success and accomplishes a 
 result never attained before, which is new, useful and in large demand, it 
 is generally safe to conclude that the man who made it is an inventor. — 
 O'Rourke v. McMuUen, 160 Fed. 933; 88 C. C. A. 115. 
 
 Hobbs V. Beach, 180 U. S. 383; Magowan v. N. Y. 141 U. S. 332; Barbed Wire 
 Case, 143 U. S. 275; Potts v. Creager, 155 U. S. 597; Loom Co. v. Higgins, 105 
 U. S. 590. ^^ 
 
 § 636. Evidence of — Utility — When Not. 
 
 Although the invention confessedly has been of g^eat utility, as proved 
 abundantly, in the absence of any clear and positive exercise of the mind 
 beyond mere mechanical skill, the utility of the device does not establish 
 patentable novelty. — HoUister v. Benedict, 113 U. S. 59; 28 L. Ed. 901; 
 
 5 S. Ct. 717. 
 
 An invention though new in the sense that it had not been anticipated 
 by any previous invention, and though shown to have superior utility, is not 
 necessarily such an improvement as to be entitled to be regarded in the 
 patent law as an invention. — Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158 ; 
 
 6 S. Ct. 1027. 
 
 The fact that the patented process involves greater care and higher skill 
 does nor effect its utility. — Lawther v. Hamilton, 124 U. S. 1 ; 31 L. Ed. 
 325; 8S.Ct.342. 
 
 Cannot be made to control the language of the statute which limits the 
 benefit of the patent laws to things which are new as well as useful. — Grant 
 V. Walter, 148 U. S. 547; 37 L. Ed. 552; 13 S. Ct. 699. 
 
 McClain v. Ortmayer, 141 U. S. 419.
 
 636 INVENTION 
 
 585 
 
 Limitation of rule with reference to other factors which may enter in to 
 produce popularity of article. — Duer v. Corbin, 149 U. S. 216; 37 L. Ed. 
 707; 13 S. Ct. 850. 
 
 It is true that such extensive public use, superseding other similar devices, 
 is evidence more or less cogent of value and usefulness. " It is not conclusive 
 of that; much less of its patentable novelty." McClain v. Ortmayer, 141 
 U. S. 428. Complainant was active and energetic in pursuing the sale of 
 his machine by means of circulars and travelling agents; the latter druni- 
 ming for it in 13 states. Under such circumstances, extensive sales consti- 
 tute little or no evidence or test of patentability. — Fox v. Perkins, 52 Fed. 
 205; 3 C. C. A. 32. 
 
 Nor do we find in the record sufficient to warrant any different conclusion 
 upon the theory that the device suppUed a long felt want, which mechanics 
 had tried to supply unsuccessfully, nor that it has driven other competitors 
 out of the market because its superior merits have commended it to the public. 
 There is nothing to show to what extent, price, workmanship, liberal dis- 
 counts to dealers, and ingenious and extensive advertising may have con- 
 tributed to whatever success has attended the effort to introduce complain- 
 ants' tool, and, in the absence of any information on these points, there is 
 not, in the circumstance that the sales of this tool have increased from 3,926 
 in 1885 to 10,727 in 1891, sufficient to warrant the conclusion that there 
 was any patentable invention in devising it, in view of the state of the art. 
 
 — Saunders v. Allen, 60 Fed. 610; 9 C. C. A. 157. 
 
 McClain v. Ortmayer, 141 U. S. 428; Duer v. Corbin, 149 U. S. 223. 
 
 It is not sufficient that the patentee may have produced a better and more 
 marketable article, but there must have been something novel in the means 
 which were employed in its production. — Andrews v. Thum, 67 Fed. 911; 
 15 C. C. A. 67. 
 
 Knapp V. Morss, 150 U. S. 221. 
 
 This we cannot do, to the extent of ascertaining for ourselves that the 
 appellee's device does not represent a completed and useful invention. — 
 Packard v. Lacing, 70 Fed. 66; 16 C. C. A. 639. 
 
 The authority for granting a patent rests exclusively upon statute, and 
 is thereby strictly limited to the invention of what is new and useful. Mc- 
 Clain V. Ortmayer, 141 U. S. 419. It is not therefore sufficient to show 
 the utility or great popularity of the improvement, as strenuously urged 
 here to sustain this patent. Id. But it must also be new, in the sense of 
 "patentable diversity from prior methods, forms, and accomplishments, as 
 recognized by the decisions. — Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 
 593. 
 
 Utility is not an infallible test of originality. There must be original 
 thought or inventive skill, not merely mechanical change of what was old. 
 
 — Olmsted v. Andrews, 77 Fed. 835; 23 C. C. A. 488. 
 
 Ex parte Greeley, Fed. Cas. 5,745; HoUister v. Mfg. Co. 113 U. S. 59; 
 Thompson v. Boisselier, 114 U. S. 1; Holder v. Ferguson, 119 U. S. 335; Heating 
 V Burtis 121 U. S. 286; Marchand v. Emken, 132 U. S. 195; McClain v Ortmayer, 
 141 U. S. 419; Clothing v. Glover, 141 U. S. 560; Mfg. Co. v. Cary, 147 U. S. 623; 
 Howard v. Stove, 150 U. S. 164. 
 
 It is undoubtedly true, that the utility of a device or machine, and the 
 fact that it had never been used before, is sometimes high evidence of in-
 
 586 THE FIXED LAW OF PATENTS §636 
 
 vention and in cases of doubt is given controlling effect. But every case 
 depends upon the state of the art, the character of the improvements, the 
 results accomplished, the methods used, the changes made, &c The fact 
 that a patented device has gone into general use, and has displaced other 
 devices is evidence of its value and usefulness, and is always of importance 
 in considering the question whether the device or machine is patentable. 
 But the fact that the patented device has gone into general use, while evi- 
 dence of its utility, is not conclusive evidence of its patentable novelty. — 
 Klein v. Seattle, 77 Fed. 200; 23 C. C. A. 114. 
 
 Smith V. Vulcanite, 93 U. S. 486; Adams v. Stamping Co. 141 U. S. 539; Mfg. 
 Co V Adams, 151 U. S. 139; McClain v. Ortmayer, 141 U. S. 419; Mf^. Co. v. 
 Gary, 147 U. S. 623; Grant v. Walter, 148 U. S. 547. 
 
 The commercial success of the patented article is only one element to be 
 considered where patentability is otherwise in doubt. — Lane v. Welds, 99 
 Fed. 286; 39 C. C. A. 528. 
 
 Mfg. Co. V. Robbins, 75 Fed. 17; McClain v. Ortmayer, 141 U. S. 419. 
 
 It is true that the extensive use of a machine or combination which is 
 clearly without novelty, does not dispense with that statutory requirement, 
 and that it will not alone sustain a patent. — National v. Interchangeable, 
 106 Fed. 693; 45 C. C. A. 544. 
 
 McClain v. Ortmayer, 141 U. S. 419; Duer v. Lock Co. 149 U. S. 216; Olin v. 
 Timken, 155 U. S. 141; Klein v. City of Seattle, 77 Fed. 200. 
 
 Utility being one of the qualities necessary to patentability, the granting 
 of the patent is prima facie evidence of it; and this is not negatived by the 
 fact that the device is susceptible of improvement, or that like inventions are 
 so far superior to it that they may entirely supersede the use of it. Compara- 
 tive utility between machines or processes is no criterion of infringement, 
 and comparative superiority or inferiority does not necessarily import 
 noninfringement ; nor does it tend to avoid infringement if the defendant's 
 device is simpler and produces better results, unless the cause is due to a 
 difference in function or mode of operation or some essential change in 
 character. — Crown v. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 The mere fact that a patented device or an article meets with increasing 
 sales and is popular is wholly unimportant when it clearly appears that the 
 invention is without patentable novelty. — American v. BuUivant, 117 
 Fed. 255; 54 C. C. A. 287. 
 
 Duer V. Lock Co. 149 U. S. 216; Printing Press v. Scott, 103 Fed. 650; National 
 V. Interchangeable, 106 Fed. 693; McClain v. Ortmayer, 141 U. S. 419; Klem 
 V. Seattle, 77 Fed. 200. 
 
 The fact that these bookcases have gone into extensive use is due, as we 
 think, to the elegant workmanship employed in their manufacture, and the 
 convenience of having the sections separable, aided by the energy with which, 
 as the bill states, they were pressed upon the market. — Globe- Wernicke v. 
 Macy, 119 Fed. 696; 56 C. C. A. 304. 
 
 It sometimes happens that an improvement in a machine or device, which 
 is the result of ordinary mechanical skill, adds much to the utility of the de- 
 vice or machine, but this fact does not render it patentable. If a doubt arises 
 in the consideration of a patented article or device whether the inventive' 
 faculty has been exercised, the fact that the article in question has gone into 
 general use, that there is a large demand for it, and that it seems to possess 
 great utility, is entitled to great weight ; but when it is apparent that the
 
 S 637 INVENTION 587 
 
 inventive faculty has not been exercised, and that nothing more has been 
 accomplished by the alleged inventor than what might have been done by 
 an ordinary workman or mechanic acquainted with the art, if his attention 
 had been directed to the subject, a patent, if granted, cannot and ought 
 not to be sustained. — Union v. Peters, 125 Fed. 601 ; 60 C. C. A. 337. 
 
 McCIain v. Ortmayer. 141 U. S. 419; Duer v. Corbin, 149 U. S. 216; Fox v. 
 Perkins, 52 Fed. 205; Dueber v. Robbins, 75 Fed. 17; Lovell v. Gary, 147 U. S. 
 623; Falk v. Missouri, 103 Fed. 295; Atlantic v. Brady, 107 U. S. 192. 
 
 A large part of the success of complainant's tiles is undoubtedly due to 
 their thickness and the secret composition of which they are made. — 
 New York v. Sierer, 158 Fed. 819; 86 C. C. A. 79. 
 
 But the fact that the Furness patent shows a new and useful improvement 
 does not, in itself, disclose invention. — New York v. Sierer, 158 Fed. 819; 
 86 C. C. A. 79. 
 
 Hollister v. Benedict, 113 U. S. 59. 
 
 It is true that the Marshall lining possesses the advantages of utility and 
 cheapness, and that it has nearly supplanted in the market the hard fiber 
 lining. In cases where the question of patentability is involved in more or 
 less doubt, these practical considerations are entitled to much weight, and 
 they have frequently been held to turn the scale in favor of sustaining the 
 patent. They cannot avail, however, in a case where the court is clearly 
 satisfied that the broad conception underlying the patent did not involve 
 inventive thought. — Marshall v. Pettingell- Andrews, 164 Fed. 862; C. 
 C. A. 
 
 § 637. Evidence of — Want of Invention. 
 
 An analysis of this patent in the light of the prior art, taken in connection 
 with the circumstances that no practical commercial machine containing this 
 invention has ever been put into use, forbids us from holding that this 
 is a pioneer patent which marks a great advance in the art, or lies at the 
 basis of a new art. — New York v. HoUingsworth, 56 Fed. 224; 5 C. C. A. 
 490. 
 
 The single claim of the patent is for a " rectangular terra-cotta wire 
 conduit pipe, having rectangular partitions, all of uniform thickness, and 
 made in one integral piece." We might well take judicial notice of the fact, 
 even if it was not abundantly proven by the testimony, that the art of mak- 
 ing sewer or drain pipe, both rectangular and cylindrical in form, out of 
 clay, is very old. — Browning v. Colorado, 61 Fed. 845; 10 C. C. A. 112. 
 
 The device was known for over 12 years before this bill was filed; and 
 yet during the whole of that period it never had been put to practical use. 
 If the case had been otherwise, the practical results might have enabled us 
 to give the patent the support which might have come therefrom. — B. & S. 
 Fastener v. Edgerton, 96 Fed. 489 ; 37 C. C. A. 523. 
 
 Boston V. Bemis, 80 Fed. 287. 
 
 The Stonemetz patent did not go into use at all. These facts would not 
 of themselves establish that the inventions were not novel and useful, but 
 such circumstances, unexplained, give additional ground for the belief that 
 no very substantial improvement in the art was made. — Campbell v. 
 Duplex, 101 Fed. 282; 41 C. C. A. 351.
 
 588 THE FIXED LAW OF PATENTS § 638 
 
 The fact that the two devices are not separately claimed, but only in 
 combination, would indicate that the patentee regarded the elements indi- 
 vidually considered as old. — American v. Helmstetter, 142 Fed. 978; 74 
 C. C. A. 240. 
 
 § 638. Evidence of — Miscellaneous Holdings. 
 
 The conversations and declarations of a patentee stating that he had 
 made an invention and describing its details and explaining its operation 
 are assertions of his right to the invention. — Railroad v. Stimpson, 14 Pet. 
 448; 10 L. Ed. 535. 
 
 The attempted proof that the plaintiff invented a certain device over thirty 
 years before, made and secreted a model of it, in the light of his subsequent 
 patent which did not disclose it and which was claimed only in a reissue 
 15 years later, such evidence is not impressive. — Johnson v. Flushing, 105 
 U. S. 539; 26 L.Ed. 1162. 
 
 The conduct of the inventor considered as evidence as to whether he had 
 or had not invented the device in suit at the time alleged. — Atlantic v. Brady, 
 107 U. S. 192; 27 L. Ed. 438 J 2 S. Ct. 225. 
 
 The fact that contemporary publications give to the patentees the credit 
 of this invention considered as evidence of invention. — New Process v. 
 Maus, 122 U. S. 413; 30 L. Ed. 1193; 7 S. Ct. 1304. 
 
 Where licensee gave notice to licensor that the licensed device was in- 
 operative and then continued to make an article embodying substantially 
 the same device indicates that the notice was a mere pretence. — St. Paul v. 
 Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. 
 
 The fact that the patentee had at one time offered to sell the patent for 
 $15.00 is not competent evidence of want of novelty and was properly ex- 
 cluded. — Harper v. Wilgus, 56 Fed. 587; 6 C. C. A. 45. 
 
 Complainant patentee had suggested the idea of the device in suit to an 
 inventor and manufacturer, who adapted a prior patented device to complain- 
 ant's needs, made and sold complainant the device and marked it patented 
 under his former patent. Later complainant took out a patent on the device, 
 removed the former patent mark and applied his own. Upon remonstrance 
 by the manufacturer, complainant removed his mark. Held: That in connec- 
 tion with the proofs this conduct amounted to a confession of invention of 
 the prior patentee and of abandonment by complainant. — Forgie v. Oil 
 WeU, 58 Fed. 871; 7 C. C. A. 551. 
 
 When the patentee is silent as to the details of a particular feature it is 
 to be presumed that it is a matter of common knowledge among those skilled 
 in the art, and not novel with the patentee. — Westinghouse v. Edison, 63 
 Fed. 588; 11 C. C. A. 342. 
 
 The complainant has pressed upon us advertisements and other public 
 declarations of the respondent maintaining the patentability of devices of 
 the general character of the one in issue. In that class of litigation in which 
 results can affect no interests except those of the parties to it, the court 
 may well give weight to declarations of that nature ; but with reference to 
 a patent for an invention, which is of public concern, such declarations are
 
 § 639 INVENTION 589 
 
 of little consequence, and neither the inventor nor the alleged infringer can 
 be permitted to substitute his own acts or opinions for the judgment of the 
 court. — Osgood v. Metropolitan, 75 Fed. 670; 21 C. C. A. 491. 
 
 It was a known law of nature when the early dental spittoons were de- 
 vised; but until Hurlbut's time, it was not thought of in solving the problem 
 of a sightly and sanitary dental basin. Is not this fact significant? Is it 
 not persuasive that Hurlbut's conception was invention rather than mere 
 skill — a flash of the intellect', creative and helpful, rather than the plodding 
 advance of the mechanic. — Justi v. Clark, 108 Fed. 659; 47 C. C. A. 565. 
 
 The record discloses the labor and experiments required to produce a 
 patentable supporter, and the inventive character of the device is niade 
 apparent despite first impressions as to triviality. Its novelty and utility 
 "in its limited field" are manifest. — Parramore v. Taylor, 114 Fed. 97; 
 52 C. C. A. 45. 
 
 The learned judge said: " The case is a close one. We have not arrived at 
 our conclusion without hesitation, and there are grounds for strongly urging 
 a different one." But w^e think that the doubt which he seems to have en- 
 tertained should have been resolved in support of the patent. — Cleveland v. 
 Kauffman, 135 Fed. 360; 68 C. C. A. 658. 
 
 Railroad v. Stimpson, 14 Pet. 459; Lehnbeuter v. Holthaus, 105 U. S. 96; Can- 
 trell V. Wallick, 117 U. S. 695. 
 
 § 639. Force of Nature. 
 
 An exclusive right cannot exist to a new power, should one be discovered. 
 Through the agency of machinery a new steam power may be said to have been 
 generated. But no one can appropriate this power exclusively to himself 
 under the patent laws. The same may be said of electricity and of any other 
 power in nature, which is alike open to all. — Le Roy v. Tatham, 14 How. 
 156; 14 L. Ed. 367. 
 
 A force of nature cannot be broadly claimed in connection with an act. 
 — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 If this claim can be maintained, it matters not by what process or machinery 
 the result is accomplished. For ought that we know some future inventor, 
 in the onward march of science, may discover a mode of writing or printing 
 at a distance by means of the electric or galvanic current, without using any 
 part of the process or combination set forth in the plaintiff's specification. 
 His invention may be less complicated — less liable to get out of order — 
 less expensive in construction, and in operation. But yet if it is covered by 
 this patent the inventor could not use it, nor the public have the benefit . 
 of it without the permission of the patentee. — O'Reilly v. Morse, 15 How. 
 62; 14 L. Ed. 601. 
 
 Note: No better law and no more wonderful prophecy is to be found in 
 the books. 
 
 As it was held in O'Reilly v. Morse, 15 How. 62. A broad claim for the 
 motive force of electricity could not be had, but a claim for a particular 
 application of that force by given means is patentable. — Telephone Cases, 
 126 U. S. 1 ; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 An artificial force is a natural force, so transformed in character or energies 
 by human power as to possess new capabilities of action. This transformation
 
 590 THE FIXED LAW OF PATENTS § 640 
 
 of a natural force into a force practically new involves a true inventive art. 
 — Wall V. Leek, 66 Fed. 552; 13 C. C. A. 630. 
 
 1 Rob Pat sees. 92-96-99-103; Neilson v. Hartford, 1 Web. P. C. 295; Law- 
 ther V. Hamilton, 124 U. S. 1; McClurg v. Kingsland, 1 How. 202; Burr v. Duryee, 
 1 Wall. 568. 
 
 Discoveries of natural forces or of their laws are not the subjects of patents. 
 It is only the employment of such forces by invented means, for useful 
 purposes, which gives the inventor any standing ground. — Cowles v. Lowrey, 
 79 Fed. 331; 24 C. C. A. 616. 
 
 O'Reilly v. Morse, 15 How. 62. 
 
 That a claim covering the utilization of an article in a way to get the 
 best results from its characteristics (such as using a veneer lumber with the 
 dense side out to compensate swelling from dampness) is not patentable, see 
 Talbot V. Fear, 89 Fed. 197; 32 C. C. A. 186. 
 
 Cameron having invented the tank employed and having defined it as '' a 
 septic tank," which in operation, becomes lined with a coating due to the action 
 of bacteria and in a short time forms its own air-excluding cover by 
 bacteria action ; that these facts do not entitle him to a claim covering his 
 elements and the elements built in by micro-organisms as constituting 
 a combination, see Cameron v. Saratoga, 159 Fed. 453; 86 C. C. A. 483. 
 
 § 640. Generic — Construction. 
 
 If one inventor precedes all the rest and strikes out something which in- 
 cludes and underlies all that they produce, he acquires a monopoly and sub- 
 jects them to tribute. But if the advance towards the thing desired is gradual, 
 and proceeds step by step, so that no one can claim the complete whole, then 
 each is entitled only to the specific form of device which he produces, and 
 every other inventor is entitled to his own specific form, so long as it differs 
 from those of his competitors, and does not include theirs. — Chicago v. 
 Sayles, 97 U. S. 554; 24 L. Ed. 1053. 
 
 It is not a pioneer patent, and is not entitled to that liberality of construc- 
 tion which would have been accorded to it had the inventor been the first 
 to devise a scheme for these several adjustments. — Consohdated v. Barnard, 
 156 U. S. 261; 39 L. Ed. 417; 15 S. Ct. 333. 
 
 If it was all he claimed for it, it first supplied the efficient means of reducing 
 to the service of the public an agency of great power and value in a highly 
 important industry. To such an invention the courts will give precedence 
 according to its breadth, and will treat all modifications of it which involve 
 only the exercise of the ordinary skill and learning of that art as compre- 
 hended in the invention. — Cowles v. Lowrey, 79 Fed. 331 ; 24 C. C. A. 616. 
 
 Tilghman v. Proctor, 102 U. S. 707; Eames v. Andrews, 122 U. S. 40. 
 
 Undoubtedly Mr. Edison, by utilizing this film and perfecting the first ap- 
 paratus for using it, met all the conditions necessary for commercial success. 
 This, however, did not entitle him, under the patent laws, to a monopoly 
 of all camera apparatus capable of utilizing the film. Nor did it entitle him 
 to a monopoly of all apparatus employing a single camera. — Edison v. 
 American, 114 Fed. 926; 52 C. C. A. 546. 
 
 This discovery was important. Tremaine & Paine were not mere improvers 
 upon a prior machine which was capable of accomplishing the same general 
 result. They brought to success what prior inventors had been unable
 
 § 641 INVENTION 591 
 
 to accomplish. It was difficult, and had been considered impossible. They 
 adopted some devices that had been used before, combined them with others 
 that had not been used, and added the necessary elements to make a practical 
 operative machine. Their invention was therefore more than a mere improve- 
 ment or perfection of what had preceded it. It was of such novelty and 
 importance as to constitute a distinct step in the progress of the art, and the 
 claims of their patent are therefore entitled to a broad and liberal construc- 
 tion. — Los Angeles v. ^olian, 143 Fed. 880; 75 C. C. A. 88. 
 
 Morley v. Lancaster, 129 U. S. 263; Letson v. Alaska, 130 Fed. 129- Brown 
 V. Drohen, 140 Fed. 97; Hobbs v. Beach, 180 U. S. 383. 
 
 § 641. Generic — Definition. 
 
 Doubtless an invention may be good though the subject of it consists 
 in the discovery of some principle of science or property of matter, never 
 before known or used, by which some new and useful result is obtained, 
 and such an invention or discovery may be the subject of a valid patent 
 without including in the claim any new arrangement of machinery to accom- 
 plish the object, provided the inventor describes, as required in the patent 
 law, the method, process or means of applying the invention to practical 
 use and of obtaining the new and useful result. — Mitchell v. Tilghman, 86 
 U. S. 287; 22 L. Ed. 125. 
 
 Househill v. Neilson, 1 Web. P. C. 683; Curt. Pat. 4 ed. 279; Foote v. Silsbv 
 2 Blatchf. 260. 
 
 This word (" pioneer ") although used somewhat loosely, is commonly 
 understood to denote a patent covering a function never before performed, 
 a wholly novel device, or one of such novelty and importance as to mark a 
 distinct step in the progress of the art, as distinguished from a mere improve- 
 ment or perfection of what had gone before. — Westinghouse v. Boy den, 170 
 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 It is true that, when an invention is of a primary character, a larger lati- 
 tude is given to the equivalents which the patent includes than if the invention 
 were a modification of a well-explored art. In the former case, devices which 
 operate upon the same principle and perform the same functions by analo- 
 gous means are held to be infringements (McCormick v. Talcott, 20 How. 
 402) and it is also true that when mechanical means are for the first time 
 invented, which enable a law of science or force of nature to be used so as 
 to accomplish a practical and beneficial result, such as the Bell telephone, 
 or when an inventor invents mechanical means for carrying into effect a 
 newly discovered and useful principle of operation, like the double carbon 
 of Brush, the inventor's properly drawn patent will include a very wide 
 scope of analogous mechanical means which accomplish the same result. 
 But this invention, though it may be called a primary one, is not of the 
 character to which any such latitude can be given. Having made this 
 improvement, he broadly claims in his patent any friction plate or pressure 
 contrivance, and desires to include all the more elaborate and ingenious 
 methods of constructing a brake which may be introduced. Such a con- 
 struction is inadmissible, because a patented invention of this character 
 which with difficulty maintains its right to patentability, belongs to a differ- 
 ent class from the one to which the doctrine in McCormick v. Talcott and 
 kindred cases, applies and is to receive a narrow construction, — Dederick v. 
 Seigmund, 51 Fed. 233; 2 C. C. A. 169. 
 
 The result which he achieved was a distinct and single one, which had not, 
 by any means, been previously attained. He entered upon a barren terri-
 
 592 THE FIXED LAW OF PATENTS §§642-643 
 
 tory in the domain of invention, and was the first to occupy and appropriate 
 it. He was a pioneer. — National v. American, 53 Fed. 367; 3 C. C. A, 559. 
 Machine Co. v. Lancaster, 129 U. S. 263. 
 
 The Kitselman invention, for the first time, put the fence-builder on its 
 feet — an easy going, adaptable, working machine of the highest species. 
 It built, for the first time, in the field, a wire mesh fence. It became a farm 
 implement — an implement before unknown — as much so as the first 
 harvester or the first stump puller. It turned over to the farmer in the field 
 the work that had been previously done by the wire weaver in the shop. 
 Out of it practically came a new product — a product as common now as the 
 barbed fence, and probably much more useful. Kitselman disclosed to the 
 world for the first time a practical means for supplying the farmer with a 
 highly useful fence. He has set forth the means in detail, in the descriptive 
 portion of his patent, and has framed the claims mentioned to correctly 
 embody them in a mechanical unity. His work is the work of a primary 
 inventor, certainly as much so as in the cases presented in the Corn Planter 
 Patent, and his letters patent are therefore entitled to a liberal construction. 
 — Kitselman v. Kokomo, 108 Fed. 632; 47 C. C. A. 538. Reversed, 189 
 U. S. 8. 
 
 Corn Planter Patent, 23 Wall. 181; Barbed Wire Patent, 143 U. S. 275. 
 
 Where the originator has boldly struck out into a practical application, 
 and stated it, though only in general terms, he has, for the most part, made 
 his conception clear even though the mechanical details have not been 
 expressed or thought out. — Westinghouse v. Stanley, 133 Fed. 167 ; 68 
 C. C. A. 523. 
 
 Telephone Cases,. 126 U. S. 1. 
 
 A primary invention is " one which performs a function never performed 
 by an earlier invention." A secondary invention is one which performs a 
 function previously performed, but in a substantially different way. Walker 
 on Pat. sees. 353,359. This word (pioneer), although used somewhat loosely, 
 is commonly understood to denote a patent covering a function never before 
 performed, a wholly novel device, or one of such novelty and importance as 
 to mark a distinct step in the progress of the art, as distinguished from a mere 
 improvement or perfection of what had gone before. — Western v. Robert- 
 son, 142 Fed. 471 ; 73 C. C. A. 587. 
 
 Westinghouse v. Boyden, 170 U. S. 537. 
 
 § 642. Generic — Improvement. 
 
 He brought to success what prior inventors had essayed, and but very 
 imperfectly accomplished. In so doing he adopted some devices that had 
 been used before, combined them with others that had not been used, and 
 added the necessary elements to make a practical and successful machine. 
 His combination and invention was, we think, more than a mere improve- 
 ment or perfection of what had preceded it. It was of such novelty and 
 importance as to constitute a distinct step in the progress of the art, and it 
 went into immediate and extensive use. Its claims are therefore entitled 
 to a fairly liberal construction. — Letson v. Alaska, 130 Fed. 129; 64 C. C. A. 
 463. 
 
 Machine Co. v. Lancaster, 129 U. S. 263. 
 
 For further cases on this subject see Improvement — Generic. 
 
 § 643. Generic — Scope of. 
 
 It may be that electricity cannot be used at all for the transmission of 
 speech except m the way Bell has discovered, and that, therefore, practically.
 
 §644 INVENTION 593 
 
 his patent gives him his exclusive use for that purpose, but that does not make 
 his claim one for the use of electricity distinct from the particular process 
 with which it is. connected in his patent. It will, if true, show more clearly 
 the great importance of his discovery, but it will not invalidate his patent. 
 — Telephone Cases, 126 U. S. 1 ; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Where an invention is one of a primary character, and the mechanical 
 functions performed by the machine are, as a whole, entirely new, all sub- 
 sequent machines which employ substantially the same means to accomplish 
 the same result are infringements, although the subsequent machine may 
 contain improvements in the separate mechanisms which go to make up 
 the machine. — Norton v. Jensen, 49 Fed. 859 ; 1 C. C. A. 452. 
 
 Machine Co. v. Lancaster, 129 U. S. 273. 
 
 We find that the complainant's machine is a special one, adapted to a 
 special purpose, relating to an art entirely different from that of ordinary 
 shearing knives. We fail to find anything which leads us to the conclusion 
 that complainant's invention was in any way anticipated, either by prior 
 use or by any machine possessing its functions. — Diamond v. Goldie, 84 
 Fed. 972; 28 C. C. A. 589. 
 
 § 644. Generic — What is. 
 
 It in no wise detracts from the merit of this invention that later devices 
 have been adopted which render its practical operation more efficient. The 
 very term " pioneer patent " signifies that the invention has been followed by 
 others. A pioneer patent does not shut but opens the door for subsequent 
 invention. — (Dissenting opinion of Mr. Justice Shiras in) Westinghouse v. 
 Boyden, 170 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 It appears that the complainant, although the owner of the patent in 
 suit, is not manufacturing under it at all, but continues to manufacture 
 under Young's earlier patent. It may, then, be affirmed confidently that the 
 invention of the patent in suit is not one of primary character. — Pittsburg 
 V. Pittsburg, 109 Fed. 644; 48 C. C. A. 580. 
 
 It was more than an advanced step in an old art. There was no prior art 
 of molding tubes or cylinders (of this character). The patent was \n a certain 
 sense a pioneer patent. To produce from a mold a tube or cylinder of in- 
 sulating material, cheaply and efficiently, so that the insulating function 
 of the cellular structure should be preserved uniformly throughout the sub- 
 stance of the tube or cylinder, was not an obvious suggestion of the general 
 molding art. — Keasbey v. American, 143 Fed. 490; 74 C. C. A. 510. 
 
 It may, therefore, fairly be said that he fulfilled the requirements of a 
 generic invention, in that he devised a machine which performed the func- 
 tion of looping on a ribbed fabric, a function never performed thereon by 
 any earlier machine, and thereby produced a result never before produced, 
 namely, a ribbed fabric capable of being fleeced, and that in doing this he 
 exercised invention of a high order. — Scott v. Fisher, 145 Fed. 915 ; 76 
 C. C. A. 447. 
 
 The contention that Gathright is entitled to the rewards of a pioneer 
 inventor cannot be maintained. If we may be permitted a metaphor, he did 
 not discover the new mine, he reached it by following trails blazed by others 
 through the wilderness; but once arrived, "by his genius and energy, he con- 
 verted a non-produeing failure into a busy, prosperous and lucrative enter-
 
 594 THE FIXED LAW OF PATENTS § 645 
 
 prise In other words, he developed the mine. — Wagner v. Wycoff, 151 
 Fed. 585; 81 C. C. A. 129. 
 
 § 645. Immoral Object. 
 
 We think that a patent cannot be lawfully granted when, as in the present 
 case, it appears that the claim preferred by the patentee that he has made 
 a discovery of a new fact or principle in medical science, and of a new mode 
 of operation of a known force whereby the discovery is utihzed, rests upon no 
 substantial foundation, and is at best an imaginary hypothesis, and was 
 most likely put forward merely to obtain a patent on a device which he 
 proposes to make and sell to the public for the treatment of disease. The 
 granting of a patent under the circumstances last stated would give to the 
 theories enunciated in the specification an appearance of authenticity, and 
 tend to mislead and deceive the public if the theories are false. — Mahler v. 
 Animarium, 111 Fed. 530; 49 C. C. A. 431. 
 
 If the device here in question should be found insusceptible of other use 
 than to guard gambling machines from being operated by means of bogus 
 coins, we should be led to an outlook from which two interesting queries 
 appear: (1) The statutes of Illinois proliibit the use of coin-operated gam- 
 bling machines, but not the manufacture or sale thereof. Should a circuit 
 court sitting in Illinois hold invaUd a patent on such a machine and thereby 
 destroy the monopoly of its manufacture and sale, because its use is forbid- 
 den in IlUnois, though its manufacture and sale in Illinois, and its use in 
 certain other states is lawful? (2) If the federal courts may properly hold 
 patents on gambUng machines void for lack of utility, because immoral, 
 though countenanced by the legislation of particular states, is a device at- 
 tached to such a machine likewise inimical to good morals, which prevents a 
 gambler from being also a cheat? It seems clear that one who practises his 
 invention in a noxious way only has no better standing in equity than one 
 who decHnes to use the device for good purposes or to permit others to use it. 
 And in Hoe v. Knapp, 27 Fed. 204, there is a statement that " under a patent 
 which gives a patentee a monopoly, he is bound to use the patent himself, 
 or allow others to use it on reasonable terms." But this doctrine has been 
 vigorously denied, and rightly, we think, in subsequent cases. Roller v. 
 Coombs, 39 Fed. 803; Campbell v. Manhattan, 49 Fed. 935; Heaton v. 
 Eureka, 77 Fed. 294; Bement v. National, 186 U. S. 70. So nonuse is not a 
 defense in equity. Is misuse? Equity is not concerned with the general 
 morals of a complainant ; the taint that is regarded must affect the particu- 
 lar rights asserted in his suit. Saddle v. Troxel, 98 Fed. 620; Folding v. 
 Robertson, 99 Fed. 985. A complainant asserts the vaUdity of his patent, 
 infringement, and asks an injunction. If the defendant can do no more than 
 show that the complainant has committed some legal or moral offense, 
 which affects the defendant only as it does the public at large, the court 
 must grant the equitable remedy and leave the punishment of the offender 
 to other forums. 
 
 But another consideration leads more strongly to the same result. The 
 inventor's right to make, vend, and use his device does not come from the 
 patent law ; it is his natural right. The government's grant to the patentee 
 and his assigns is the right to exclude others from practising the invention. 
 Bloomer v. McQuewan, 14 How. 539; Patterson v. Kentucky, 97 U. S. 501. 
 If the complainant in a patent suit is seeking merely to enforcehis right to 
 exclude, according to the terms of the government's grant, an inquiry into 
 what use (or lack of use) the inventor is making of his natural right would 
 seem to be clearly collateral and irrelevant. 
 
 Judge Grosscup, dissenting, says: Non-use and pernicious use must not 
 be confounded. The inventor who declines to put his patent into use occu-
 
 § 646 INVENTION 595 
 
 pies toward society an attitude entirely distinct from the inventor who is 
 using his invention in a way that injuriously affects society. Pernicious use 
 does not deny simply to society the present benefit of an invention — it 
 visits upon society an affirmative moral harm. Pernicious use injures where 
 non-use only withholds; wounds, where non-use only declines to help. The 
 court should stand aloof from the whole transaction, not because the perni- 
 cious use is a defense that lies in appellee's mouth, but because it is a consid- 
 eration the public may interpose, and because to issue the wTit under such 
 circumstances would be to pollute the writ itself. — Fuller v. Berger, 120 
 Fed. 274; 56 C. C. A. 288. 
 
 § 646. Improvement — Non- Patentable. 
 
 Mere improvement in material or quality is not patentable. — Heald v. 
 Rice, 104 U. S. 737; 26 L. Ed. 910. 
 
 Hotchkiss V. Greenwood, 11 How. 266; Hicks v. Kelsey, 85 U. S. 670; Stow 
 V. Chicago, 104 U. S. 547. 
 
 A mere carrying forward of an original conception resulting in an improve- 
 ment in degree is only the exercise of ordinary mechanical skill. — Con- 
 soHdated v. Walker, 138 U. S. 124; 34 L. Ed. 920; 11 S. Ct. 292. 
 
 Burt V. Evory, 133 U. S. 349; HoUister v. Benedict, 113 U. S. 59; Thompson 
 V. Boisselier, 114 U. S. 1; Aron v. Manhattan, 132 U. S. 84; Hill v. Wooster, 132 
 U. S. 693; Howe v. National, 134 U. S. 388. 
 
 With all due respect to the patent office, I must say that it seems to me 
 all these patents in suit, as well as others in this record, were very improvi- 
 dently issued. They may cover improvements in this class of devices, but 
 all improvements do not involve or imply invention. — Palmer v. McDer- 
 maid, 54 Fed. 509; 4 C. C. A. 489. 
 
 There is not invention merely in reducing the friction of a device by adding 
 antifriction rollers, a method well-known in the art. — Barnes v. Walworth, 
 60 Fed. 605; 9 C. C. A. 154. 
 
 The fact alone of improvement does not establish invention. Nor, on the 
 other hand, can it be denied for mere simplicity, which may be the feature of 
 special merit. For the improvement claimed in this patent, however, a 
 test is furnished under the rule frequently declared by the Supreme Court, 
 that " a change only in form, proportion or degree, the substitution of equiv- 
 alents doing substantially the same thing in the same way, by substantially 
 the same means, with better results, is not such invention as will sustain a 
 patent." — Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 593. 
 
 Smith V. Nichols, 21 Wall. 112; Burt v. Evory, 133 U. S. 349; Cluett v. Clafiin. 
 140 U. S. 180: McCarty v. R. R. 160 U. S. 110; Caverly's v. Deere, 66 Fed. 305; 
 Griswold v. Wagner, 68 Fed. 494. 
 
 We are constrained to conclude that, although the patentee was entitled 
 to the credit of making a more artistic article than those who have preceded 
 him, he did nothing new in the patentable sense. — Janowitz v. Levison, 82 
 Fed. 63; 27 C. C. A. 61. 
 
 The rule in Smith v. Nichols, 21 Wall. 112, 119, has been since so many 
 times restated and applied that it has become familiar doctrine. — Soehner 
 V. Favorite, 84 Fed. 182; 28 C. C. A. 317. 
 
 Fox V. Perkins, 52 Fed. 205; Schreiber v. Grimm, 72 Fed. 671; Clark v. Deere. 
 80 Fed. 534.
 
 596 THE FIXED LAW OF PATENTS §§ 647-648 
 
 The coffee may look better or more attractive in the package, but this 
 does not involve invention. It is only a change in the form or appearance of 
 a well-known article of merchandise and is not patentable. — Baker v. 
 Duncombe, 146 Fed. 744; 77 C. C. A. 234. 
 
 Glue Co. V. Upton, 97 U. S. 3; King v. Gallun, 109 U. S. 99; Cerealine v. Bates, 
 101 Fed. 272; Sanitas v. Voigt, 139 Fed. 551. 
 
 § 647. Improvement — Patentability. 
 
 All improvement is not invention, and entitled to protection as such. Thus 
 to entitle it, it must be the product of some exercise of the inventive faculties, 
 and it must involve something more than what is obvious to a person skilled 
 in the art to which it relates. — Pearee v. Mulford, 102 U. S. 112; 26 L. Ed. 
 93. 
 
 The first defense is based on the theory that a patent cannot be valid 
 unless it is new in all its elements as well as in the combination. But this 
 theory can not be maintained. If it were sound no patent for an improve- 
 ment on a known contrivance or process could be valid. And yet the great 
 majority of patents are for improvements in old and well known devices, 
 or on patented inventions. Changes in the construction of an old machine 
 which increases its usefulness are patentable. — Cantrell v. Wallick, 117 
 U. S. 689; 29 L. Ed. 1017; 6 S. Ct. 970. 
 
 Seymour v. Osborne, 11 Wall. 516; Loom v. Higgins, 105 U. S. 580; Hailes v. 
 Van Wormer, 20 Wall. 353; Star v. Grossman, 4 Cliff. 568. 
 
 It is well settled that not every improvement in an article is patentable. 
 The test is that the improvement must be the product of an original con- 
 ception. — Burt V. Evory, 133 U. S. 349; 33 L. Ed. 647; 10 S. Ct. 349. 
 
 Pearee v. Mulford, 102 U. S. 112; Slawson v. Grand, 107 U. S. 649; Munson 
 V. N. Y. 124 U. S. 601; Smith v. Nichols, 88 U. S. 112. 
 
 He has not made a great invention or a " pioneer invention," if that much 
 abused expression be confined to its legitimate meaning, but he has produced 
 a novel and useful device which is far removed from mechanical skill. His 
 invention belongs to that vast field of minor achievement which has given 
 this country its acknowledged pre-eminence and which it is the policy of 
 the patent law to protect. — Eldred v. Kirkland, 130 Fed, 342; 64 C. C. A. 
 588. 
 
 § 648. Improvement — Miscellaneous. 
 
 These, and all the other differences, were before the Patent Office. The 
 granting of Volz's claims under the circumstances was a virtual finding that 
 Volz was an independent improver in an open field, and we think such a 
 finding is correct. — Loew v. Miller, 138 Fed. 886; 71 C. C. A. 266. 
 
 Note: This is a loose statement. There is nothing to indicate that it was 
 an " open field " so far as the Patent Office action was concerned. 
 
 The courts have generally found it inadvisable to attempt to define in- 
 vention, and concluding that there are no affirmative rules by which to de- 
 termine its presence or absence in every ease, have recognized and applied 
 certain negative tests to establish want of invention. Walker on Pats. sees. 
 24, 29. But when, upon the application of these tests, the question of in- 
 vention is still left in doubt, such doubts may be resolved in favor of the 
 patent by evidence of successful results when others have tried and failed, 
 — American v. Universal, 151 Fed. 595; 81 C. C. A. 139.
 
 § 649 INVENTION 597 
 
 Loom Co. V. Higgins, 105 U. S. 580; Steel Co. v. Cambria, 185 U. S. 403; Singer 
 V. Schenck, 77 Fed. 841; Brunswick v. Thum, 111 Fed. 904; Frost Co. v. Cohn, 
 119 Fed. 505; Rumford v. Baking Co. 134 Fed. 385. 
 
 When an existing process or device thus discloses what appear to be in- 
 superable objections to practical operation, it is persuasive evidence of in- 
 vention that an improver has the foresight and courage to break away from 
 such disclosures and conceive of some new method involving a different 
 principle, but it is also evidence of invention if one, by taking a step forward 
 sees that what appears to be barriers to progress are mere obstructions to 
 side paths and byways, and that the road to a practical invention lies straight 
 before him. — American v. Universal, 151 Fed. 595; 81 C. C. A. 139. 
 
 What the adaptation does in practical operation uporj widely used machines 
 in cotton spinning and twisting, old and new machines alike, as compared 
 with the older adaptations, goes far toward demonstrating the fact of in- 
 vention. Though the patent is for an improved thread-guide support, rather 
 than for a new and original discovery, its practical success is such as to en- 
 title it to favorable consideration, and to relieve it in a measure from the 
 operation of the narrow rules of construction which ordinarily apply to pa- 
 tents for improvements which only slightly advance the art, and accomplish 
 only unimportant and inconsiderable results. — Houghton v. Whitin, 153 
 Fed. 740; 83 C. C. A. 84. 
 
 § 649. Manufacture. 
 
 The patent covered as an article of manufacture a rubber tip for a pencil 
 — not in combination and not of any shape or design. Held: Void as there 
 was no novelty in the rubber tip independent of its particular shape form 
 and use in combination, none of which were claimed. — Rubber Tip v. 
 Howard, 87 U. S. 498; 22 L. Ed. 410. 
 
 A claim which does not describe an article differing at all in its completed 
 state from prior articles is clearly invalid. — Risdon v. Medart, 158 U. S. 
 68; 39 L. Ed. 899; 15 S. Ct. 745. 
 
 It is not enough that the new manufacture, because of th'e fitness of the 
 material to the purposes of the article, has obviated innumerable objections 
 inherent in prior manufactures and superseded them in the trade. It must 
 possess an advantage and novelty in form or construction beyond the ability 
 of a mechanic of ordinary skill and intelligence, or be the result of means 
 or methods devised by the maker. — Kilbourne v. Bingham, 50 Fed. 697 ; 
 1 C. C. A. 617. 
 
 HoUister v. Mfg. Co. 113 U. S. 72; Smith v. Elliott, 9 Blatchf. 403; Morgan 
 V. Seward, Web. P. C. 174; Smith v. Vulcanite, 93 U. S. 492. 
 
 An article of manufacture which differs from other similar articles only 
 in degree of quality, is not patentable as such. — Blumenthal v. Burrell, 
 53 Fed. 105; 3 C. C. A. 462. 
 
 Wood Paper Patent, 23 Wall. 566. 
 
 A mere form of construction which affords increased beauty may enter 
 into a design patent but not a patent for a structure. — Soehner v. Favorite, 
 84 Fed. 182; 28 C. C. A. 317. 
 
 There is no clear line of demarkation between what may be called a new 
 article of commerce, not patentable though useful, and new articles of manu-
 
 598 THE FIXED LAW OF PATENTS §§ 650-G51 
 
 facture patentable as such. Each instance brought the attention of the court 
 must be determined more or less upon the situation peculiar to itself. We 
 think it sufficient to say that no result of a machine or process is patentable 
 independently, where it is apparent that such result is a degree only in ad- 
 vance, in the evolution of an art that is as wide as the manufacture of 
 cereal'foods and flour. — Cereahne v. Bates, 101 Fed. 272; 41 C. C. A. 341. 
 
 That where the patent is for a new article of manufacture, and the means 
 for producing it are old, and the article itself is merely the result of trans- 
 ferring such means from an analogous art, and possesses characteristics similar 
 to those of the articles of the analogous art, the patent is void, see, Wejerman 
 V. Shaw, 157 Fed. 928; 85 C. C. A. 222. 
 
 § 650. Mathematical Formula. 
 
 But when the patentee in his claim enumerates as one element of his 
 combination a wire of a length which will accomplish the result sought to 
 be achieved, and his patent discloses a method for determining that length 
 with mathematical exactness, his claim may fairly be sustained for the length 
 thus shown, although it might be that some other length covered by the lan- 
 guage of the claim, but not of the rule, would fall outside the claim. The 
 " length of wire exposed," etc., " operated by," etc., " substantially as set 
 forth," is the length of wire that the specification shows as the result of a 
 given formula. The so-called " Stanley rule " is therefore a part of the in- 
 vention disclosed and claimed in the patent, — indeed, it would seem to be 
 the main part of the invention, — and, with the patent thus construed, the 
 citations from the prior art show neither anticipation nor lack of invention. 
 The whole argument of defendants on that branch of the case is so inter- 
 woven with the postulate that the Stanley rule is to be eliminated from the 
 patent that when the postulate is not granted the argument becomes wholly 
 unpersuasive. — Westinghouse v. Saranac, 113 Fed. 884; 51 C. C. A. 514. 
 
 § 651. Means. 
 
 The invention covered must consist of a new and useful means of obtaining 
 the end sought. In other words, the subject of a patent is the device or 
 mechanical means by which the desired result is to be secured. — Knapp v. 
 Morss, 150 U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 Carver v. Hyde, 41 U. S. 519; Leroy v. Tatham, 55 U. S. 156; Corning v. Bur- 
 den, 56 U. S. 252; Burr v. Duryee, 68 U. S. 531; Fuller v. Yentzer, 94 U. S. 288. 
 
 Novelty must be a novelty in the means or mechanical device and not in 
 the use to which the combination is put. — WoUensak v. Sargent, 151 U. S. 
 221; 38 L. Ed. 137; 14 S. Ct. 291. 
 
 Knapp V. Morss, 150 U. S. 221. 
 
 Patents cover means employed to effect results. — Miller v. Eagle, 151 U. S. 
 186; 38 L. Ed. 121; 14 S. Ct. 310. 
 
 Rubber Tip Pencil Co. v. Howard, 87 U. S. 507; Fuller v. Yentzer, 94 U. S. 
 288; Roberts v. Ryer, 91 U. S. 150; Stow v. Chicago, 104 U. S. 547. 
 
 In such case any appropriate means for making it operative will be under- 
 stood. Otherwise the infringer might take the most important part of an 
 invention and, by changing the method of adapting it to the machine to 
 which it is an improvement, avoid the charge of infringement. The invention 
 of a needle with an eye near the point is the basis of all the sewing machines 
 used; but the methods of operating such a needle are many, and if Howe 
 had been obliged to make his own method a part of every claim in which the
 
 § 651 INVENTION 599 
 
 needle was an element, his patent would have been practically worthless, — 
 Deering v. Winona, 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 If the inventor were in fact the first to invent the device of the patent, 
 he is entitled to a patent therefor, though the infringer may make use of 
 other means than those employed by him to operate it. — Deering v. Winona, 
 155 U. S. 286; 39 L. Ed. 153; 15 S. Ct. 118. 
 
 Webster v. Higgins, 105 U. S. 580. 
 
 The results attained by the means employed by the patent in suit are not in 
 conflict with the rule of Knapp v. Morss, 150 U. S. 221 ; and WoUensak v. 
 Sargent, 151 U. S. 227, that the end or purpose sought to be accomplished 
 by a device is not the subject of a patent. The fallacy of defendant's argu- 
 ment lies in the assumption that the object to be accomplished was the mov- 
 ing of the wing instead of the more perfect operation of the rods. — National 
 V. Boston, 156 U. S. 502 ; 39 L. Ed. 511; 15 S. Ct. 434. 
 
 Brown v. Piper, 91 U. S. 37; Penna. v. Locomotive, 110 U. S. 490; Aron v. 
 Manhattan, 132 U. S. 84; WoUensak v. Sargent, 151 U. S. 221; Blake v. San 
 Francisco, 113 U. S. 679; St. Germain v. Brunswick, 135 U. S. 227. 
 
 While it is true under the rule of Knapp v. Morss, 150 U. S. 221 ; WoUen- 
 sak V. Sargent, 151 U. S. 227; that the end or object cf an invention is not 
 patentable, that the means, not the end, is the patentable subject matter, 
 and while it is also true in view of Brown v. Piper, 91 U. S. 37; Penna. v. 
 Locomotive, 110 U. S. 490; Aron v. Manhattan, 132 U. S. 84; WoUensak v. 
 Sargent, supra; Blake v. San Francisco, 113 U. S. 679; and St. Germain v. 
 Brunswick, 135 U. S. 227; that the employment of old and well knowni 
 means to a new and analogous use is not patentable, — yet in a 
 case where a desired function is accompHshed by the employment of 
 old means remotely analogous, such a degree of skill may be required as to 
 involve the inventive faculty ; and in that case it is the idea of means, though 
 old, that is patentable, and not the end attained. — National v. Boston, 156 
 U. S. 502; 39 L. Ed. 511; 15 S. Ct. 434. 
 
 It is the character of the means employed, and not the inventions or 
 details of forms, which denote the substance of the invention. — Union v. 
 Battle Creek, 104 Fed. 337 ; 43 C. C. A . 560. 
 
 Morey v. Lockwood, 8 Wall. 230; Ives v. Hamilton, 92 U. S. 431; Elizabeth 
 V. Pavement Co. 97 U. S. 137. 
 
 The Knowles & Tatham patent is m.erely for an improved form of means for 
 accomplishing an old result. It does not employ any new mechanical principles 
 or any essentially new mode of operation. The substance of the invention 
 resides in the form of the means. It is a case where form and substance are 
 inseparable. — Lowell v. Saco, 122 Fed. 632; 58 C. C. A. 324. 
 
 Winans v. Denmead, 15 How. 330. 
 
 In our opinion, upon full consideration, the device belongs to that class of 
 inventions in which the invention resides, in the language of the Supreme 
 Court in Hobbs v. Beach, ISO U. S. 383, rather in " the idea that such change 
 could be made than in making the necessary mechanical alterations." Other 
 inventors had been engaged in perfecting these machines, and yet it never 
 occurred to anyone before that the old, cumbersome, and troublesome method 
 of running off the nines could be obviated by this simple device. — Compto- 
 graph V. Mechanical, 145 Fed. 331 ; 76 C. C." A. 205.
 
 goo THE FIXED LAW OF PATENTS §§ 652-654 
 
 § 652. Mechanical Skill — Adaptation. 
 
 Unless more ingenuity and skill in ai)plying the old method of fastening 
 the shank and the knob were required in the application of it to the clay 
 or porcelain knob than wen; possessed by an ordinary mechanic acquainted 
 with th(; business, there was an absence of that degree of skill and ingcniuity 
 which constitute essential elements of every invention. In other words the 
 improvement is the work of the skillful mechanic, not that of the inventor. — 
 Hotchkiss V. Greenwood, 11 How. 248; 13 L. Ed. 683. 
 
 To cut the material so as to get the grain in a particular way, and so as to 
 avoid waste recjuires simple mechanical skill, without involving invention. 
 — Brown v. D. C. 130 U. 8. 87; 32 L. Ed. 803; 9 S. Ct. 437. 
 
 It does not involve invention to place the gripping device of a cable rail- 
 way system on a dummy car and attaching the dummy to a carrying car 
 calculated to be used also upon other than cable systems. — Butte City v. 
 Pacific, 60 Fed. 410; 9 C. C. A. 41. 
 
 The mere adaptation of means to avoid binding or friction, as changing 
 the point of application of a force, such as would occur to any mechanic is 
 not invention. — Union v. Smith, 69 Fed. 827; 16 C. C. A. 451. 
 
 Stirrat v. Mfg. Co. 61 Fed. 980. 
 
 The adai)tation of a spring in form and location merely to make a more 
 effective bicycle brake is not invention. — Gormully v. Western, 84 Fed. 
 968; 28C. C. A. 586. 
 
 Invention cannot be predicated merely on making holes for purposes of 
 ventilation. — Tileston v. Vaughan, 149 Fed. 999; 79 C. C. A. 509. 
 
 § 653. Mechanical Skill — Aggregation. 
 
 Mere duplication of parts, as placing two panes of glass where there was 
 only one before, is not invention, but ordinary mechanical skill. — Slawson v. 
 Grand, 107 U. S. 649; 27 L. Ed. 576; 2 S. Ct. 663. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Phillips v. Paige, 24 How. 167; Dunbar 
 V Meyers 94 U. S. 187; Stimpson v. Woodman, 10 Wall. 117; lirown v. Piper, 
 91 U. S. 37; Atlantic v. Brady, 107 U. S. 192. 
 
 Mere aggregation of old devices and elements, though useful, is not in- 
 vention. — Watson V. Cincinnati, 132 U. S. 161 ; 33 L. Ed. 295; 10 S. Ct. 45. 
 
 § 654. Mechanical Skill — Carrying Forward. 
 
 The general rule stated in terms of Smith v. Nichols, 88 U. S. 112; and 
 Penna. v. Locomotive, 110 U. S. 490. — Stephenson v. Brooklyn, 114 U. S. 
 149; 29 L. Ed. 58; 5 S. Ct. 777. 
 
 Vinton v. Hamilton, 104 U. S. 485; Blake v. San Francisco, 113 U. S. 679. 
 
 A mere carrying forward of an original conception, resulting in an improve- 
 ment in degree, is only the exercise of ordinary mechanical skill. — Con- 
 solidated 1;. Walker, 138 U. S. 124; 34 L. Ed. 920; 11 S. Ct. 292. 
 
 P.urt, V. Evory, 133 U. S. 349; Hollistcr v. Benedict, 113 U. S. 59; Thompson 
 1'. lioisselier, 114 U. S. 1; Aron v. Manhattan, 132 U. S. 82; Hill v. Wooster, 132 
 U. S. 693; Howe v. National, 134 U. S. 388. 
 
 A mere carrying forward, or new or more extended application of the 
 original thought, a change only in form, proportions or degree, the substi-
 
 § «-'5-'i INVENTION 00 1 
 
 tuliori f)f o(\u\v!t]ori\H (hmff sufwliiiilijilly ilic .s.-irno thirif^ in ihc. KJirru; w;iy hy 
 suhKtiuitijilly tiic H;uri(! rricaiiH witli hoUctr ntHulLs, is rirjt .such itivciil ion uh 
 will sustain u \)iiU'.ni. - Ansonia /;. I'^lectricul, Hi U. S. 11; '.',() I.. Ivi. .'',27; 
 12 S. (;t. (iOl. 
 
 Smith V. NicholH, HH U. S. 112; MorrJH v. MrMillin, 112 U. S. 24i; I'.uhcH v. 
 StevenH, IM U. H. 42.i. 
 
 The adaptation of I Ik- proffss of \cui\)cii\ii^ clock 1m;11h to that of hnlical 
 coil spiinf^M h<;l(i to tK; a men; cjirryinfj; forward of an old process. — Lovell v. 
 Cary, I 17 U. S. 02:', ; :i7 J.. Md. ;i07 ; Ki S. Ct. 472. 
 
 lloihKlcr <;. Ii(;nc<licl, ll.'i IJ. S. FA). 
 
 It /n;itt(!rs not that tin; rncans rnif^ht have boon so fooljlo or inadequate 
 as to only irnp(;rfoctly perform their 'luty ; the mere oxtonsion of those /neans 
 in size; and numhfrr, or (;\\iii\fi,<', of form, would nrjt, in the absence of KjM.'oial 
 cireumstancris, make tlie improvemcint producf;d thfirfjby patr;ntable. " It 
 is a rner(; diiT<!renee in def^nn;; the f;arryin}< forward of a.n rjld idr-a; a result 
 pcrhafjs more f)erfe'ct than hiid lif^nttofore \)(;(:n attjiined, but not risinf^ to 
 the dif^nity of invention."— Wells v. Curtis, fifi I'ed. .'{IS; \.', C. (I. A. liJl, 
 
 Wrii^lit V. Yucri^liriK, ].'>.'"> IJ. S. 47. 
 
 A tfiiii}^ (»r a conil)in;il ion of c()()p(;r;itinf^ jKuts may Ik; inv(;nte(i and tli(; 
 original embcjdiment of it will b(; shown in a crude and imperfer;t form. Tlio 
 skill of the trainf;d workman will d(;veloi) th(; idea of the inventor in more 
 refined, more d(;licate and more f;xaef ly suitable forms than the original. 
 He may cut away rujedless bulk, he may increasf; th<; size of [);i.r(s, hr; may 
 make them stronj^er, if nef;d br;, by th(; subslitution of one. farnili/ir material 
 for anotlif;r, make thf;m lif:;ht<'r or heavier, lif; may dividr; one [jjirt into two, 
 or combine two in one, or make any othr;r transformation of details, s(» lonf^ 
 as he is jjursuin^ and working f)Ut thr; original discovery or inv(;ntion by 
 the exercise of the insight, {^ood judf^ment, and expertness which lie is ex- 
 pected to possess and apply. y\nd this improvement may f^o on Sf) lonj^ ua 
 any improvement in brintriiifj; the m(;ans already su[)fjlied to {!;re;i.tr;r p<!r- 
 fection can be mad(;, .'ind yf;t it continues to br; only an (;mbodimeiit of the 
 prim;d idea. — liullock v. (;rTi(;r;d, 140 l'V;d. 40!); 7!) (;. C. A. 220. 
 
 'J'hf; time Wfis so short after the intrf)duf;tion of thie direct f;urrent dental 
 motor that it would seem the alternating currf;nt motor of the patent was 
 produc(;d as a d(;v(;lopment due to th(; f!,rn(\\in\ ext<;rision f)f the usr; of com- 
 mf;rcial alternatinf^ currents. The rf;f;ord df>f;s not fnak(; out a cise " wherr; 
 the n(;ed had lonf^ be(;n afjparent and various persons had vairdy sought to 
 accomplish the desired resiilt." — I'ieper v. Electro-i Cental, KiO I'ed. U'M); 
 HH C. (;. A. 112. 
 
 pjlectric v. .Jamaica, 01 I'"«;d. 0.')5. 
 
 The mere brin^inp; together of old elements whicli in tlieir new pl.-ices do 
 iio more than their original work and do not eo-opf;rat,(; with otfier (;Iem(!nt,s in 
 doinj^ somethirif^ new and usefiil is not inventif>n. — National v. Aikrin, lO.'i 
 Fed. 2.'j4; C. C. A. 
 
 Thatr-her/;. I'.nrtiH, 121 TI. S. 2SG; J'J. hards /;. Chaw, 158 U. H. 299; Camnhrll 
 r. I)ii|)Iex, 101 l''ed. 282; CoodycMr w. Ituliljcr, IKl J'cd. .'ifj.'J; .JohnHon v. Fooh, 
 141 IcA. T.',. 
 
 § 655. Mechanical Skill — Change of Form. 
 
 Merely to change the form of a ma(;hine is the work of a constructor, not 
 an invf;ntor. Such a, change cinnot be deemed an invention. — Winans v. 
 JJenmead, ITj How. '.V.'M; 14 L. Ivl. 717.
 
 602 THE FIXED LAW OF PATENTS § 655 
 
 Change of form, though better, is not invention. — Belding v. Challenge, 
 152 U. S. 100; 38 L. Ed. 370; 14 S. Ct. 492. 
 Roberts v. Ryer, 91 U. S. 150. 
 
 A mere difference or change in the mechanical construction in the size 
 or form of the thing used, in order to obviate known defects existing in the 
 previous devices, although those changes are highly advantageous, and far 
 better and more efficacious and convenient, does not make the improved 
 device patentable. In order to be patentable, it must embody some new idea 
 or principle not before known. It must, as before stated, be a discovery, 
 as distinguished from mere mechanical skill or knowledge. Atlantic v. 
 Brady, 107 U. S. 192; Hollister v. Benedict, 113 U. S. 59; Thompson v. 
 Boisselier, 114 U. S. 2; Buseil v. Stevens, 137 U. S. 423; Andrews v. Thum, 
 67 Fed. 911. Nor does the fact that better material is used in constructing 
 the device, such material being well known as adapted to the purpose for 
 which it is used, make the device patentable. 
 
 In Hotchkiss v. Greenwood, 1 1 How. 248, where it was held that the sub- 
 stitution of porcelain for metal in making door knobs of a particular con- 
 struction was not patentable, the court said: " No one will pretend that a 
 machine made, in whole or in part, of materials better adapted to the pur- 
 pose for which it is used than the materials of which the old one is con- 
 structed, and for that reason better and cheaper, can be distinguished from 
 the old one, or, in the sense of the patent law, can entitle the manufacturer 
 to a patent. It may afford evidence of judgment and skill in the selection 
 and adaptation of the materials in the maimfacture of the instrument for 
 the purposes intended, but nothing more." — Klein v. Seattle, 77 Fed. 200- 
 23 C. C. A. 114. 
 
 See also Hicks v. Kelsey, 18 Wall. 670; Dunbar v. Myers, 94 U. S. 187; 
 Florsheim v. Schilling, 137 U. S. 64. 
 
 A mere change of curvature, or of form, or to a veneer from a single piece 
 does not involve invention. — Brunswick v. Phelan, 79 Fed. 85 ; 24 C. C. A. 451. 
 Hicks V. Kelsey, 18 Wall. 670. 
 
 Each element, taken by itself, has its own effect, and it is also difficult to 
 understand how it was that the practised eye of skilled mechanics did not 
 at once see and apply the necessary remedy to the troublesome evil which 
 the invention removes. The fact however, that such an evil long existed, 
 and that no mechanic perceived or appfied the remedy, is the most conclusive 
 evidence that something more than his eyes and skill were required to dis- 
 cover and apply the requisite device. If nought but the skill of the mechanic 
 v/as required to make this improvement it is passing strange that no mechanic 
 ever made it until after Martin discovered and described it. The best evi- 
 dence that the application of the internal-spur-wheel of the new use of pro- 
 pelling the machinery of a windmill would not occur to a person of ordinary 
 mechanical_ skill, is that it did not occur to any one of them in all the years 
 in which windmills had been in use before Martin discovered and applied it. 
 — Mast V. Dempster, 82 Fed. 327; 27 C. C. A. 191. But see 177 U. S. 485. 
 
 Electric v. LaRue, 139 U. S. 601; Crane v. Price, Web. Pat. C. 409; Potts v 
 Creager, 155 U. S. 597; Thomson v. Bank, 53 Fed. 250; Loom Co. v. Higgins 
 105 U. S. 580; Consolidated v. Crosby, 113 U. S. 157; Magowan v. Packine; Co' 
 141 U. S. 332; Barbed Wire Pat. 143 U. S. 275. 
 
 It is the mere adaptation by the art of skill already possessed to the me- 
 chanical and technical solutions of a new draft on its resources. When exist- 
 uig skill meets such demand, there is no exercise of the higher faculty of origi- 
 nal, creative invention. — Way v. McClarin, 96 Fed. 416 ; 37 C. C. A. 516. 
 
 Hollister v. Mfg. Co. 1 13 U. S. 59.
 
 § 656 INVENTION 603 
 
 § 656. Mechanical Skill — Definition and Distinction from 
 Invention. 
 
 An instrument of manufacture which is the result of mechanical skill 
 merely is not patentable. Mechanical skill is one thing; invention is a dif- 
 ferent thing. Perfection of workmanship, however much it may increase 
 the convenience, extend the use, or diminish expense, is not patentable. 
 The distinction between mechanical skill, with its conveniences and advan- 
 tages and inventive genius, is recognized in all the cases. — Reckendorfer v. 
 Faber, 92 U. S. 347; 23 L. Ed. 719. 
 
 Rubber v. Howard, 20 Wall. 498; Curtis, sec. 726. 
 
 The improvement consists in simply taking a material well known and 
 long used, and constructing a pavement in a method well known and long 
 used. It is plain that the improvement described in the patent was within 
 the mental reach of any one skilled in the art to which the patent relates, 
 and did not require invention to devise it, but only the use of ordinary judg- 
 ment and mechanical skill. It involves merely the skill of a workman and 
 not the genius of an inventor. — Phillips v. Detroit, 111 U. S. 604; 28 L. Ed. 
 532; 4 S. Ct. 580. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Hailes v. Van Wormer, 20 Wall. .353; 
 Smith V. Nichols, 21 Wall. 112; Reckendorfer v. Faber, 92 U. S. 347; Atlantic 
 V. Brady, 107 U. S. 93; Howe v. Abbott, 2 Story, 190; Key v. Marshall, 8 Clark 
 & F 245- Stimpson v. Woodman, 10 Wall. 117; Pencil v. Howard, 20 Wall. 498; 
 Slawson v. R. R. 107 U. S. 649; King v. Gallun, 109 U. S. 99. 
 
 Criteria by which one may be distinguished from the other in ]\IcClain v. 
 Ortmayer, 141 U. S. 419; 35 L. Ed. 800; 12 S. Ct. 76. 
 
 It is not easy to draw a line that separates the ordinary skill of a mechanic 
 versed in his art from the exercise of patentable invention, and the difficulty 
 is especially great in the mechanic arts, where the successive steps in improve- 
 ments are numerous, and where the changes and modifications are introduced 
 by practical mechanics. — Krementz v. Cottle, 148 U. S. 556; 37 L. Ed. 558; 
 13 S. Ct. 719. 
 
 The task of distinguishing between invention and the power of adaptation 
 possessed by a skillful mechanic is not always an easy one, nor have the 
 courts apparently succeeded in formulating a proposition to cover all cases. 
 While the statutes require that a patent, to be valid, must disclose invention 
 and novelty, yet the degree or amount of invention required is not pre- 
 scribed and, from the nature of the case, cannot be. — Hillborn v. Hale, 69 
 Fed. 9.58; 16 C. C. A. 569. 
 
 It is true, as contended by counsel for the appellants, that no general defini- 
 tion has been found which clearly marks the distinction between invention and 
 mechanical skill, and it is always difficult, and ofttimes impossible, to de- 
 termine with certainty that the conception of a device v/as " spontaneous, 
 and by a necessity of human reasoning," and that any doubt in that regard 
 should then be resolved in favor of invention, unless it is clearly placed within 
 the domain of mere mechanical construction by some of the well settled 
 rules of the patent law. — Baldwin v. Kresl, 76 Fed. 823; 22 C. C. A. 593. 
 
 Long practice and observation naturally lead those familiar with the arts 
 to the perception of new adaptations. Mechanical education and skill, 
 fostered and promoted by the public, are rapidly advancing in every direc- 
 tion, and there is a constant and universal endeavor in handicraft to utilize 
 that which is known, and press it into service in practical arts. But the steps
 
 604 THE FIXED LAW OF PATENTS § 656 
 
 of this normal progress and improvement are not invention, nor the subject 
 of monopoly to one who, in the exercise of the " skill of his calling," has put 
 an old thing to a new use. — Capital v. Kinnear, 87 Fed. 333; 31 C. C. A. 3. 
 
 The line between mechanical ingenuity and invention is sometimes very 
 hard to draw. It is a question of fact, and one upon which the opinions of 
 men differ. In the present case, this court differs from the court below, and 
 holdB invention to be present in the Morrison device. — Kisinger-Ison v. 
 Bradford, 97 Fed. 502; 38 C. C. A. 300. 
 
 No one has yet been able to formulate a test whereby a line of demarkation 
 between the products of the inventor's intuition and the results of the skill 
 of the mechanic may be surely drawn in all cases as they arise. That ques- 
 tion is and always must be left for determination by a careful exercise of the 
 judgment, enlightened by a knowledge of the state of the art and of the ad- 
 vance in it which the device in question makes, and guided by the established 
 rules and principles of the law. The two classes of cases led by Atlantic 
 Works V. Brady, 107 U. S. 192, and Loom Co. v. Higgins, 105 U. S. 580, have 
 been again cited and reviewed for our guidance. — Kinloch v. Western, 113 
 Fed. 659; 51 C. C. A. 369. 
 
 There will always be a point where ordinary mechanical skill and invention 
 are so closely associated as to make it difficult to say upon which side of the 
 hne the particular matter lies. Where this is the case the doubt should be 
 settled in favor of the patent. But by analogy to a number of well-known 
 precedents we have no trouble in holding that the present case (the use of 
 zinc to hold a frog-plate in place, zinc having been used analogously) is not 
 one of invention. — Johnson v. Toledo, 119 Fed. 885; 56 C. C. A. 415. 
 
 Mfg. Co. V. Gary, 147 U. S. 623; Penn. v. Locomotive, 110 U. S. 490; Mast v. 
 Stover, 177 U. S. 485; Stearns v. Russell, 85 Fed. 218; Ansonia v. Electrical, 
 144 U. S. 11; Schreiber v. Grimm, 72 Fed. 671; Aron v. Railroad, 132 U. S. 84; 
 Brown v. Piper, 91 U. S. 37; Roberts v. Ryer, 91 U. S. 150; Griswold v. Wagner, 
 68 Fed. 494. 
 
 It is not necessary to the patentable novelty of a deince, which consists 
 in employing a new material for an old one in constructing one of its parts, 
 that the substitution should involve the discovery or utilization of an un- 
 known or unexpected property of the material. This is one of the tests of 
 patentable novelty, but it is not the only one. Whether the feature of nov- 
 elty is the employment of a new material, or a change of adaptation in other 
 respects, the inquiry always is whether what was done involved the exercise 
 of inventive faculty as distinguished from the ordinary skill of the calling. 
 When the substitution has accomplished a result which those skilled in the 
 art had long and vainly sought to effect, the evidence that it involved some- 
 thing beyond the skill of the calling is so persuasive that it generally re- 
 solves the inquiry in favor of patentable novelty. — Frost v. Cohn, 119 Fed. 
 505; 56 C. C. A. 185. 
 
 The law does not allow mere mechanical skill to usurp the place of in- 
 vention, which involves higher thought, and brings different faculties into 
 activity. It will not allow one to take from the public that which the public 
 already has, or grant exclusive privilege which the patent confers without 
 consideration. It therefore is the duty of the courts, which, in the last 
 analysis, are the guardians of the public interest, to scrutinize with care 
 every attempt to establish the monopoly which the patent gives, to examine 
 the state of the art, and to see if the idea expressed in the invention has ever 
 been communicated to the public, and was in such a stage of development
 
 § 657 INVENTION 605 
 
 in a prior patent that a skilled mechanic working upon the plan or principle 
 therein suggested, could by mechanical means attain the result which the 
 patentee attains. To constitute anticipation the previous patent should not 
 only suggest the idea, but indicate the means and essential elements so dis- 
 tinctly that a mechanic versed in the art, in the light of the patent and of 
 the state of the art at the time the same was granted, and not in the light 
 of subsequent discoveries, could make, construct and practise the invention 
 without the exercise of his own inventive skill. — Imperial v. Crown, 139 
 Fed. 312; 71 C. C. A. 442. 
 
 For a long and labored discussion of the questions of mechanical skill, 
 invention, utility as evidencing invention, and prior unsuccessful attempts 
 to attain an end as evidence of invention, see Imperial v. Crown, 139 Fed. 
 312; 71 CCA. 442. 
 
 § ^57. Mechanical Skill — Degree of Knowledge and Skill. 
 
 The improvement consists in simply taking a material well known and 
 long used, and constructing a pavement in a method well known and long 
 used. It is plain that the improvement described in the patent was within 
 the mental reach of any one skilled in the art to which the patent relates, 
 and did not require invention to devise it, but only the use of ordinary judg- 
 ment and mechanical skill. It involves merely the skill of the workman and 
 not the genius of the inventor. — PhiUips v. Detroit, HI U. S. 604; 28 L. Ed. 
 532; 4 S. Ct. 580. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Hailes v. Van Wormer, 20 Wall. 353; 
 Smith V. Nichols, 21 Wall. 112; Reckendorfer v. Faber, 92 U. S. 347; Atlantic 
 V. Brady, 107 U. S. 193; Howe v. Abbott, 2 Story, 190; Key v. Marshall, 8 Clark 
 & F. 245; Stimpson v. Woodman, 10 Wall. 117; Pencil v. Howard, 20 Wall. 
 498; Slawson v. R. R. 107 U. S. 649; King v. GaUun, 109 U. S. 99. 
 
 As soon as the mischief became apparent, and the remedy was seriously 
 and systematically studied by those competent to deal with the subject, 
 the present regulation was promptly suggested and adopted, just as a 
 skilled mechanic, witnessing the performance of a machine inadequate 
 by reason of some defect, to accomplish the object for which it had been 
 designed; by the application of his common knowledge and experience, 
 perceives the reason of the failure and supplies what is obviously wanting. 
 It is but the display of the expected skill of the calling and involves only the 
 exercise of the ordinary faculties of reasoning upon the materials supplied 
 by a special knowledge, and the faculty of manipulation which results from ^ 
 the habitual and intelligent practice; and is in no sense the creative work of 
 the inventive faculty which it is the purpose of the Constitution and the 
 patent laws to encourage and reward. — HoUister v. Benedict, 113 U. S. 59; 
 28 L. Ed. 901; 5 S. Ct. 717. 
 
 The suggestion of such a change as would occur to the rudest and most 
 unskilled mechanic could not be called invention, and ought not to be dig- 
 nified by letters patent. — Yale v. Greenleaf, 117 U. S. 554; 29 L. Ed. 952; 
 6 S. Ct. 846. 
 
 Atlantic v. Brady, 107 U. S. 192; Slawson v. Grand, 107 U. S. 649; PhiUips 
 V. Detroit, 111 U. S. 604. 
 
 Given a disk-shaped file with a continuous cutting surface that clogs and 
 chatters in action, and the plain statements of the patents to Keebles and 
 Prescott which declare that the remedy for that evil is a broken cutting sur- 
 face, and the problem Wright claims to have solved becomes so simple that 
 one who is not a mechanic could hardly fail to perceive that the evil would
 
 606 THE FIXED LAW OF PATENTS §§ 658-659 
 
 be remedied by cutting off the sides of the disk. This was all that Wright 
 did. — Samson v. Donaldson, 69 Fed. 621 ; 16 C. C. A. 342. 
 
 Stirrat v. Mfg. Co. 61 Fed. 980; Atlantic v. Brady, 107 U. S. 192; Vinton v. 
 Hamilton, 104 U. S. 485; Slawson v. Railroad, 107 U. S. 649; King v. Galliin, 
 109 U S. 99; Double Pointed v. Two Rivers, 109 U. S. 117; Estey v. Burdett, 
 109 U. S. 633; Busey v. Mfg. Co. 110 U. S. 131; Phillips v. Detroit, 111 U. S. 
 604; Morris v. McMillin, 112 U. S. 244. 
 
 Although his pertinacity, diligence, money and skill has made his machine 
 a success, his improvements are not thereby taken out of the domain of 
 mechanical skill. — Birmingham v. Gates, 78 Fed. 350; 24 C. C. A. 132. 
 
 Atlantic v. Brady, 107 U. S. 199. 
 
 The need, such as it was, was not obscure; and granting that the remedy 
 was not obvious to the ordinary mechanic, possessed of only the common 
 skill and learning of his profession, yet, to one who was conversant, as Brown 
 is necessarily presumed to have been, with the devices which scientific learn- 
 ing had already given to the world and had employed in this very art, it 
 was not far to seek, and, indeed, was manifest. — Brown v. King, 107 Fed. 
 498; 46C. C. A. 432. 
 
 Note: The soundness of this rule is seriously questioned. It is doubtful 
 if it may be left to the Chancellor, to determine by his own judgment, the par- 
 ticular status of the particular engineer to whom the test of mechanical 
 skill is to be applied. If this already shadowy rule may be made further ob- 
 scure by giving the Court the right to determine the degree of intelligence 
 and education necessarily possessed by the inventor, the rule would seem 
 to be so vague as to have lost all of its usefulness. 
 
 This is apparent (that it was mere mechanical skill) from the fact that 
 Brown and Gilmour each left this to the judgment of the workman or drafts- 
 man whom he employed. In view of the Little patent it did not involve 
 invention to supply the means. They were at hand in the prior art. — Lin- 
 coln V. McWhirter, 142 Fed. 967 ; 74 C. C. A. 229. 
 
 Mast V. Stover, 177 U. S. 493; Aron v. Manhattan, 132 U. S. 84. 
 
 § 658. Mechanical Skill — Dividing or Uniting Parts. 
 
 The prior art shows and the patent admits that such a thing in two pieces 
 was old. That it does not involve invention merely to make such a lining 
 in one piece is well settled. Howard v. Detroit, 150 U. S. 164; Standard v. 
 Caster, 113 Fed. 162. Nor would the mere fact that the one-piece device was 
 cheaper or more durable constitute invention when such results were merely 
 such ordinary consequences of dispensing with joints as would naturally 
 be anticipated by the workman. Mfg. Co. v. Holzer, 67 Fed. 907. — General 
 V. Yost, 139 Fed. 568; 71 C. C. A. 552. 
 
 The hopper formed of two annular sections does not alter the operation 
 of the crusher. Was this more than the employment of obvious mechanical 
 expedients which would naturally occur to a skilled mechanic or engineer 
 in the intelligent practice of his calling? We think not. To divide into parts 
 what cannot be conveniently handled as a whole is elementary, if not in- 
 stinctive, and to make the division of circular objects along circular lines 
 has long been common. — Gates v. Overland, 147 Fed. 700; 78 C. C. A. 88. 
 
 Atlantic v. Brady, 107 U. S. 192; Hendy v. Miners', 127 U. S. 370. 
 
 § 659. Mechanical Skill — Improvement. 
 
 The plan covered by the claims is not " the creative work of that inventive 
 faculty which it was the purpose of the constitution and the patent laws
 
 §§ 660-661 INVENTION 607 
 
 to encourage and reward." To sustain these claims would be to sanction 
 a monopoly in that which belongs to the public. — Westinghouse v. Edison, 
 63Fed.5SS; 11 CCA. 342. 
 
 Hollister v. Mfg. Co. 113 U. S. 59; Atlantic v. Brady, 107 U. S. 192. 
 
 A mere improvement in operation by the employment of well known ele- 
 ments and combinations in a well known art with no change of result is not 
 of itself necessarily invention. — Excelsior v. Foote, 79 Fed. 442 ; 24 C C A. 
 673. 
 
 Indeed, while Scribner, in the earlier patent, may not have contributed 
 to electrical knowledge the exact concept embodied in the inner combination 
 of the patent suit, but did contribute there to the thought that led up to his 
 later thought. — Western v. Galesburg, 144 Fed. 684; 75 C C A. 500. 
 
 § 66o. Mechanical Skill — Increased Efficiency. 
 
 It is no more than mechanical skill to perform with increased speed a 
 series of surgical operations old in themselves and in the order in which they 
 were before performed. — International v. Gaylord, 140 U. S. 55; 35 L. Ed. 
 347; 11 S. Ct. 716. 
 
 A more thorough doing of that which has already been done is not inven- 
 tion. — Ansonia v. Electrical, 144 U. S. 11; 36 L. Ed. 327; 12 S. Ct. 601. 
 
 § 66 1. Mechanical Skill — Old Device, Analogous Use. 
 
 The mere adaptation of an old device to an analogous use to produce a 
 known result with no other change than the substitution of a figured roller 
 for a smooth one is not invention. — Stimpson v. Woodman, 77 U. S. 117; 
 19 L. Ed. 866. 
 
 The adaptation of an old device to an analogous use by a well known 
 means of application does not involve invention. — Bussey v. Excelsior, 
 IIOU.S. 131; 28L. Ed. 95; 4S. Ct. 38. 
 
 The employment of a device which would naturally suggest itself to any 
 mechanic, used within the range of common knowledge and experience, and 
 used here to perform an office exactly analogous to that in which it has been 
 frequently formerly used is not invention. — Day v. Fair Haven, 132 U. S. 
 98; 33 L. Ed. 265; 10 S. Ct. 11. 
 
 Substituting a routing machine to perform that which was formerly done 
 by hand to accomplish the same end is not invention. — Corbin v. Eagle, 
 150 U. S. 38; 37 L. Ed. 989; 14 S. Ct. 28. 
 
 The devising of means by which the temperature of the flowing water should 
 be varied at different parts of the column, involved nothing but mechanical 
 skill, and was plainly disclosed by Richter's patent. The question where the 
 cooler water ought to be introduced and what the variations in temperature 
 ought to be, were questions for experiment, and are not answered by any- 
 thing in the patent. — Solvay v. Michigan, 90 Fed. 818; 33 C C A. 285. 
 
 Stearns v. Russell, 83 Fed. 218; Steiner v. Adrian, 59 Fed. 132. 
 
 That the use of well-known mechanical means or well-known mechanical 
 methods to perform known functions, where the result is merely more effec- 
 tive, is only mechanical skill, see U. S. Peg- Wood v. Sturtevant, 125 Fed, 
 378; 60 C C A. 244.
 
 508 THE FIXED LAW OF PATENTS §§662-663 
 
 Bates V Keith, 82 Fed. 100; affd. 84 Fed. 1014; Nutter v. Brown, 98 Fed. 892; 
 Consolidated v. Holzer, 67 Fed. 907. 
 
 Its location in its new environment evinced merely good judgment, and 
 the sli'^ht changes necessary for the suitable adaptation of the associated 
 parts evinced only ordinary mechanical skill. In short, the patentee invented 
 no new device; he used it for no new purpose; he applied it to an old com- 
 bination All he did was to apply it to an old purpose m a different but old, 
 combination. This does not rise to the dignity of invention. — Bradley v. 
 Eccles, 143 Fed. 521 ; 74 C. C. A. 478. 
 
 Mast V. Stover, 177 U. S. 493. 
 
 § 662. Mechanical SkiU — Old Device, New Use. 
 
 That mere combination of old devices is mechanical skill, see Clark v. 
 Ferguson, 119 U. S. 335; 30 L. Ed. 406; 7 S. Ct. 387. 
 
 Vinton V. Hamilton, 104 U. S. 485; Hall v. Macneale 107 U. S. 90; Atlantic 1; 
 Bradv 107 U. S. 192; Slawson v. Grand, 107 U. S. 649; Kmg v. Gallun 109 
 U S. 99; Double Pointed v. Two Rivers, 109 U. S. 117; Esty v. Burdett, 109 U. 
 S '633- Bussey v. Excelsior, 110 U. S. 131; Penna. v. Locomotive, 110 L. b. 490; 
 Phmips.. Detroit. Ill U. S. 604; Morris v. McMillin 112 U. S. 244, Holhster 
 V. Benedict, 113 U. S. 59; Thompson v. Boissiher 114 U S^ 1 ; Stephenson 
 V Brooklyn, 114 U. S. 149; Yale v. Greenleaf, 117 U. S. 554; Gardner v. Herz, 
 118 U. S. 180. 
 
 Adaptation of an old device to a new use is presumably no more than 
 mechanical skill. — Knapp v. Morss, 150 U. S. 221 ; 37 L. Ed. 1059 ; 14 S. Ct. 
 81. 
 
 Aron V. Manhattan, 132 U. S. 85. 
 
 The mechanical adaptation of a machine capable of large general use, 
 such as the Blanchard former, to a specific use, such as a sole rounder in- 
 volves only mechanical skill. — Gibbon v. Loewer, 79 Fed. 325; 24 C. L. A. 
 612. 
 
 Howe V, National, 134 U. S. 383. 
 
 As the inventor of a machine is entitled to all the uses to which it may be 
 put it is not invention to apply that machine to a specific use after the patent 
 has expired. — Gibbon v. LoeWer, 79 Fed. 325; 24 C. C. A. 612. 
 
 Ansonia v. Electrical, 144 U. S. 11. 
 
 § 663. Mechanical Skill — Old Elements, Old Result. 
 
 Combination of old elements which perform no new function and accom- 
 plish no new result does not involve patentable novelty. — Knapp v. Morss, 
 150U. S. 221; 37 L. Ed. 1059; 14 S. Ct. 81. 
 
 If he has greatly increased the effectiveness of the mechanism he claims, 
 his patent may be sustained, although his elements are old and no original 
 result is accomplished, under the principle of Loom Co. v. Higgins, 105 U. S. 
 580. — Muller v. Lodge, 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Barbed Wire Patent, 143 U. S. 275; Topliff v. Topliff, 145 U. S. 156. 
 
 It is a settled rule of law that the mere combination of several_ parts, 
 chosen from old machines in the same art, to perform in a new machine the 
 same functions which they performed in the old machines, where the adapta- 
 tions are such as require only the skill of a mechanic trained in the art, is 
 not patentable as an invention. — Smith v. Ridgly, 103 Fed. 875; 43 
 C. C. A. 365.
 
 §§ 664-666 INVENTION 609 
 
 § 664. Mechanical Skill — Portability. 
 
 Merely putting rollers under an article, so as to make it movable when 
 without rollers It would not be movable, does not involve the inventive 
 faculty. - Hendy v. Golden, 127 U. S. 370; 32 L. Ed. 207- 8 S Ct 1275 
 
 Atlantic r Brady, 107 US. 192; Thompson v. Boissilier, 114 U. S. 1- Yale't, 
 Greenleaf, 117 U. S. 554; Pomace v. Ferguson, 119 U. S. 335. 
 
 The Po/tability of a device is not patentable. — Black Diamond v. Ex- 
 celsior, 156 U. S. 611 ; 39 L. Ed. 553; 15 S. Ct. 482. 
 Hendy v. Golden, 127 U. S. 370. 
 
 § 665. Mechanical Skill — Strengthening or Increasing. 
 
 What is sought in all these patents is strength and lightness, together 
 with cheapness and durability, but they are simply modes of construction. 
 And that described in this patent embraces nothing that is not old and reallv 
 nothing that is patentable, that is, which involves invention rather than 
 mechanical skill. — Pattee v. Kingman, 129 U. S. 294; 32 L. Ed. 700- 9 
 o. Ct. 389. ' 
 
 It would certainly seem that the proportioning of parts was the work of 
 Fed Is^Ts C^'c A *241 ^"^ *"''®''^°'- ~ American v. Driggs-Seabury, 109 
 
 That strengthening parts by ordinary mechanical devices and mechanical 
 skill does not constitute invention, see American v. Wyeth, 139 Fed. 389- 
 71 C. C. A. 485. ' ' ' 
 
 V. Wortesteri2fFe^d.l7^"- "^' ^^^^^"^ "^ ^'"^"^ ^^P^^^' ^'^ ^ed. 511; Eames 
 
 It was a mere question of extent or degree, of an increase of the size of 
 
 ^l'i^'S^A''L'i^''l^^n''nT ^o!?Pletely fulfil its purpose. - Streit v. Kaiper, 
 I4d l*ea. 981; /5 C. C. A. 167. 
 
 14? U*V-.4^^M ' f^^l ^^?' ^rA "i-.^r'y' 1-^3 U. S. 349; Grant v. Walter, 
 148 U. S. 547; Market v. Rowley, 155 U. S. 621; Fox v. Perkins, 52 Fed 205- 
 Galvin V. Grand Rapids, 115 Fed. 511; Eames v. Worcester, 123 Fed! 67 
 
 § 666. Mechanical Skill — Miscellaneous Decisions. 
 
 The mere addition of a cinder notch to a blast furnace, to perform the 
 same function it had performed in a cupola furnace did not involve inven- 
 tion. — Vinton V. Hamilton, 104 U. S. 485; 26 L. Ed. 807. 
 
 The suggestion of such a change as would occur to the rudest and most 
 "^i J u ."^^^h^nic could not be called invention and ought not to be die- 
 fi Q n/ h^i""'^ P""^®''*- ~ ^^^^ '"■ Greenleaf, 117 U. S. 554; 29 L. Ed. 952- 
 
 V. DetToh! llf u!^S. 604 ^' ^' ^^^' ^''''''°" ""• ^'^""^^ ^^^ ^- ^- ^^^^ ^^^^'P^ 
 
 iv^£h!m'^z2rlfl ct''6o^''^''^'°"' '^^ '^"'''"'^ ''• ^^^'^"^^'' ^^ u. s. 
 
 Simply to do by a steam attachment, without novelty of application or 
 operation what had previously been done by hand does not disdose inven' 
 tion. — StiUwell-Bierce v. Eufaula, 117 Fed. 410; 54 C. C. A. 584. 
 
 r.J^^l ^^^ improvement being a perfectly self-evident step which would 
 occur to any mechanic, and being the natural and only change that could
 
 610 THE FIXED LAW OF PATENTS §667 
 
 be made to meet the demand is mere mechanical skill, see American v. 
 Morris, 142 Fed. 166; 73 C. C. A. 384. 
 
 § 667. Novelty — Definitions and Distinctions. 
 
 It is an elementary proposition in patent law, that, to entitle a plaintiff 
 to recover for the violation of a patent, he must be the original inventor, 
 not only in relation to the U. S. but to other parts of the world. Even if the 
 plaintiff did not know that the discovery had been made before, still he cannot 
 recover if it had been in use or described in public prints, and if he be not in 
 truth the original inventor. — Sewall v. Jones, 91 U. S. 171 ; 23 L. Ed. 275. 
 
 Dawson v. FoUen, 2 Wash. C. C. 311; Bedford 7'. Hunt, 1 Mas. 302. 
 
 Hotchkiss V. Greenwood, 11 How. 248, does not decide that no use of one 
 material in lieu of another in the formation of a manufacture can, in any case, 
 amount to invention, or be the subject of a patent. If such a substitution 
 involves a new mode of construction, or develops new uses and properties 
 of the article formed, it r.iay amount to invention. The substitution may 
 be something more than formal. It may require contrivance, in which case 
 the mode of making it would be patentable ; or the result may be productive 
 of an analogous but substantially different manufacture. — Smith v. Good- 
 year, 93 U. S. 486; 23 L. Ed. 952. 
 
 Hicks V. Kelsey, 18 Wall. 670; Crane v. Price, 1 Web. P. C. 393; Knease v. 
 Bk. 4 Wash. C. C. 9. 
 
 The degree of ability necessary to constitute patentable invention must 
 be beyond ordinary mechanical skill. — Dunbar v. Meyers, 94 U. S. 187; 
 24 L. Ed. 34. 
 
 Hotchkiss V. Greenwood, 11 How. 267; Phillips v. Paige, 24 How. 167; Jones 
 i> Morehead, 1 Wall. 162; Stimpson v. Woodman, 10 Wall. 121; Hicks v. Kelsey, 
 18 Wall. 670; Brown v. Piper, 91 U. S. 38; Smith v. Nichols, 21 Wall. 115; Howe 
 V. Abbott, 2 Story, 194; Bean i;.' Smallwood, 2 Story, 411; Glue v. Upton, 6 
 O. G. 842, 7 O. G. 648. 
 
 Exclusive rights of the kind are granted only to inventors or discoverers 
 of some new and useful art, machine, manufacture or composition of matter 
 or some new and useful improvement thereof; and the law is well settled 
 that nothing short of invention or discovery will support a patent for any 
 such alleged new and useful improvement. Certain other important condi- 
 tions are also annexed to the exercise of the right to obtain such a muniment 
 of title for such an invention or discovery; as, for example, the improvement 
 must not only be new and useful, but it must be one not known or used by 
 others in this country and not patented or described before the invention 
 or discovery in any printed publication in this or any foreign country, and 
 must not have been in public use or on sale more than two years prior to 
 the application for a patent. — Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 
 384. 
 
 Collar V. Van Dusen, 23 Wall. 531; Dunbar v. Meyers, 94 U. S. 187. 
 
 All improvement is not invention, and entitled to protection as such. 
 Thus to entitle it, it must be the product of some exercise of the inventive 
 faculties, and it must involve something more than what is obvious to per- 
 sons skilled in the art. — Packing Company Cases, 105 U. S. 566; 26 L. Ed. 
 1172. 
 
 Quoting from Pearce v. Mulford, 102 U. S. 112. 
 
 Rubber Tip v. Howard, 87 U. S. 498; Hotchkiss v. Greenwood, V How. 248; 
 Stimpson v. Woodman, 77 U. S. 117.
 
 §667 INVENTION 611 
 
 In passing upon the novelty of the alleged improvement covered by this 
 patent we are permitted to consider matters of common knowledge or things 
 in common use. — Phillips v. Detroit, 111 U. S. 604; 28 L. Ed. 532; 4 S. Ct. 
 580. 
 
 Brown v. Piper, 91 U. S. 37; Terhune v. Phillips, 99 U. S. 592; King v. Gallun, 
 109 U. S. 99; Ah Kow v. Nimen, 5 Sawy. 552. 
 
 Novelty and utility regardless of the inventive act do not confer patenta 
 bility. — Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158; 6 S. Ct. 1027. 
 Thompson v. Boisselier, 114 U. S. 1; Yale v. Greenleaf, 117 U. S. 554. 
 
 What constitutes, see Clark v. Ferguson, 119 U. S. 335; 30 L. Ed. 406; 
 7 S. Ct. 382. 
 
 Vinton v. Hamilton, 104 U. S. 485; Hall v. Macneale, 107 U. S. 90; Atlantic 
 V. Brady, 107 U. S. 192; Slawson v. Grand, 107 U. S. 649; Kins v. Gallun. 109 
 U. S. 99; Double Pointed v. Two Rivers, 109 U. S. 117; Esty v. Burdett, 109 
 U. S. 63.3; Bussey v. Excelsior, 110 U. S. 131; Penna. v. Locomotive, 110 U. S. 
 490; Phillips v. Detroit, 111 U. S. 604; Morris v. McMillin, 112 U. S. 244; Hol- 
 lister V. Benedict, 113 U. S. 59; Thompson v. Boisselier, 114 U. S. 1; Stephenson 
 V Brooklyn, 114 U. S. 149; Yale v. Greenleaf, 117 U. S. 554; Gardner v. Herz, 
 118 U. S. 180. 
 
 This court has repeatedly held that, under the Constitution and the Acts 
 of Congress, a person, to be entitled to a patent, must have invented or dis- 
 covered some new and useful art, machine, or some new and useful improve- 
 ment thereof, and that " it is not enough that a thing shall be new in the 
 sense^that in the shape or form in which it is produced it shall not have been 
 before known, and that it shall be useful," but it must, under the Constitu- 
 tion and the Statute, amount to an invention or discovery. — Hill v. Woos- 
 ter, 132 U. S. 693; 33 L. Ed. 502; 10 S. Ct. 228. 
 
 Thompson v. Boisselier, 114 U. S. 1; Stephenson v. Brooklyn, 114 U. S. 149: 
 Yale V. Greenleaf, 117 U. S. 554; G.irdner v. Herz, 118 U. S. 180; Pomace v. 
 Ferguson, 119 U. S. 335; Hendy i'. Golden, 127 U. S. 370; Holland v. Shipley, 
 127 U. S. 396; Pattee v. Kingman, 129 U. S. 294; Brown v. D. C. 130 U. S. 87; 
 Day V. Fair Haven, 132 U. S. 98; Watson v. Cincinnati, 132 U. S. 161; Marchand 
 V. Emken, 132 U. S. 195; Royer v. Roth, 132 U. S. 201. 
 
 The cheaper article is not always the better one. The substitution of 
 one material for another, or the reduction or increase in size or weight, is not 
 proof of invention. Such changes result from observation and experience, 
 and most frequently are only the carrying forward of the plans and sugges- 
 tions which have been already made by others. It is not enough that a thing 
 shall be new in the sense that in the shape or form in which it is produced 
 it shall not have been known, and that it shall be useful, but it must amount 
 to an invention or discovery. — Bonnell v. Stoll, 61 Fed. 767; 10 C. C. A. 48. 
 
 Thompson v. Boisselier. 114 U. S. 11; Esty v. Burdett, 109 U. S. 633; Penna. 
 V. Locomotive, 110 U. S. 490; Hollister v. Mfg. Co. 113 U. S. 59; Burt v. Evory, 
 133 U. S. 349; French v. Carter, 137 U. S. 239. 
 
 Every novelty, in some sense, brings a new result, but whether the new 
 result is such, within the meaning of the decisions, is a very different ques- 
 tion. These words are very far from furnishing a universal solvent. Some- 
 times the character of the new result is such as appeals directly to the trained 
 mind, as well as to the ordinary one. But usually the novelty of the result 
 is only one fact to be weighed in the mass with others. — Consolidated v. 
 Holtzer, 67 Fed. 907; 15 C. C. A.. 63. 
 
 The subject (electricity) is one of the most abstruse and subtle of all the 
 practical sciences, and its pursuit involves the exercise of the keenest in-
 
 612 THE FIXED LAW OF PATENTS § 668 
 
 telligence and most patient research that gifted man can bestow upon it. 
 We ought, therefore, to be cautious, when a distinct and practical improve- 
 ment is made in so useful an art, in denying to the author the reward which 
 the law gives to meritorious inventions. — Dayton v. Westinghouse, 118 
 Fed. 562; 55 C. C. A. 390. 
 
 But the fact that a thing is new does not prove that invention was present 
 any more than it establishes the other element of patentability — usefulness. 
 — American v. Choate, 159 Fed. 140; 86 C. C. A. 330. 
 
 Morris v. McMillin, 112 U. S. 244; Underwood v. Gerber, 149 U. S. 224. 
 
 § 668. Novelty — Evidence of. 
 
 The fact that a device might, by modification and change, be made to 
 perform a new and useful function other than the principal purpose of the 
 patent, does not establish novelty or utiUty. — Metropolitan v. Providence, 
 87 U. S. 342; 22 L. Ed. 303. 
 
 Where prior attempts have not been along the same line as that of the 
 patent in suit, such prior unsuccessful efforts do not evidence invention in the 
 successful device. — Butler v. Steckel, 137 U. S. 21 ; 38 L. Ed. 582; 11 S. Ct. 
 25. 
 
 • The fact that the change made was one which would have occurred only 
 to a person skilled in the art, and to him only after bestowing considerable 
 thought in overcoming difficulties, evidences the exercise of the inventive 
 faculty. — Gandy v. Main, 143 U. S. 587; 36 L. Ed. 272; 12 S. Ct. 598. 
 
 The question is, whether a contrivance is patentable which is thus novel 
 in structure and thus novel in its means and manner of using chloride of 
 sodium and surprisingly successful beyond example in accomplishing its 
 purposes. The use of ice as a cooling and of salt as a preserving agent is 
 as old as human knowledge ; but the means and manner of employing them 
 in these functions may be infinite, opening a wide field for experiment and 
 invention ; and when a device is fallen upon which produces unprecedented 
 and unequalled results in the use of these famihar agents, that device may 
 possess a very high degree of patentable merit. Moreover, the device itself 
 may be a combination of several elementary devices, each as familiar to 
 the public as the letters of the alphabet ; yet the combination of them may, 
 as whole, possess an extraordinary novelty and utility. — Haffcke v. Clark, 
 50 Fed. 531 ; 1 C. C. A. 570. 
 
 Harrison v. Foundry, 1 App. Cas. 574; Murray v. Clayton, 7 Ch. App. 577; 
 Furbush v. Cook, 2 Fish. P. C. 668; Ryan v. Goodwin, 3 Sumn. 514. 
 
 We conclude, therefore, that in applying to cases of doubt the primary 
 rules touching what constitutes invention and the secondary rules touching 
 what is a " new and useful result," a " new function," or a " new sphere of 
 action," we may be influenced by the facts that the improvement in question, 
 although desired for years, was not secured until brought out by the patentee ; 
 that the product of the improved machine or process went into general use, 
 and displaced wholly or in a very large degree, prior products. — Watson v. 
 Stevens, 51 Fed. 757; 2 C. C. A. 500. 
 
 Novelty of combination does not establish invention. — Lamson v. Hill- 
 man, 123 Fed. 416; 59 C. C. A. 510. 
 
 Interior v. Perkins, 80 Fed. 528; Kelly v. Clow, 89 Fed. 297; Busell v. Stevens, 
 137 U. S. 423.
 
 §§ 66&-670 INVENTION 613 
 
 This precise combination in its entirety was novel; but mere novelty is 
 not invention, when the teachings of the art would naturally lead one skilled 
 therein to produce such a combination whenever an improvement of that 
 sort was required. — Pieper v. Electro-Dental, 160 Fed. 930; 88 C. C. A. 112. 
 
 § 669. Novelty — Miscellaneous Rules. 
 
 The combination must be new; and if productive of new and useful re- 
 sults and not a mere aggregation of results, it might be the subject of a 
 patent, though all the parts were used before. But here the combinations 
 patented as well as their separate elements, had been anticipated./ — Dane v. 
 Chicago, 131 U. S. cxxvi, app.; 23 L. Ed. 82. 
 
 Though it may be true that every one of these elements had been employed 
 before, yet they had never been used in the same combination and put to- 
 gether in the same manner as the inventor combined and arranged them, 
 so as to produce a result Hke his. — Ehzabeth v. American, 97 U. S. 126; 
 24 L. Ed. 1000. 
 
 In any view of the case, the specification describes nothing that the pat- 
 entee is entitled to claim ; but only what every one had a right to use with- 
 out his assistance. To sustain this patent would be to deprive the public 
 of the right to arrange and use a well known apparatus in the only way in 
 which its purpose can be beneficially accomplished. — Preston v. Manard, 
 116U. S. 661; 29L. Ed. 763; 6 S. Ct. 695. 
 
 Guidet V. Brooklyn, 105 U. S. 550; Flood v. Hicks, 2 Biss. 169; 4 Fish. P. C. 
 156; King v. Wheeler, 2 B. & A. 345; Macnamara v. Hulse, Car. & M. 4; Kayy. 
 MarshaU, 7 Scott, 548; S. C. 5 Bing. N. C. 492; 1 Beav, 535; 8 CI. & Fin. 245; 
 West. H. L. 682; 2 Web. P. C. 34, 68, 75, 77, 82, 84. 
 
 There is no novelty in applying an old device used for heating water by a 
 steam coil to a similar use in heating wines to age them. — Dreyfus v. Searle, 
 124 U. S. 60; 31 L. Ed. 352; 8 S. Ct. 390. 
 
 When an element in the combination performs no function and has no 
 mechanical effect it is not sufficient to constitute novelty in combination. 
 — Fond Du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 11 S. Ct. 98. 
 
 Pickering v. ]\IcCullough, 104 U. S. 310; Double Pointed v. Two Rivers, 109 
 U. S. 117; Stephenson v. Brooklyn, 114 U. S. 149; Hendy v. Golden, 127 U. S. 
 370; Aron v. Manhattan, 132 U. S. 84. 
 
 The question of novelty, though not pleaded, is before the court. — Rich- 
 ards V. Chase, 158 U. S. 299; 39 L. Ed. 991 ; 15 S. Ct. 831. 
 
 Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Brown v. 
 Piper, 91 U. S. 37. 
 
 § 670. Old Device, New Use — Aggregation. 
 
 With all the anticipatory devices before us, it is apparent that the mere 
 changes in the shape of the dies was a minor part of the work involved in 
 so changing the machine as to make it perform a wholly different function, 
 the invention consisting rather in the idea that such change could be made, 
 than in making the necessary mechanical alterations. — Hobbs v. Beach, 
 180 U. S. 383; 45 L. Ed. 586; 21 S. Ct. 409. 
 
 Beach v. American, 63 Fed. 597. 
 
 It is not invention to adapt two old devices to analogous uses and combin- 
 ing them into one machine, where each performs its own separate function,
 
 614 THE FIXED LAW OF PATENTS § 671 
 
 the result being the sum and not the product of the two functions, — Apple- 
 ton V. Star, 60 Fed. 411 ; 9 C. C. A. 42. 
 
 Penna. v. Locomotive, 110 U. S. 490; Brown v. Piper, 91 U. S. 37; Howe v. 
 Abbott, 2 Story, 190; Fuller v. Yentzer, 94 U. S. 288; Roberts v. Ryer, 91 U. S. 
 150; Stow V. Chicago, 104 U. S. 550; Heald v. Rice, 104 U. S. 755; Stimpson 
 V. Woodman, 10 Wall. 117; Tucker v. Spalding, 13 Wall. 453; Grant v. Walter, 
 148 U. S. 547. 
 
 § 671. Old Device, New Use — General Rules. 
 
 The application of an old process or machine to a similar or analogous 
 subject, with no change in the manner of application, and no result sub- 
 stantially distinct in its nature, will not sustain a patent, even if the new form 
 of result has not before been contemplated. 
 
 The leading case, most frequently cited, giving both American and Eng- 
 lish authorities. — Pennsylvania v. Locomotive, 110 U, S. 490; 28 L. Ed. 
 222; 4 S. Ct. 220. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Phillips v. Page, 24 How. 164; Jones 
 V. Morehead, 1 Wall. 155; Revg. 1 Fish. P. C. 521^ Hicks v. Kelsey, 18 Wall. 
 670; Smith v. Nichols, 21 WaU. 112; Brown v. Piper, 91 U. S. 37; Roberts v. 
 Ryer, 91 U. S. 150; Bridge v. Iron, 95 U. S. 274; Planing v. Keith, 101 U. S. 479; 
 Pearce v. Mulford, 102 U. S. 112; Heald v. Rice, 104 U. S. 737; Atlantic v. Brady, 
 107 U. S. 192; Crane v. Price, 4 Man. & G. 580; 5 Scott, (N. R.) 338; 1 Web. 
 P. C. 393; Dobbs v. Penn. 5 Exch.'427; Smith v. Dent. Co. 93 U. S. 486; Dental 
 V. Davis, 102 U. S. 222; Bush v. Fox, Macredy P. C. 152; 9 Exch. 651; 5 H. L. 
 Gas. 707; Brook v. Aston, 27 L. J. (N. S.) Q. B. 145; 8 El. & Bl. 478; Envelope 
 V. Seymer, 28 L. J. (N. S.) C. P. 22; 5 C. B. (N. S.) 164; Herwood v. G. N. R. Co. 
 11 H. L. Cas. 654. 
 
 The rule in Penna. v. Locomotive, 110 U. S. 490, quoted and followed. — 
 Blake v. San Francisco, 113 U. S. 679; 28 L. Ed. 1070; 5 S. Ct. 692. 
 
 It is not invention to adapt an old device used at sea to an analogous 
 use on land. — Blake v. San Francisco, 113 U. S. 679; 28 L. Ed. 1070; 5 
 S. Ct. 692. 
 
 The adaptation of an old device to a new and analogous use, involving 
 such changes only as would occur to any skilled mechanic is not invention. 
 — Peters v. Hanson, 129 U. S. 541 ; 32 L.Ed. 742; 9 S. Ct. 393. 
 
 Penna. v. Locomotive, 110 U. S. 490. 
 
 The adaptation of an old device to a new and analogous use, involving 
 such changes as would occur to any skilled mechanic, is not invention. — 
 Peters v. Active, 129 U. S. 530; 32 L. Ed. 738; 9 S. Ct. 389. 
 
 Penna. v. Locomotive, 110 U. S. 490. 
 
 Though the inventor be entitled to the merit of being the- first to employ 
 an old combination in a new and useful way, if the use be analogous, his right 
 to a patent must depend upon the novelty of means employed and not the 
 end accomplished. — Aron v. Manhattan, 132 U. S. 84; 33 L. Ed. 272; 10 
 S. Ct. 24. 
 
 If the adaptation required invention it was patentable ; but if, in view of 
 the state of the art it involved only mechanical skill it was not invention. — 
 Aron V. Manhattan, 1.32 U. S. 84; 33 L. Ed. 272; 10 S. Ct. 24. 
 
 Neither is it invention to combine old devices into a new article without 
 producing any new mode of operation. — Burt v. Evory, 133 U. S. 349; 
 33 L. Ed. 647; 10 S. Ct. 349.
 
 § 671 INVENTION 615 
 
 Stimpson V. Woodman, 77 U. S. 117; Heald v. Rice, 104 U. S. 737; HaU v, 
 Macneale, 107 U. S. 90; Hill v. Wooster, 132 U. S. 693. 
 
 The application of an old process or machine to a similar or analogous 
 subject, with no change in the manner of applying it, and no result substan- 
 tially distinct in its nature, will not sustain a patent, even if the new form 
 of result has not before been contemplated. — Howe v. National, 134 U. S. 
 388; 33 L. Ed. 963; 10 S. Ct. 570. 
 
 Penna v Locomotive, 110 U. S. 490; Thompson v. Boisselier, 114 U. S. 1; 
 Peters v. Active, 129 U. S. 530; Peters v. Hanson, 129 U. S. 542; Aron v. Manhat- 
 tan, 132 U. S. 84; Watson v. Cincinnati, 132 U. S. 161. 
 
 Merely putting an old device to a new use is not invention. — St. Germain 
 V. Brunswick, 135 U. S. 227; 34 L. Ed. 122; 10 S. Ct. 822. 
 
 The application of an old process, machine or device to a like or analogous 
 use, with no change in the mode of application and no result substantially 
 different in its nature, will not sustain a patent even if the new form of result 
 has not been before contemplated. — Consolidated v. Walker, 138 U. S. 124; 
 34 L. Ed. 920; U S. Ct. 292. 
 
 Penna. v. Locomotive, 110 U. S. 490; Blake v. San Francisco, 113 U. S. 679. 
 
 Nothing is better settled in this court than that the application of an old 
 process to a new and analogous purpose does not involve invention, even if the 
 new result had not been before contemplated. It is no new invention to use 
 an old machine for a new purpose. The inventor of a machine is entitled to 
 all the uses to which it can be put, no matter whether he had conceived the 
 idea of the use or not. — Ansonia v. Electrical, 144 U. S. 11 ; 36 L. Ed. 327; 
 12 S. Ct. 601. 
 
 ■ Gandy v Main. 143 U. S. 587; Roberts v. Ryer, 91 U. S. 150; Pennsylvania 
 V Safety f 110 U. S. 490; Miller v. Foree, 116 U. S. 22; Crandall v. Watters, 
 20 Blatchf 97; Re Arkell, 15 Blatchf. 437; Blake v. San Francisco, 113 U. S. 
 679- Smith y. Elliott, 9 Blatchf. 400; Western Elec. Co. v. Ansonia, 114 U. S. 
 447; Spill v. Celluloid, 22 Blatchf. 441; Sewall v. Jones, 91 U. S. 171. 
 
 It is not a patentable invention to apply old and well-known devices and 
 processes to new uses in other and analogous arts. — Lovell v. Cary, 147 
 U. S. 623; 37 L. Ed. 307; 13 S. Ct. 472. 
 
 Vinton v Hamilton, 104 U. S. 485; Stow v. Chicago, 104 U. S. 547; Penna. v. 
 Locomotive 110 U. S. 490; Blake v. San Francisco, 113 U. S. 679; Thompson v. 
 Boisselier 114 U. S. 1; Miller v. Foree, 116 U. S. 22; Dreyfus v. Searle, 124 U. 
 S 60- Brown y D C 130 U. S. 87; Aron v. Manhattan, 132 U. S. 82; Watson v. 
 Cincinnati 132 U S. 161; Marchand v. Emken, 132 U. S. 195; Royer v. Roth, 
 13"^ U S 201- Hill V. Wooster, 132 U. S. 693; Burt v. Evory, 133 U. S. 349; 
 Howe 'v Needle Co. 134 U. S. 388; Florsheim v. Schilling, 137 U. S. 64; Con- 
 solidated V Walker, 138 U. S. 124; Ansonia v. Electric, 144 U. S. 11; Ryan v. 
 Hard. 145 U. S. 241. 
 
 Compare Cary v. Wolff, 24 Fed. 139; Crane v. Price, 1 Web. P. C. 393; 
 .Smith V. Goodyear, 93 U. S. 486; Loom Co. v. Higgins, 106 U. S. 580. 
 
 Where the alleged novelty consists in transferring a device from one 
 branch of industry to another, the answer depends upon a variety of con- 
 siderations. In such cases we are bound to inquire into the remoteness of 
 relationship of the two industries; what alterations were necessary to adapt 
 the device to its new use, and what the value of such adaptation has been 
 to the new industrv. If the new use be analogous to the former one, the 
 court will undoubtedly be disposed to construe the patent more strictly, 
 and to require clen- p-ooi of the exercise of the inventive faculty in adapting
 
 616 THE FIXED LAW OF PATENTS §671 
 
 it to the new use — particularly if the device be one of minor importance 
 in its new field of usefulness. On the other hand, if the transfer be to a branch 
 of industry but remotely allied to the other, and the effect of such transfer 
 has been to supersede other methods of doing the same work, the court will 
 look with a less critical eye upon the means employed in making the transfer. 
 Doubtless a patentee is entitled to every use to which his invention is sus- 
 ceptible, whether such use be known or unknown to him; but the person 
 who has taken his device and by improvements thereon has adapted it to 
 a different industry, may also draw to himself the quality of inventor. If, 
 for instance, a person should take a coffee mill and patent it as a mill for 
 grinding spices, the double use would be too manifest for serious argument. 
 So, too, this court has denied invention to one who applied the principle 
 of an ice cream freezer to the preservation of fish (Brown v. Piper, 91 U. S. 37) ; 
 to another who changed the proportions of a refrigerator in such manner 
 as to utilize the descending instead of the ascending current of cold air 
 (Roberts v. Ryer, 91 U. S. 150); to another who employed an old and well- 
 known method of attaching car trucks to the forward truck of a locomotive 
 engine (Penna. v. Locomotive, 110 U. S. 490); and to still another who 
 placed a dredging screw at the stem instead of the stern of a steamboat 
 (Atlantic v. Brady, 107 U. S. 192). In Tucker v. Spalding, 80 U. S. 453, 
 the patent covered the use of movable teeth in saws and saw plates. A prior 
 patent exhibited cutters of the same general form as the saw teeth of the other 
 patent, attachable to a circular disk, and removable as in the other, the pur- 
 pose of which patent was for cutting of tongues and grooves, mortises, etc. 
 The court held that if what it actually did was in its nature the same as 
 sawing, and its structure and action suggested to the mind of an ordinary 
 skilled mechanic this double use to which it could be adapted without material 
 change, that such adaptation to a new use was not invention, and was not 
 patentable. 
 
 Indeed it often requires as acute a perception of the relations between 
 cause and effect, and as much of the peculiar intuitive genius which is charac- 
 teristic of great inventors, to grasp the idea that a device used in one art 
 may be made available in aiiother as would be necessary to create the de- 
 vice de novo. And this is not the less true if, after the thing has been done, 
 it appears to the ordinary mind so simple as to excite wonder that it was 
 not thought of before. The apparent simplicity of a new device often leads 
 an inexperienced person to think that it would have occurred to anyone 
 familiar with the subject; but the decisive answer is that with dozens and 
 perhaps hundreds of others laboring in the same field, it had never occurred 
 to anyone before. The practised eye of the ordinary mechanic may be 
 safely trusted to see what ought to be apparent to anyone. As was said in 
 Webster v. Higgins, 105 U. S. 580, " now that it has succeeded, it may seem 
 very plain to anyone that he could have done it as well. This is often the 
 case with inventions of the greatest merit. It may be laid down as a general 
 rule, though perhaps not an invariable one, that if a new combination and 
 arrangement of known elements produce a new and beneficial result never 
 attained before, it is evidence of invention." 
 
 If the new use be so nearly analogous to the former one, that the applica- 
 bility of the device to its new use would occur to a person of ordinary me- 
 chanical skill, it is only a case of double use, but if the relations between 
 them be remote, and especially if the use of the old device produce a new re- 
 sult, it may at least involve the exercise of the inventive faculty. — Potts v. 
 Creager, 155 U. S. 597; 39 L. Ed. 275; 15 S. Ct. 194. 
 
 That an old device may be put to a new use, though the result itself be old, 
 thus involving invention, see National v. Boston, 156 U. S. 502; 39 L. Ed. 
 511 ; 15 S. Ct. 434.
 
 §671 INVENTION 617 
 
 The defense of noninvention is, in this case, entirely theoretical. The 
 question relates to an important and complex art in which experience is 
 both valuable and is at hand; but experience has not apparently tested 
 itself on the subject. The assertion is that inasmuch as the motive power 
 of steam or air has been employed in many engines, and the means of such 
 employment have been shown in many patents, nothing is necessary for 
 the application of such power to produce a new result, but to select, and 
 perhaps adapt, old and well known appliances. But as was said by Judge 
 Wheeler, in the circuit court, with respect to the McCoy and Bates tools, " the 
 building, adapting in size, proportion and relation, and so enclosing such 
 parts as to form a tool of such power, capable of guidance to such work by 
 hand, would seem to involve high and most useful inventive skill, well 
 worthy of a patent upon the tool itself, or improvements of that kind upon 
 it." While it is true that modern scientific skill has developed an exceedingly 
 great variety of ways in which the agency of steam can be made useful, the 
 element of novelty is generally present in the particular means which pro- 
 duce a new result. And it is not reasonable to infer from the variety of old ap- 
 pliances that the ascertainment of means to properly move and control the 
 movement of a new tool of the delicacy, accuracy, force and rate of speed 
 required for such an instrument as a dental tool demanded no invention, 
 but required merely a selection by the mechanic from the types of engines 
 at hand in a workshop, or in a volume of drawings. In addition, the 
 history of the tool of this patent shows that the ascertainment of the ap- 
 propriate means, or of an improvement upon existing means, which should 
 properly move a hand cutter for the carving of marble, also called for an 
 inventive mind. Though marble cutting and engine building were each old 
 arts, no improvement upon the mallet and chisel appeared until the tools 
 of McCoy and Bates came into existence. If the turning of a rock drill into 
 a marble or granite cutter was a thing to be had for the asking, it would seem 
 that the transformation would have been more promptly made. — Fisher v. 
 American, 71 Fed. 523; 18 C. C. A. 235. 
 
 There may be invention in applying a device which is either simple or 
 old where it is used in a new way, and accomplishes a new result ; and the 
 rule is well settled in cases of that class that doubt on the question of pa- 
 tentable novelty may be resolved in favor of the patent on such proof of 
 utility and popular acceptance as shown in this record. — Irwin v. Hassel- 
 man, 97 Fed. 964; 38 C. C. A. 587. 
 
 Loom Co. V. Hisgins, 105 U. S. 580; Topliff v. Topliff, 145 U. S. 156; Kre- 
 mentz v. Cottle, 1^8 U; S. 556. 
 
 It is only when the new use is so recondite and remote from that to 
 which the old device has been applied, or for which it was conceived, that the 
 application to the new use would not occur to the mind of the ordinary 
 mechanic, skilled in the art, seeking to devise means to perform the desired 
 function, with the old machine or combination present before him, that its 
 conception rises to the dignity of invention. - — Mallon v. Gregg, 137 Fed. 
 68; 69C. C. A. 48. 
 
 Potts V. Creager, 155 U. S. 597; Hobbs v. Beach, 180 U. S. 383; Adams v. 
 Lindell, 77 Fed. 432; National v. Interchangeable, 106 Fed. 693. 
 
 The rule is unquestionable that new adaptation of old means may consti- 
 tute invention — that the test may reside in the creative thought, rather 
 than the mechanical difficulties overcome — but it is equally well settled 
 that monopoly cannot be granted for an adaptation which is merely a double 
 use, or calls only for the exercise of ordinary mechanical skill. The line of 
 distinction between the one and the other attribute is incapable of clear
 
 618 THE FIXED LAW OF PATENTS § 672 
 
 general definition, and the grant of a patent which is rightly presumptive 
 of invention should not be defeated as wanting in that quality, unless the 
 prior art plainly taught such adaptation. But when analogous use is well 
 known and no substantial departure appears in the patentee's adaptation, 
 monopoly cannot be authorized within the policy of the law. — Lowden v. 
 Janesville, 148 Fed. 686; 78 C. C. A. 548. 
 
 § 672. Old Device, New Use — Non- Patentable. 
 
 The learned judge, by interpolating the new purpose of the improvement, 
 not only inserted what was not specified in the claim ; but if it had been, it 
 would not have helped out the difficulty, as it was in effect, upon "the con- 
 struction given, simply applving an old organization to a new use, which is 
 not a patentable object. — Philhps v. Page, 65 U. S. 164; 16 L. Ed. 639. 
 
 The elements of the combination were old; the result produced was old; 
 the combination had been employed for analogous uses. The principal 
 change was the substitution of a figured roller for pebbling for a smooth 
 roller for smoothing. Held: not invention. — Stimpson v. Woodman, 77 
 U. S. 117; 19 L. Ed. 866. 
 
 The idea of this patentee was a good one, but his device to give it effect, 
 though useful, was not new. Consequently he took nothing by his patent. 
 — Rubber Tip v. Howard, 87 U. S. 498; 22 L. Ed. 410. 
 
 It is no new invention to use an old machine for a new purpose. _ The in- 
 ventor of a machine is entitled to the benefit of all the uses to which it can be 
 put, no matter whether he had conceived the idea of the use or not. — Rob- 
 erts V. Ryer, 91 U. S. 150; 23 L. Ed. 267. 
 
 It would seem, that if all the elements may be found old, and that if, in 
 the opinion of the Court (Justice Woods writing the opinion) the combination 
 did not produce a new result (although an old result was produced in a new 
 way. by the combination of old elements) it did not require the least degree 
 of ingenuity, and cannot be called invention. — Stephenson v. Brooklyn, 
 114 U. S. 149; 29 L. Ed. 58; 5 S. Ct. 777. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Stimpson v. Woodman, 10 Wall. 117; 
 Atlantic V. Brady, 107 U. S. 192; Slawson v. R. R. 107 U. S. 649; King v. Gallun, 
 109 U. S. 99; PhiUips v. Detroit, 111 U. S. 604. 
 
 A patent cannot be taken out for an article old in purpose and shape and 
 mode of use, when made for the first time out of an existing material, and 
 with accompaniments before applied to such an article, merely because the 
 idea has occurred that it would be a good thing to make the article out of 
 that particular old material. — Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 
 158; 6 S. Ct. 1027. 
 
 The mere adaptation of an old device to a new combination, involving no 
 functional change, is not invention. — Royer v. Roth, 132 U. S. 201 ; 33 
 L.Ed. 322; 10 S. Ct. 58. 
 
 Double Pointed v. Two Rivers, 109 U. S. 117; Pomace v. Ferguson, 119 U. S. 
 335; Dreyfus v. Searle, 124 U. S. 60; Hendy v. Golden, 127 U. S. 370. 
 
 The adaptation of an old device to a new and analogous use to be patentable 
 must show novelty of means. — Aron v. Manhattan, 132 U. S. 84; 33 L. 
 Ed. 272; 10 S. Ct. 24.
 
 § 672 INVENTION 619 
 
 It is not invention to adapt an old machine designed for turning wood 
 to an analogous use in turning metal. — Howe v. National, 134 U. S. 388; 
 33L. Ed. 963; 10 S. Ct. 570. 
 
 To make a combination of old elements patentable, there must be some new 
 result accomplished, and as the result in this case is a mere aggregation of 
 the several functions of the different elements of the combination, each per- 
 forming its old function in the old way, we see nothing upon which a claim to 
 invention can be based. The device is undoubtedly a convenient one, and 
 appears to have proven profitable to the patentee, but we are unanimously 
 of opinion that it lacks the necessary quality of invention. — Richards v. 
 Chase, 159 U. S. 477; 40 L. Ed. 225; 16 S. Ct. 53. 
 
 The new use is not an analogous use. It is the same use. It seems clear 
 to us, therefore, that it did not involve invention to take the hollow reel from 
 the ordinary fire engine or water sprinkler, and put it on a chemical engine. 
 The introduction of the hollow journaled reel in the chemical fire engine was 
 nothing but the application of an old device to a similar subject, with little 
 or no change in the manner of application, and with no result substantially 
 distinct in its nature. The hollow journaled reel may have been better 
 adapted to the use in the chemical engine than in the ordinary steam pressure 
 pump engine ; but this, it seems to us, is a mere difference in degree of the 
 result, and did not involve, in bringing it about, anything but what would 
 naturally occur to one skilled in the art. — Steiner v. Adrian, 59 Fed. 132; 
 8 C. C. A. 44. 
 
 Roller Mill v. Walker, 138 U. S. 124; Electric v. LaRue, 139 U. S. 606; Blake v. 
 San Francisco, 113 U. S. 679; Penna. v. Locomotive, 110 U. S. 490; Preston v. 
 Manard, 116 U. S. 661. 
 
 All the advantages ascribable to the patented combination are due to the 
 assembling together of an old elevator and an old cutter adjusting mechan- 
 ism. This could be effected without requiring any modification of the parts, 
 which was not an obvious one and within the ordinary skill of the mechanic. 
 The application of an old organism to an analogous use is not patentable. 
 It is not invention to use an old combination of devices in a new location to 
 perform the same operations, when no change or modifications are required 
 to adapt it to the new use, or when only such are required as can be made by 
 the exercise of ordinary mechanical skill. — Briggs v. Central, 60 Fed. 87 ; 
 8 C. C. A. 480. 
 
 Blake v. San Francisco, 113 U. S. 679; Penna. v. Locomotive, 110 U. S. 490; 
 Steiner v. Adrian, 59 Fed. 132; Aron v. Railway, 132 U. S. 84. 
 
 The entire argument of the appellants proceeds upon the erroneous assump- 
 tion that a machine or mechanical combination which in itself contains no 
 novelty amounting to invention may be patentable because of some new use 
 or result which is accomplished ; a proposition which, as we have seen, leads 
 to the inadmissible conclusion that for one use or purpose a device may be 
 public property and for another use may be the subject of a patent. On the 
 contrary, it is well settled, we suppose, " that a patent for a machine covers 
 its use for all purposes, whether anticipated by the patentee or not, and that 
 the functions or methods of operation of mechanical devices are not patent- 
 able." — Gait V. ParUn, 60 Fed. 417; 9 C. C. A. 49. 
 
 Appleton V. Star, 60 Fed. 411; Western v. Sperry, 58 Fed. 186; Temple v. 
 Goss, 58 Fed. 193; CoUrir Co. v. Van Deusen, 23 Wall. 530; Fuller v. \'entzer, 
 94 U. S. 288; Burr v. Duryee, 1 Wall. 531; Heald v. Rice, 104 U. S. 755; Stow 
 V Chicago, 104 U. S. 550; Roberts v. Ryer, 91 U. S. 150; Stimpson v. Woodman, 
 lb Wall. 117; Tucker v. Spalding, 13 WaU. 453.
 
 620 THE FIXED LAW OF PATENTS § 672 
 
 If the alleged new article of manufacture was in fact an old article at 
 the date of the patent, — as we think it was, — then it goes without saying 
 that the patentee was not entitled to a patent merely because he suggested 
 the idea of devoting it to a new use. — Browning v. Colorado, 61 Fed. 845; 
 10 C. C. A. 112. 
 
 Brown v. Piper, 91 U. S. 37; Roberts v. Ryer, 91 U. S. 150; Knapp v. Morss, 
 150 U. S. 221; Aron v. Railway, 132 U. S. 84; Ansonia v. Electrical, 144 U. S. ll! 
 
 In the case at bar it cannot be said that there has been a transfer to a 
 " branch of industry remotely allied," of the use of solid in lieu of jointed 
 work, because this substitution has been practised in every industry-, unless 
 it be in the particular one at bar; and it cannot be said that the latter is 
 remotely allied to all others, though it may be to some. Whatever has 
 become free and common to the field of practical arts, as a whole, must be 
 free to every part of that field, except under extremely exceptional circum- 
 stances. — Consolidated v. Holtzer, 67 Fed. 907; 15 C. C. A. 63. 
 
 Potts V. Creager, 155 U. S. 597. 
 
 If it is of importance to simultaneously raise two disconnected but adjacent 
 objects of comparatively small size, which can be accomplished by a small 
 expenditure of force, it would seem natural to connect them by a rod, and also 
 that the experiment would be within the ordinary scope of the mechanic 
 who is in charge of the work of construction. The simplicity of the device 
 may lead us to disregard the inventive skill which produced it, but it was, in 
 our opinion, an ordinary mechanical experiment appearing in a new place. 
 When it is enlarged to meet the needs of enlarged train service, the looped wire 
 becomes a series of levers, but the improvement, in its original and patented 
 form, was an obvious and natural one. — Mayor v. American, 70 Fed. 853 ; 
 17 C. C. A. 467. 
 
 It is simply the case of an employment for a new use, and nothing more, and 
 falls within the general doctrine of those cases in which it has been so many 
 times held that the mere extension of a well-known device into another field 
 of usefulness, where the transfer does not involve the faculty of inventive 
 genius, will not support a patent. — Schreiber v. Grimm, 72 Fed. 671 ; 19 
 C. C. A. 67. 
 
 Distinguishing, Potts ii. Creager, 155 U. S. 597; Electric v. LaRue, 139 U. S, 
 601; Topliff V. Topliff, 145 U. S. 156; Barbed Wire Case, 143 U. S. 275: Sessions 
 V. Romadka, 145 U. S. 29. 
 
 Nor is it invention to inclose the operative mechanism in an old bicycle, 
 double dish shell when used for a bicycle bell, instead of mounting it upon a 
 standard, for a call bell ; affixing it to a door jam for a door bell ; or arranging 
 it to engage with an opening window sash for a burglar alarm. — New De- 
 parture V. Bevin, 73 Fed. 469; 19 C. C. A. 534. 
 
 That the mere bringing together, in a new combination, of old devices 
 or elements, especially if they belong to the same art or to arts kindred to 
 that to which the combination belongs, does not constitute invention is well 
 settled. " It is not enough that a thing shall be new, in the sense that in 
 the shape or form in which it is produced it shall not have been before known 
 and that it shall be useful, but it must, under the constitution and the statute, 
 amount to an invention or discovery." — Interior v. Perkins, 80 Fed. 528; 
 25 C. C. A. 613. 
 
 Thompson v. Boisselier, 114 U. S. 1; Hill v. Wooster. 132 IT S 693; Burt 
 V. Evory, 133 U. S. 349; Pickering v. McCullough, 104 U. S. 310; Florsheim v.
 
 § 67? INVENTION 621 
 
 Schilling, 137 U. S. 64; Adams v. Stamping Co. 141 U. S. 539; Deere v. Case, 
 56 Fed. 841. 
 
 The adaptation of an old device to a new and uncontemplated use, involving 
 mere change of detail and arrangement is not invention. — Eastman v. Getz, 
 84 Fed. 458; 28 C. C. A. 459. 
 
 In view of the use of a string wrapper in the form of an envelope for letters, 
 it was not invention to apply the string to wrappers or envelopes for news- 
 papers. — Williams v. Wrapper, 84 Fed. 197; 28 C. C. A. 325. Reversed, 
 86 Fed. 641. 
 
 It has long been settled that a mere use or function is not the subject of 
 a patent, and also that " the inventor of a machine is entitled to the benefit 
 of all the uses to which it can be put, no matter whether he conceived the 
 idea of the use or not." Roberts v. Ryer, 91 U. S. 150; Goshen v. Bissell, 
 72 Fed. 67. It would seem to follow as a corollary to these two propositions 
 that, where it requires substantially no change in the old device to adapt it 
 to the new use, such adaptation cannot be the subject of a patent, no matter 
 how remote and unthought of the use may be, provided no new force or mode 
 of application be necessary in carrying on such use; otherwise, in case the 
 device has been patented, the right of monopoly of the prior patentee is 
 invaded by excluding him from a use of a machine which, by the rule stated 
 and the authorities cited above, he is entitled exclusively to enjoy. If, how- 
 ever, the adaptation of the old machine to the new use involves a change in 
 its form or operation, it may, by the changes and very newness of the use 
 or function, become either a new machine or an improvement on an old 
 machine, and be patentable as such; or the new use of the old machine may 
 result in a new product, which is itself patentable ; or the use may be a step 
 in a new and patentable process. — Stearns v. Russell, 85 Fed. 218; 29 C. 
 C. A. 121. 
 
 Penna. v. Locomotive, 110 U. S. 490; reviewing Potts v. Creager, 155 U. S. 
 597; Schreiber v. Grimm, 72 Fed. 671; Electric v. La Rue, 139 U. S. 601; Col- 
 gate V. Telegraph, 15 Blatch. 365; Williames v. McNeeley, 64 Fed. 766; Howe 
 V. Abbott, 2 Story, 190; Bean v. Smallwood, 2 Story, 408; Knapp v. Morss, 
 150 U. S. 221; Aron v. Railroad, 132 U. S. 85; Ansonia v. Electrical, 144 U. S. 
 11; Trimmer v. Stevens, 137 U. S. 423; Dunbar v. Tack Co. 4 B. & A. 518; 
 Moffitt V. Rogers, 8 Fed. 147; Miller v. Foree, 116 U. S. 22; Manufacturing Co, 
 V. Cary, 147 U. S. 623; Kay v. Marshall, 2 Web. Pat. Cas. 36; Harwood v. RaU- 
 way, 11 H. L. Cas. 654; McClain v. Ortmayer, 141 U. S. 419; Ivnapp v. Morss, 
 150 U. S. 221. 
 
 Note: This holding by Judge Taft, undoubtedly proper as applied to the 
 case in hand, is believed to be too broad a statement of the rule. It is an 
 attempt to draw the line between invention and double use or mechanical 
 skill; and like every such attempt must have its faults. The line never can 
 be drawn in advance of the case presented. 
 
 The arrangement of such pipe in transverse horizontal series with pro- 
 visions for varying the heat in the different series, is shown in the beer-cooler 
 patent. To apply the apparatus thus disclosed in the prior art to the Solvay 
 column, does not seem to us to have required any invention whatever. — 
 Solvay V. Michigan, 90 Fed. 818; 33 C. C. A. 285. 
 
 Attention is called to the circumstance that, when the former opinion of 
 this court was handed down (Feb. 27, 1894, 60 Fed. 87), the Supreme Court 
 had not decided Potts v. Creager, (1895) 155 U. S. 597, 15 Sup. Ct. 194. It 
 is not thought, however, that that case lays down any new principle of law, 
 nor that it has overruled the earlier decisions which were cited in Briggs v.
 
 622 THE FIXED LAW OF PATENTS § 672 
 
 Ice Co. On the contrary, it indicates quite clearly that the question of so- 
 called double use — whether, that is to say, the new use is so nearly analogous 
 to the former one that the applicability of the device to its new use would 
 occur to a person of ordinary mechanical skill — is one dependent upon the 
 peculiar facts of each case. It would be difficult to find uses more analogous 
 than we have here. If the apparatus for raising and lowering had, in its 
 earlier use, been applied, for instance, to the movements of ore buckets in a 
 shaft, it might, perhaps, be urged that the analogy was imperfect; but here 
 in both applications the apparatus moves a cutter (which is itself to remove 
 surplus material) to the place where the operator wishes it to cut. It 
 would seem to make little difference that the workmen who plane wood do 
 not plane ice. In Potts v. Creager, the Supreme Court approved their former 
 decision in Brown v. Piper, 91 U. S. 40, where a patent for preserving fish for 
 food purposes was held to be without patentable novelty, in view of an earlier 
 patent for a " corpse preserver " used in the undertaker's art. — Briggs v, 
 Dueil, 93 Fed. 972; 36 C. C. A. 38. 
 
 Stearns v. Russell, 85 Fed. 218; Rogers v. Fitch, 81 Fed. 959. 
 
 But it is said that in the " furniture caster art " such a spring made 
 integral with the caster socket is not shown, and that it may be invention to 
 transfer a device from one art to another. Potts v. Creager, 155 U. S. 597. 
 But the transfer has plainly been made from arts where the spring was 
 integral with the socket, and where its purpose and function was precisely 
 that to which it was applied in Berkey's device. No change in form has been 
 made to adopt (adapt) the device to a new application. No difficulties of 
 adaptation have had to be cleared away. Such a change from even a non- 
 analogous art cannot be regarded as involving invention. — Standard v. 
 Caster, 113 Fed. 162; 51 C. C. A. 109. 
 
 Schreiber v. Grimm, 72 Fed. 671. 
 
 There was no substantial difference in the method or purpose in using zinc 
 as a means of retaining Moxham's plate in its pocket over its former well- 
 known use in other branches of the founder's or iron worker's art. Its use by 
 Moxham was plainly analogous, although never before applied in railway 
 structure. It is merely a case of new use without any change in the method 
 of using the old element to adapt it to the new use or any new mode of 
 appHcation. — Johnson v. Toledo, 119 Fed. 885; 56 C. C. A. 415. 
 
 Mfg. Co. V. Gary, 147 U. S. 623; Potts v. Creager, 155 U. S. 597. 
 
 It is not invention to combine old devices into a new article without 
 producing any new mode of operation. — Greist v. Parsons, 125 Fed. 116; 
 60 C. C. A. 34. 
 
 Walker Pat. sec. 37; Burt v. Every, 133 U. S. 349; Florsheim v. Schilling, 
 137 U. S. 64; Interior v. Perkins, 80 Fed. 528; Kelly v. Clow, 89 Fed. 297. 
 
 The thought that a machine or combination which is discovered in a remote 
 art, where it is used to perform another function, a machine or combination 
 which was never designed by its maker, was never actually used, and was not 
 apparently suitable, to accomplish the desideratum may be adopted 
 to perform the requisite function, may be, and frequently is, with 
 proper mechanical adaptation, the result of the exercise of the inventive 
 faculty. P>ut a thought which would naturally occur to any mechanic familiar 
 with the ob,i(>ct to be attained, and with an existing machine or combination 
 discovered in the same art or in one nearly analogous to it, designed, suitable, 
 and used to perform a similar function, that this machine or combination 
 can be used or adapted to perform the function desired, is not the product of
 
 § 673 INVENTION 623 
 
 inventive genius, but the mere result of the appHcation of the skill of the 
 mechanic to the subject under consideration. The application of an old device 
 to a new use is not in itself an invention or capable of protection by a patent. 
 A prior patentee who has plainly described and claimed his machine or com- 
 bination has the right to every use to which his device can be applied, and to 
 every way in which it can be utilized to perform its function, whether he was 
 aware of all these uses or methods of use when he claimed and secured his 
 monopoly or not. — Mallon v. Gregg, 137 Fed. 68; 69 C. C. A. 48. 
 
 National v. Interchangeable, 106 Fed. 693; Roberts v. Ryer, 91 U. S. 150; 
 Miller v. Mfg. Co. 151 U. S. 186; Goshen v. Bissell, 72 Fed. 67; Stearns v. Russell, 
 
 85 Fed. 218; Manufacturing Co. v. Neal, 90 Fed. 725; Tire Co. v. Lozier, 90 Fed. 
 732. 
 
 That the mere adaptation of an elevator with closing floors to use in a 
 refrigerating plant, although useful, is not invention. — Wills v. Scranton, 
 153 Fed. 181 ; 82 C. C. A. 355. 
 
 Conceding that plaintiff was the first to apply these old interlocking 
 systems to an old flat mask of flexible material, we discover no invention in 
 his doing so, but only the capacity of a skilled mechanic addressing himself 
 to the particular problem in question. — Merrill-Soule v. Star, 159 Fed. 142; 
 
 86 C. C. A. 332. 
 
 Surely invention cannot be claimed in the appropriation of an old device 
 by reason of the unthought of and undisclosed function in question (dove- 
 tail armature laminaj). — Bullock v. General, 162 Fed. 28; 89 C. C A. 68. 
 
 § 673. Old Device, New Use — Patentable. 
 
 Though the inventor be entitled to the merit of being the first to employ 
 an old combination in a new and useful way, if the use be analogous, his right 
 to a patent must depend upon the novelty of means employed and not the 
 end accomplished. — Aron v. Manhattan, 132 U. S. 84; 33 L. Ed. 272; 
 10 S. Ct. 24. 
 
 The patent for the adaptation of old and well known means to a new use 
 with new material if sustainable at all must be Umited specifically. — Wright 
 V. Chnton, 67 Fed. 790; 14 C. C. A. 646. 
 
 Well-known cases are cited on behalf of the defendants, in which it has been 
 held that the application of an old process or machine to a similar or analo- 
 gous subject, with no change in the manner of apphcation, and no result 
 substantially distinct in its nature, will not sustain a patent, even if the new 
 form of result had not before been contemplated. Without dissenting the least 
 from this doctrine, we do not regard it as applicable to the present case. It has 
 never been held that where the structures compared belong to totally dis- 
 tinct departments of invention — to practical arts that have no connection 
 with or similarity to each other — the subsequent inventor is precluded from 
 using well-known mechanical contrivances or devices that have become the 
 common stock of manufacturers. Such a view would, in the mechanical arts, 
 restrict the operation of the patent statutes to the first and most striking 
 efforts of invention, and leave no field open for the exercising of the inventive 
 power in devising the numerous less conspicuous machines and apparatus 
 that do so much to promote the convenience and comfort of daily life. — 
 Hillborn v. Hale, 69 Fed. 958; 16 C. C. A. 569. 
 
 When Beach took this machine from another art, where it was doing 
 different work, and, by modification, adapted it to different use in his own
 
 624 THE FIXED LAW OF PATENTS § 673 
 
 art, and thereby gave to his own art the first machine it ever had which 
 could do work necessary to be done, and always theretofore done by hand, 
 he made an invention to the fruits of which he should be entitled. — Inman 
 V. Beach, 71 Fed. 420; 18 C. C. A. 165. 
 
 Admitting a closer resemblance and analogy between the two classes of 
 machines, it by no means follows that the device in suit would come within 
 the rule of " a double use," and thus fall short of invention and patentability. 
 — Taylor v. Sawyer, 75 Fed. 301 ; 22 C. C. A. 203. 
 
 Potts V. Creager, 155 U. S. 607; DuBois v. Kirk, 158 U. S. 58; Tamage v. Zahn, 
 70 Fed. 1003; Topliff v. Topliff, 145 U. S. 156. 
 
 Where an inventor has devised a machine or tool for doing work which 
 previously had been done only by hand, and the utility of the device is at 
 once recognized by the trade, the court should hesitate to declare the patent 
 void for want of invention simply because what was done may be affected 
 by the modification of an old structure, used for a different purpose. — 
 Reynolds v. Buzzell, 96 Fed. 997; 37 C. C. A. 656. 
 
 The fact that this conveyor is found in a different place in a former 
 combination will not defeat the claim for invention, if the new location is 
 such as to produce a new and useful result. — Stillwell-Bierce v. Eufaula, 
 117 Fed. 410; 54 C. C. A. 584. 
 
 Star V. General, 111 Fed. 398; Dowagiac v. Superior, 115 Fed. 886. 
 
 It is true that East has not discovered any new elementary material for 
 the making of barrels, and the elementary principle upon which barrels are 
 constructed is old; but he has adopted a new form, and discovered a new 
 combination, a diversity of method and a diversity of effect, a new modus 
 operandi, whereby it has been practically demonstrated that cheaper and 
 better results are obtained, which benefit the world; and therefore, under 
 the principles and precedents, he has become entitled to that protection 
 which the patent laws are intended to secure for " any new and useful im- 
 provement on any art, machine, manufacture, or composition of matter." 
 Such combination, however simple and obvious, if entirely new, is patentable, 
 and not the less so because up to a certain point he uses old methods and old 
 materials. — Farmers' v. Spruks, 127 Fed. 691 ; 62 C. C. A. 447. 
 
 It performs a beneficial function for which the device of the prior art 
 was not designed, adapted, or used. We are of opinion that this creation 
 involved invention. — Cleveland v. Kauffman, 135 Fed. 360; 68 C. C. A. 658. 
 
 Topliff V. Topliff, 145 U. S. 161; Clough v. Barker, 106 U. S. 176; Wickelman 
 V. Dick, 88 Fed. 266; Boyer v. Keller, 127 Fed. 130. 
 
 Felt discovered the possibility of this new use of a series of pivoted levers 
 in performing additive subtraction, and he adapted them to this new use. 
 Such use was novel, and has proved of great utility. These circumstances 
 negative the conclusion that the step taken by Felt was obvious to any skilled 
 mechanic. — Comptograph v. Mechanical, 145 Fed. 331 ; 76 C. C. A. 205. 
 
 Hobbs V. Beach, 180 U. S. 383; Loom Co. v. Higgins, 105 U. S. 580; Krementz 
 V. S. Cottle Co. 148 U. S. 556; Potts v. Creager, 155 U. S. 597; Dowagiac v. 
 Superior, 115 Fed. 886; Brunswick v. Thum, 111 Fed. 904; Schenck v. Singer, 
 77 Fed. 841. 
 
 All of the elements were old, and if Avery made merely a selection and 
 rearrangement of old elements, without producing any new result, want of 
 invention would be clear. Geist v. Parsons, 125 Fed. 116. Or if he were only
 
 § 674 INVENTION 625 
 
 a detail improver, he could not exclude others from gleaning in the same open 
 fields. Milwaukee v. Brunswick, 126 Fed. 171. But, though old elements 
 were used, the combination was not merely new in specific construction, 
 but was new in kind ; and in this very ancient and familiar art we do not see 
 that the most gifted inventor could do more than produce a new result by 
 a new mode of operation in some minor adjunct of the main structure. Inas- 
 much as Avery did this, he was entitled to generic as well as specific claims. 
 Lamson v. Hillman, 123 Fed. 416; Ries v. Earth, 136 Fed. 850. —Avery 
 i;. Case, 148 Fed. 214; 78 C. C. A. 110. 
 
 If the Dodge patent (prior and mechanical) was of such a nature as to sug- 
 gest a transference, by appropriate means, from the purely mechanical to the 
 electric art, of the invention embodied in the Parcelle (electrical) patent, 
 then the Parcelle patent contained no invention. And in this connection it 
 is certainly a singular thing that the ten patents from the mechanical art, 
 to which we have referred, should have been in existence for so many years 
 without ever having suggested an expedient, like the Parcelle patent, for the 
 purpose of supplying a needed want in the electrical art. Obviously, the 
 relation between the mechanical and electric arts was not so close and ap- 
 parent that it would follow as a matter of course that the invention of a 
 method of bolting a bedstead together, or of securing a wooden covering on 
 an iron pulley, would, of itself, furnish a suggestion for solving the problem of 
 detachably fastening the laminated pole pieces of a field magnet to the solid 
 yoke thereof. — General v. Bullock, 152 Fed. 427; 81 C. C. A. 569. 
 
 Potts V. Creager, 155 U. S. 597; McClain v. Ortmayer, 141 U. S. 419. 
 
 To accomplish a new and useful result within the meaning of the patent 
 law, (R. S. 4886), it is not necessary that a result before unknown should be 
 brought about, but it is sufficient if an old result is accomplished in a new and 
 more effective way. If the value and effectiveness of a machine are sub- 
 stantially increased, the new combination of old elements which does it is 
 patentable. — St. Louis v. American, 156 Fed. 574; 84 C. C. A. 340. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Cantrell v. WaUick, 117 U. S. 689; Ander- 
 son V. Collins, 122 Fed. 451. 
 
 Note: This rule as applied in this case is correct ; but as broadly stated it is 
 entirely incorrect, for it is the novelty of the new elements in combination 
 and not the effectiveness of the result wherein the patentability resides. 
 
 The reference to sundry sawmill patents showing conveying tables and 
 driven chains extending between them for transferring logs or lumber from 
 one table to the other do not show anticipations. There is little analogy 
 between the problem involved in conveying and transferring rigid, cold 
 bodies from one conveying table to another, and that presented when the 
 subject is long, flexible sheets of hot metal, which must be cooled uniformly 
 and without warping while the carrying and transferring is going on. We 
 must not be misled by the apparent resemblance between a device taken 
 from one industry and applied to a new use in another when the original 
 inventor never designed nor actually used the device for the purpose to which 
 it has been put. — National v. Aiken, 163 Fed. 254; C. C. A. 
 
 Potts V Creager, 155 U. S. 597; Western v. La Rue, 139 U. S. 601; Steams 
 V Russell, 85 Fed 218; Heaton-Peninsular v. Elliott, 58 Fed. 220; Topliff v. 
 Topliff, 145 U. S. 156. 
 
 § 674. Old Elements, New Result. 
 
 Patented inventions are also made which embrace both a new ingredient 
 and a combination of old ingredients embodied in the same machine. Even 
 more particularity of description is required in such a case, as the property
 
 626 THE FIXED LAW OF PATENTS § 674 
 
 of the patentee consists not only in the new ingredient, but also in the new 
 combination, and it is essential that his invention shall be so fully described 
 that others may not be led into mistake, as no other person can lawfully 
 make, use or vend a machine containing such new ingredient or such new 
 combination. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Valid letters patent may be granted for an invention which consists 
 entirely in a new combination of old ingredients, provided it appears that the 
 new combination of the ingredients produce a new and useful result, but the 
 rule is equally well settled, in such a case, that the invention consists merely 
 in the new combination of the ingredients, and that a suit for infringement 
 cannot be maintained against a party who constructs or uses a" substan- 
 tially different combination, even though it includes the exact same in- 
 gredients. — Gill V. Wells, 89 U. S. 1 ; 22 L. Ed. 699. 
 
 Gould V. Rees, 15 Wall. 194. 
 
 The combination expressed in the claim, viewed as an entirety and in 
 reference to its purposes and uses, is new, and produces a new and useful 
 result. And it is no objection to the validity of a patent for such a com- 
 bination that some of the elements of which it is composed are not new. — 
 Brown v. Guild, 90 U. S. 181; 23 L. Ed. 161. 
 
 The combination to be patentable must produce a different force or effect, 
 or result in the combined forces or processes from that given by their separate 
 parts. There must be a new result produced by their union; if not so, it 
 is only an aggregation of separate elements. — Reckendorfer v. Faber, 92 
 U. S. 347; 23 L. Ed. 719. 
 
 Every element found in complainant's machine is found in a prior patent, 
 and was well known to the art. His patent, therefore, must be treated as for 
 a combination of well-known devices and elements. — Jones v. Hunger, 49 
 Fed. 61 ; 1 C. C. A. 158. 
 
 No pre-existing machine contained the specific means employed. It is also 
 reasonably certain from the history of the machine that these claims describe 
 combinations which are practically operative and successful, and a manifest 
 weakness and insecurity characterize the defendant's attempts to deny 
 patentable invention. — Bagley v. Empire, 58 Fed. 212; 7 C. C. A. 191. 
 
 But notwithstanding the fact that all the parts are old, in the sense that 
 each of them may be found in previous patents, the combination of parts in 
 the patent in suit brings about a new result, and involves patentable inven- 
 tion. — Columbus V. Robbins, 64 Fed. 384; 12 C. C. A, 174. 
 
 The new use of an old compound has been held to be patentable. — 
 Thomson-Houston v. National, 65 Fed. 427; 12 C. C. A. 671. 
 Mvintz V. Foster, 2 Web. P. C. 93; Merain, 306. 
 
 Nor is the complainants' device only an aggregation of old parts. The 
 metal and the rubber do not act independently, but co-operate in jjroducing 
 a new result, and this constitutes a patentable combination. — Thomson- 
 Houston V. National, 65 Fed. 427; 12 C. C. A. 671. 
 
 Reckendorfer v. Faber, 92 U. S. 357; Hailes v. Van Wormer, 20 Wall. 353; 
 Pickering v. McCuUough, 104 U. S. 310.
 
 § 674 INVENTION 627 
 
 " If a new combination and arrangement of known elements produce a new 
 and beneficial result, never obtained before, it is evidence of invention." — 
 :Juller V. Lodge, 77 Fed. 621 ; 23 C. C. A. 357. 
 
 Quoting, Loom Co. v. Higgins, 105 U. S. 580, 
 
 All the mechanisms which formed the elements of his combination, were 
 old. His patent was granted, and it must stand, if it stand at all, not upon 
 the ground that he invented or discovered any new machine or mechanical 
 device, but on the ground that he organized a new combination of old and 
 well-known elements, bv means of which a new and useful result was obtained. 
 ~ Adams V. Lindell, 77 Fed. 432; 23 C. C. A. 223. 
 
 Thompson v. Bank, 53 Fed. 250; Sevmour v. Osborne, 11 Wall. 51G; Gould v, 
 Rees, 15 Wall. 187. 
 
 The fact that each and every element of the combination was at the date 
 of his patent, old and well-known, was not sufficient to deprive the inven- 
 tion claimed by him of novelty, for most of the inventions of the present day 
 consist of the utilization and adaptation of mechanical appliances that are 
 themselves old and well-known. Using an old process and utilizing a well- 
 known device, by combinations which produce results not theretofore accom- 
 plished by the said process or device, is in fact invention. — American v. 
 Streat, 83 Fed. 700; 28 C. C. A. 18. 
 
 The new result of a patentable combination is a result which is new and 
 distinguishable as compared with results produced by the elements in their 
 separated state, or as assembled in a mere aggregation, without functional 
 relations to each other. A combination is not unpatentable merely because its 
 results may also have been produced by other combinations. — Deere v. 
 Rock Island, 84 Fed. 171 ; 28 C. C. A. 308. 
 
 Rob. Pat. 156, n.; Reckendorfer v. Faber, 92 U. S. 357. 
 
 It is a familiar rule that where the thing patented is an entirety, the 
 mere fact that the different elements are taken from different old devices or 
 exhibits, does not create conclusion of non-invention. — National v. Elsas, 
 86 Fed. 917; 30 CCA. 487. 
 
 Imhauser v. Buerk, 101 U. S. 647; Dederick v. Cassell, 9 Fed. 306. 
 
 But, while all the elements of appellant's patent may be found singly in 
 the ore crushers which preceded it, the appellee's invention was in its combina- 
 tion a distinct departure in the art. — Trent v. Risdon, 102 Fed. 635; 42 
 C. C A. 529. 
 
 The device was no mere mechanical device, or a mere juxtaposition of old 
 elements, which only continued to exercise their former isolated functions. 
 In their new relation, the three elements were made to so mutually co-operate, 
 co-act, and in effect, unify with each other, that they produced a new unitary 
 result. — Bliss v. Reed, 106 Fed. 314; 45 C C A. 304. 
 
 A new combination of old elements whereby a new and useful result is pro- 
 duced, or an old result is attained in a more facile, economical and efficient 
 way, may be protected by patent as securely as a new machine or composi- 
 tion of matter. — National v. Interchangeable, 106 Fed. 693; 45 C C. A. 
 544. 
 
 Seymour v. Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 187; Thompson v. 
 Bank, 53 Fed. 250.
 
 628 THE FIXED LAW OF PATENTS §674 
 
 If they accomplished it in a new way, and to devise them involved thought 
 and ingenuity beyond the ordinary skill of the calling, they were features of 
 patentable novelty. We do not regard the prior patents for improvements 
 in cheese-making apparatus as sufficient per se to negative invention in 
 introducing and adapting these appliances. The appliances for a double hot 
 water circulation shown in those patents are quite dissimilar in details of 
 construction and arrangement to those of the patent in suit, and it is doubtful 
 whether their use in supplying heated water to control the temperature of 
 milk during the process of cheese-making can be regarded as a cognate case. 
 — Brickill V. Mayor, 112 Fed. 65; 50 C. C. A. 1. 
 
 It is true that the mere bringing together of old elements found in older 
 machines of the same or a kindred art to perform the same functions and to 
 effect the same mechanical result does not constitute patentable invention. 
 But the converse of the proposition is equally true, — that if a new organiza- 
 tion of old elements is such that it produces a new mode of operation and a 
 beneficial result, there may be a patentable invention. — Dowagiac v. 
 Superior, 115 Fed. 886; 53 C. C. A. 36. 
 
 Campbell v. Duplex, 101 Fed. 282; Overweight v. Vogt, 102 Fed. 957; Burn- 
 ham V. Mfg. Co. 110 Fed. 765; Rob. Pat. sec. 155; Star v. General, 111 Fed. 398. 
 
 While it is true that the mere bringing together of old elements found in 
 older machines of the same or a kindred art, to perform the same functions 
 and to effect the same mechanical results, does not constitute patentable 
 invention, still, where a new organization of old elements is such that it 
 produces a new mode of operation and a beneficial result, there may be a 
 patentable invention. — Dowagiac v. Minnesota, 118 Fed. 136; 55 C. C. 
 A. 86. 
 
 Rob. Pat. sec. 155; Dowagiac v. Superior, 115 Fed. 886. 
 
 The fact that the machine is an aggregation of known devices does not 
 show that it is lacking in novelty. A machine of necessity is made of known 
 things. — American v. American, 128 Fed. 709; 63 C. C. A. 307. 
 
 Note: The judge making this statement did not say what he meant; he 
 did not mean by the use of the word " aggregation " what that word usually 
 stands for in the patent law. Moreover, the statement that a machine is of 
 necessity made of known things is generally, but not always, true. 
 
 Ries got together a collection of old elements. Motors, circuits, switches 
 to close the circuits, levers, resistance coils, solenoids, and other actuating 
 mechanisms for moving an arm over contact points, dashpots, and adjustable 
 dashpots were all old. The prior patents prove this. They show the elements 
 severally, and some in combinations. But none exhibits Ries's thought. 
 That is, Ries disclosed to the world a new desirable result to be attained, and 
 devised a new means by which the new idea could be put to use. Than this, 
 there is no higher quahty of invention. — Ries v. Barth, 136 Fed. 850; 69 
 C. C. A. 528. 
 
 Morley v. Lancaster, 129 U. S. 263. 
 
 Strictly speaking the combinations are not, as we have seen, of old elements, 
 but conceding that the elements are all old, it cannot be denied, we think, 
 that the combination is not only new but that it produces a new result or, at 
 least, an old result in a better way than any device which preceded it. The 
 elements of the combination so act that each qualifies every other and the 
 new result is due to their co-operative action. Remove one and the machine 
 becomes inoperative; it fails to produce the desired result. — International 
 V. Dey, 142 Fed. 736; 74 C. C. A. 68.
 
 § 675 INVENTION ^29 
 
 Bv such coaction the three elements, each of which, in itself,.we may aj 
 sumrwasdd- effected a novel and highly useful advance m armature 
 construction. — Prudential v. Westnighouse, 158 Fed. 985, 86 C. L. A. 189. 
 
 S675. Old Elements, Old Result. 
 
 The elements of the claim of the patent in suit were all old; the result 
 produced was well known; the combination of the elements employed had 
 EeenTsed for other purposes. Held: void. - Stimpson .. Woodman, / 7 
 U.S. 117; 19 ^t^. Ed. 866. 
 
 It was well known that the points of a staple on their outer sides would 
 
 Obiter dicta on the English law. QuoMng, Saxby - Glouc-ter 7 ^ B. 
 Div. 305. — Gardner v. Herz, 118 U. b. lbU,c5U x^. r.a. uo, u o 
 Penna. v. Locomotive, 110 U. S. 490. 
 
 heTai;:n?ar;fl-ettr»^^^^^^^^^^ 
 
 Office V. Fenton, 174 U. S. 492. 
 
 - Campbell v. Duplex, 101 Fed. 282; 41 C. C A 351 
 
 Hailes%. Van Wormer, 20 WaU 350 Royer . Roth 132 U. S. 201, Union 
 Keith 139 U. S. 530; Wright v. Yuenglmg, 155 U. b. 47. 
 
 The mere bringing together of deme.ts-^^^^^^^^ 
 
 f?^-ifh\£rw=i39fj5^^^ 
 „r^?^^s^»t^SeXr s'-i^sj^'^n; &, 
 
 119 Fed. 358; 56 C. C. A. 94. 
 
 None of the elements was new, "d H did not P™duoe ane^ .^^^^^^^ but we 
 think the record clearly discloses tha the co^^^^^^ 
 
 SSarindTffid^nVX." ~ >' P^'^"*''"^ "-*■ ' «^*" 
 V. Baker, 138 Fed. 63; 70 C. C. A. 559. 
 National v. International, 106 Fed. 693.
 
 630 THE FIXED LAW OF PATENTS § 676 
 
 § 676. Old Process, New Use — Non-Patentable. 
 
 The adaptation of an old process to a new and similar use is not invention; 
 and judicial notice will be taken of such common use in determining the 
 question of invention. — Dunbar v. Myers, 94 U. S. 187 ; 24 L. Ed. 34. 
 
 Brown v. Piper, 91 U. S. 38. 
 
 The application of an old process or machine to a similar analogous sub- 
 ject, with no change in the manner of application, and no result substantially- 
 distinct in its nature, will not sustain a patent, even if the new form of result 
 had not before been contemplated. The leading case, giving American and 
 English authorities. — Pennsylvania v. Locomotive, 110 U. S. 490; 28 L. Ed. 
 222; 4S. Ct. 220. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Phillips v. Page, 24 How. 164; Jones 
 V. Morehead, 1 Wall. 155; Revg. 1 Fish. P. C. 521; Hicks v. Kelsey, 18 Wall. 670; 
 Smith V. Nichols, 21 Wall. 112; Brown v. Piper, 91 U. S. 37; Roberts v. Ryer, 
 91 U. S 150; Bridge v. Iron, 95 U. S. 274; Planing v. Keith, 101 U. S. 479; 
 Pearce v. Mulford, 102 U. S. 112; Heald v. Rice, 104 U. S. 737; Atlantic v. Brady, 
 107 U S 192- Crane v. Price, 4 Man. & G. 580; 5 Scott (N. S.) 338; 1 Web. 
 P C 393; Dobbs v. Penn. 3 Exch. 427; Smith v. Dent. Co. 93 U. S. 486; Dental 
 V Davis, 102 U. S. 222; Bush v. Fox, Macrery, P. C. 152; 9 Exch. 651; 5 H. L. 
 Cas. 707; Brook v. Aston, 27 L. J. (N. S.) Q. B. 145; 8 El. & Bl. 478; Envelope 
 V. Seymer, 28 L. J. N. S. C. P. 22; 5 C. B. (N. S.) 164; Harwood v. G. N. 
 R. Co. 11 H. L. Cas. 654. 
 
 The patent covers an old process applied to the same subject, with no 
 change in the manner of applying it, and with no result substantially distinct 
 in its nature. It cannot, therefore, be a valid patent. — Western v. Ansonia, 
 114 U. S. 447 ; 29 L. Ed. 210; 5 S. Ct. 447. 
 
 Penna. v. Locomotive, 110 U. S. 490; Vinton v. Hamilton, 104 U. S. 485. 
 
 The application of an old process or machine to a similar or analogous 
 subject, with no change in the manner of applying it and no result substan- 
 tially distinct in its nature will not sustain a patent, even if the new form of 
 result had not before been contemplated. — Miller v. Foree, 116 U. S. 22; 
 29L. Ed. 552; 6 S. Ct. 204. 
 
 Penna. v. Locomotive, 110 U. S. 490. 
 
 The adaptation of an old process to the production of another product than 
 contemplated in the former process, with only mechanical change, is not 
 invention. — Eastman v. Getz, 84 Fed. 458; 28 C. C. A. 459. 
 
 It was nothing more than the application of an old process to analogous 
 matter, producing a result substantially similar in its nature, and was there- 
 fore entirely lacking in invention. — De Lamar v. De Lamar, 117 Fed. 240; 
 54 C. C. A. 272. 
 
 Ansonia v. Electrical, 144 U. S. 11; Mfg. Co. v. Gary, 147 U. S. 623. 
 
 It is a familiar proposition of law, recognized and enforced in a multitude 
 of cases, " that the application of an old process or machine to a similar or 
 analogous subject, with no change in the manner of application, and no result 
 substantially distinct in its nature, will not sustain a patent, even if the 
 new form of result had not before been contemplated." — Neptune v. National, 
 127 Fed. 563; 62 C. C. A. 345. 
 
 Pennsylvania v. Locomotive, 110 U. S. 490; Morris •;;. McMillin, 112 U. S. 244; 
 Blake v. San Francisco, 113 U. S. 679; St. Germain v. Brunswick, 135 U. S. 227; 
 Gates V. Fraser, 153 U. S. 332.
 
 677-679 INVENTION 
 
 631 
 
 The mere application of a process for enameling iron to the enameling of 
 steel involves no invention if the same result is obtained. — National v. 
 New England, 151 Fed. 19; 80 C. C. A. 485. 
 
 § 677. Old Process, New Use — Patentable. 
 
 In carrying out the purpose proposed, the materials employed were all old. 
 It is also true that the steps in the process were not all new. But the process 
 extended beyond the use of known materials and the employment of the 
 processes mentioned. A new product was the result differing from all that 
 had preceded it, not merely in degree of usefulness and excellence, but 
 differing in kind, having new uses and properties. We cannot resist the con- 
 viction that devising and forming such a manufacture by such a process and 
 of such materials was invention. — Smith v. Goodyear, 93 U. S. 486; 23 
 L. Ed. 952. 
 
 § 678. Omitting Element. 
 
 While the omission of an element in a combination may constitute inven- 
 tion, if the result of the new combination be the same as before; yet if the 
 omission of an element is attended by a corresponding omission of the func- 
 tion performed by that element, there is no invention, if the elements retained 
 perform the same function as before. — Richards v. Chase, 159 U. S. 477; 
 40L. Ed. 225; 16 S. Ct. 53. 
 
 § 679. Patentability — Definition. 
 
 It is a new mode of operation, by means of which a new result is obtained. 
 It is this new mode of operation which gives it the character of an invention, 
 and entitles the inventor to a patent ; and this new mode of operation is, in 
 view of the patent law, the thing entitled to protection. The patentee may 
 and should, so frame his specification of claim as to cover this new mode of 
 operation which he has invented. — Winans v. Denmead, 15 How. 330; 
 14 L. Ed. 717. 
 
 Whoever discovers that a certain useful result will be produced in any art, 
 machine manufacture or composition of matter by the use of certain means 
 is entitled to a patent for his invention, provided he specifies the means he 
 uses in a manner so full and exact that anyone skilled in the science to which 
 it appertains can, by using the means he specifies, without any addition or 
 subtraction from the described means, produce precisely the results he 
 describes. Such description must be correct, as it is settled law that the 
 patent is void if the described result cannot be obtained by the described 
 means. — Mitchell v. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 O'Reilly v. Morse, 15 How. 119. 
 
 Invention or discovery is the requirement which constitutes the founda- 
 tion of the right to obtain a patent; and it was decided by this court more 
 than a quarter of a century ago, that unless more ingenuity and skill were 
 required in making or applying the said improvement than are possessed by 
 an ordinary mechanic acquainted with the business, there is an absence ot 
 that degree of skill and ingenuity which constitute the essential element ot 
 every invention. - Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 34. 
 
 Hotchkiss V. Greenwood, 11 How. 267; Phillips ^- Page 24 How. 167; Jones 
 V. Morehead, 1 Wall. 162; Stimpson v. Woodman, 10 Wall. 121. 
 
 Actual invention or discovery must have been made, and the English courts 
 apply this rule more readily and with a much closer scrutiny than is done in 
 this country. — Dunbar v. Meyers, 94 U. S. 187; 24 L. Ed. 34.
 
 632 THE FIXED LAW OF PATENTS §679 
 
 Ralston v. Smith, 11 H. L. Cases, 223; Harwood v. R. R. 11 H. L. Cas. 654; 
 Jordan v Moore, L. R. 1 C. P. 624; Kay v. Marshall, O. & F. 245: Bush v. Fox, 
 5 H. L. Cas. 707; Tetley v. Easton, 2 C. B. (N. S.) 70; Horton v. Mabon, 12 C. 
 B. (N. S.) 437; Ormson v. Clarke, 4 C. B. (N. S.) 475; Parks v. Stevens, L. R. 
 8 Eq. 358; Envelope v. Seymer, 5 C. B. (N. S.) 471; Ormson v. Clarke, 13 C. B. 
 (N S.) 337; Ralston v. Smith, 9 C. B. (N. S.) 117; Sanders v. Aston, 3 B. «fe A. 
 881; Seed v. Higgins, 8 El. & Bl. 755. 
 
 The process of development in manufactures creates a constant demand for 
 new appliances, which the skill of ordinary head workmen and engineers is 
 generally adequate to devise, and which, indeed, are the natural and proper 
 outgrowth of such development. Each step forward prepares the way for the 
 next, and each is usually taken by spontaneous trials and attempts in a 
 hundred different places. To grant to a single party a monopoly of every 
 slight advance made, except where the exercise of invention somewhat above 
 ordinary mechanical or engineering skill is distinctly shown, is unjust in prin- 
 ciple and injurious in its consequences. 
 
 The design of the patent laws is to reward those who make some substantial 
 discovery or invention, which adds to our knowledge and makes a step in 
 advance in the useful arts. Such inventors are worthy of all favor. It was 
 never the object of those laws to grant a monopoly for every trifling device, 
 every shadow of a shade of an idea, which would naturally and spontaneously 
 occur to any skilled mechanic or operator in the ordinary progress of manu- 
 facture. Such an indiscriminate creation of exclusive privileges tends rather 
 to obstruct than to stimulate invention. It creates a class of speculative 
 schemers who make it their business to watch the advancing wave of improve- 
 ment, and gather its foam in the form of patented monopolies, which enable 
 them to lay a heavy tax upon the industry of the country, without contrib- 
 uting anything to the real advancement of the arts. It embarrasses the 
 honest pursuit of business with fears and apprehensions of concealed liens 
 and unknown liabilities, to law suits, and vexatious accountings for profits 
 made in good faith. — Atlantic v. Brady, 107 U. S. 192; 27 L. Ed. 438; 2 
 S. Ct. 225. 
 
 The provisions of the Constitution (Art. 1, Sec. 8) is that " the Congress 
 shall have power to promote the progress of science and useful arts, by secur- 
 ing for limited times to authors and inventors the exclusive right to their 
 respective writings and discoveries." The beneficiary must be an inventor 
 and he must have made a discovery. The statute has always carried out this 
 idea. Under the Act of July 4, 1836, 5 S. at L. 119, 36, in force when the 
 patents were granted, the patentee was required to be a person who had 
 " discovered or invented " a new and useful art, machine, manufacture or 
 composition of matter. " In the Act of July 8, 1870, 16 S. at L. 201, 324, the 
 patentee was required to be a person who had invented or discovered any 
 new and useful art, machine, manufacture, or composition of matter, or 
 any new and useful improvement thereof; " and that language is repro- 
 duced in Sec. 4886 of the R. S. So it is not enough that a thing shall be new, 
 in the sense that in the shape or form in which it is produced it shall not have 
 been before known, and that it shall be useful, but it must, under the con- 
 stitution and the statute, amount to an invention or a discovery. — Thomp- 
 son V. Boisselier, 114 U. S. 1; 29 L. Ed. 76; 5 S. Ct. 1042. 
 
 Vinton v. Hamilton, 104 U. S. 485; Hall v. McNeal, 107 U. S. 90; Atlantic v. 
 Brady, 107 U. S. 192; Slawson v. R. R. 107 U. S. 649; King v. Gallun, 109 U. S. 
 99; tuck V. Mfg. Co. 109 U. S. 117; Esty v. Burdett, 109 U. S. 633; Bussey v. 
 Mfg. Co. 110 U. S. 131; R. R. v. Truck Co. 110 U. S. 490; Phillips v. Detroit, 
 111 U. S. 604; Morris v. McMillin, 112 U. S.244; HoUister v. Mfg. Co. 113 U. S. 59.
 
 1680 INVENTION ^^^ 
 
 T^nt thP obieot of an invention is a very different thing from the invention 
 it.r the oirrectt^^Ve acco.plghed|^^^^^ 
 one way. — White v. Dunbar, 119 U. S. 47, 30 L. t.a. 606, i 7i. v.i. /^. 
 
 Patents cover the means employed to effect results. Neither an idea nor 
 a fuSon, nofany other abstraction, is patentable m a machme patent. - 
 Goshen .. Bissell, 72 Fed 67 ; 19 C C. A 13 ^^^ ^ ^ 
 
 371; Pfeifer v. Dixon, 55 Fed. 390. 
 
 The invention resides in the conception and its embodiment. - Rose v. 
 Hirsh, 77 Fed. 469 ; 23 C. C. A. 246. 
 
 machS mknXture, or composition of matter, or some new and useful 
 ^^-^^l^^^^r^. KSf , in the shape 
 ,t shall be useful but It must, unaer t^e c ^ ^^^ authorities 
 
 ^helSlS - I*in°:.^^att.e,™'F:S; 23 C. C. A. U4. 
 
 • "•fablitstrsh-tCtTTmTS.^rerair^^^^^^^^^^^^^ 
 
 57 C. C. A. 339. 
 
 Patents are granted for advances in the useful f %"." !°f, '""^630 "' 
 knoS-iedge-- Diamond v. Westinghouse, 152 Fed. 704, 81 C. L. A. MU. 
 
 S 68o. Patentability — Patentable Difference. 
 
 Ihe fact that the patent ^-^-^ Pending before the Department^-^ 
 
 Issue of another patent prima facie evidence. - Miller v. Eagle, 151 U. S. 
 "^^^t^. ."u%'*.52! V .. Sterling 107 V. S. 636. 
 
 Imerican .. Elizabeth, 4 Fish. P. C. 189; Burns .. Myer, 100 U. S. 671. 
 U. S. 8; 47 L. Ed. 689; 23 S. Ct. 521.
 
 634 THE FIXED LAW OF PATENTS §681 
 
 The issue of a subsequent patent relating to the same art is evidence 
 presumptive of patentable difference although the two patents were not in 
 interference nor concurrently before the patent office. — Ney v. Ney 69 Fed 
 405; 16 C. C. A. 293. 
 
 Boyd V. Tool Co. 158 U. S. 260. 
 
 In Corning v. Burden, 15 How. 265, the Supreme Court, after referring to 
 the presumption which attends the fact that, after an examination of the 
 records of the patent office, a patent has been issued for the plaintiff's in- 
 vention, said: 
 
 " It'iz not easy to perceive why the defendant who uses a patented machine 
 should not have the benefit of a like presumption in his favor, arising from 
 a like investigation of the originality of his invention, and the judgment of 
 the public officers that his machine is new, and not of the patent previously 
 granted to the plaintiff." 
 
 The case of Blanchard v. Putnam, 8 Wall. 420, overruled this holding of the 
 court and decided that evidence of the defendant's patent is not admissible. 
 
 The decision in Blanchard v. Putnam was followed in the trial of this case 
 and also that of Norton v. Can Co. 59 Fed. 137 where it was said: 
 
 " Abstractly, it would seem that, if the plaintiff's patent was prima facie 
 evidence of novelty (difference from things before it); a subsequent patent to 
 the defendant, or for a device used by the defendant, would be prima facie 
 evidence of novelty (difference from all things before it, and hence from the 
 plaintiff's device) and hence would be admissible in evidence on the issue of 
 infringement, and its use would be innocent, and it was so held in Corning v. 
 Burden, 15 How. 271. But this case was overruled in Blanchard v. Putnam. 
 8 Wall. 420." 
 
 The recent cases, however, of Miller v. Mfg. Co. 151 U. S. 208, and Boyd 
 V. Tool Co. 158 U. S. 260, citing Pavement Co. v. EHzabeth, 4 Fish. P. C. 
 189, expressly aflfirms the doctrine of Corning v. Burden, and held that the 
 issuance of the defendant's patent creates a prima facie presumption of a 
 patentable difference from the prior patent of the plaintiff. The plaintiff 
 in error was entitled, therefore, to an instruction which would permit the jury 
 to consider the presumption that the law creates from the fact that a patent 
 has issued in any case. — Ransome v. Hyatt, 69 Fed. 148; 16 C. C. A. 185. 
 
 That Lorraine and Aubin were granted a patent for their combination 
 affords a presumption that there is a patentable difference between their 
 device and those of Janey or any of the many improvers who obtained 
 patents between Janey and the application of Lorraine and Aubin. — St. 
 Louis V. National, 87 Fed. 885; 31 C. C. A. 265. 
 
 Boyd V. Tool Co 158 U. S. 250. 
 
 The rule is well settled that the grant of a subsequent patent raises a 
 legal presumption of patentable difference from the earlier invention. — 
 Milwaukee v. Brunswick-Balke, 126 Fed. 171 ; 61 C. C. A. 175. 
 
 Miller v. Eagle, 151 U. S. 186; Kokomo v. Kitselman, 189 U. S. 8. 
 
 That the grant of a subsequent patent covering the device alleged to 
 infringe is evidence of patentable difference see Union v. Diamond, 162 Fed. 
 148; 89 C. C. A. 172. 
 
 Boyd V. Janesville, 158 U. S. 260; Kokomo v. Kitselman, 189 U. S. 8. 
 
 § 68i. Patentability — Duty of Court. 
 
 It is a thoroughly settled rule that, as to patentability and the range 
 of the claims in a patent, inasmuch as these matters concern the public at
 
 § 682 INVENTION 635 
 
 large, the court will not allow parties to frame their issues in such a way 
 as to take from it the scrutiny of all the questions which may be involved. 
 — Millard v. Chase, 108 Fed. 399; 47 C. C. A. 429. 
 
 Note: This is a sound rule. It is one which should be followed, and which 
 is not followed to any extent whatever. It should be the duty of the court 
 when it has a patent before it so narrow or so weak that infringement cannot 
 be established, instead of following the line of least resistance and disposing 
 of the case on noninfringement, to perform its duty by the public as well as 
 by the parties, and, if on investigation the patent is found wanting in patent- 
 able novelty, to destroy then and there the monopoly improperly granted. 
 
 The judge who heard the case in the court below, apparently for a kindly 
 desire to save the patent from extinction, contented himself with giving it 
 a construction so narrow that it would not include defendant's tube. In 
 affirming the decree of the court below we are constrained to base our de- 
 cision upon the invahdity of the patent. — Hurlbut v. U. S. 124 Fed. 66; 
 59 C. C. A. 626. 
 
 § 682. Patentability — Mental Conception. 
 
 The complainant's claim to be enrolled upon the list of inventors is based 
 upon propositions too theoretical and visionary for acceptance. — Marchand 
 V. Emken, 132 U. S. 195; 33 L. Ed. 332; 10 S. Ct. 65. 
 
 Dreyfus v. Searle, 124 U. S. 60; Crescent v. Gottfried, 128 U. S. 158; Hollister 
 V. Benedict, 113 U. S. 59. 
 
 Mere conception is not invention. It is the crystallizing of that conception 
 into the invention itself, operative and practical, that entitled the inventor 
 to the protection of letters patent. — Forgie v. Oil Well, 58 Fed. 871 ; 7 
 C. C. A. 551. 
 
 The mere existence of an intellectual notion that a certain thing could be 
 done, and, if done, might be of practical utility, does not furnish a basis for 
 a patent, or estop others from developing practically the same idea. — 
 Standard v. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 Agawam v. Jordan, 7 Wall. 583; Cristie v. Seybold, 55 Fed. 69. 
 
 And here we may observe that a mere mental conception, not tested or 
 reduced to practice, nor followed by any embodiment of the idea, is not in- 
 vention. — Mississippi v. Franzen, 143 Fed. 501 ; 74 C. C. A. 135. 
 
 This was the patent on expanded metal — the well-known article which 
 consists in slitting sheet metal and stretching the intervening strips of metal. 
 Held: We have been obliged to come to the conclusion that the so-called 
 invention was not really an invention at all within the meaning of the patent 
 laws. As we regard the application, it was no more than the announcement 
 by Golding of a happy thought, unaccompanied by any sufficient description 
 of the means by which his thought might be realized. Indeed it does not seem 
 unfair to add, that the applicant himself was in such doubt about the validity 
 of the patent that he hastened to take out a patent for a machine by which the 
 desired result could be accomplished. The applicant is asking for a patent 
 upon what may have been a valuable idea, but was after all no more than 
 this. — Bradford v. Expanded, 146 Fed. 984; 77 C. C. A. 230. Reverse 1, 
 214 U. S. 366. 
 
 Rob. on Pat. 509; Risdon v. Medart, 158 U. S. 68- 
 
 Note: This a wrong appUcation of the rule stated by Robinson. If the 
 inventor did, as a matter of fact, even as a " happy thought," hit upon a
 
 636 THE FIXED LAW OF PATENTS §683 
 
 new article of manufacture which possessed utihty as well as novelty, he was 
 entitled to a patent. Put to the test of novelty and utility, and surviving both 
 tests, the court should have held the patent good. Such course would have 
 conformed to good judgment, whether it squared with academic reasoning 
 or not. 
 
 § 683. Patentability — Scientific Principles and Ideas. 
 
 A principle, in the abstract, is a fundamental truth; an original cause; 
 a motive ; these cannot be patented as no one can claim in either of them an 
 exclusive right. — Le Roy v. Tatham, 14 How. 156; 14 L. Ed. 367. 
 
 The discovery of a principle in natural philosophy or physical scieiice is not 
 patentable. — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 We find no authority to grant a patent for a " principle " or a " mode of 
 operation " or an idea or any other abstraction. — Burr v. Duryee, 68 
 U.S. 531; 17L. Ed. 750. 
 
 An idea of itself is not patentable, but a new device by which it may be 
 made practically useful is. — Rubber Tip v. Howard, 87 U. S. 498; 22 L. Ed. 
 410. 
 
 A principle or an idea is not patentable. — Fuller v. Yentzer, 94 U. S. 288; 
 24 L. Ed. 103. 
 Burr V. Duryee, 1 Wall. 531. 
 
 Their discovery, which is conceded to be valuable and of great benefit, was 
 that the old process of fumigating trees by means of an oiled tent and hydro- 
 cyanic acid gas, both of which were old and free to the public, could be made 
 successful " provided the fumigation is done at night." Such a discovery, 
 however new and valuable it may be, is not within the pale of patentable 
 inventions. It does not come within any of the principles of the patent law, 
 or any of the provisions of the statute relating to patents. A mere naked 
 principle, a law of nature or property of matter cannot be patented. So long 
 as the principle is a mere item of knowledge, and sometimes from its nature 
 it must always remain such, no patent can be held valid, however brilliant 
 and useful the discovery may be. — Wall v. Leek, 66 Fed. 552; 13 C. C. A. 
 630. 
 
 Merw. Pat. Inv. 4, 73, 529; 1 Rob. Pat. sec. 140; LeRoy v. Tatham, 14 How. 
 156; Morton v. Infirmary, 2 Fish. P. C. 320. 
 
 A principle, considered as a natural physical force, is not the product of 
 inventive skill. It is the common property of all mankind. It exists in nature 
 independently of human effort, and can neither be diminished nor increased 
 by human power. Man can discover and employ it, but his employment of it 
 in the modes or through the instrumentalities by which it is applied in nature 
 is a mere imitation of what every man is able to perceive and reproduce as 
 well as he. All endeavors to confine it to himself are at once futile and unjust. 
 It exists for all men, as well after his discovery as before. The laws neces- 
 sarily recognize and protect his right, and do not permit any man to ex- 
 clusively use the conditions which are the gifts of nature, simply because he 
 was the first one to discover its value. Not until some new instrument or 
 method is contrived for its direction towards ends which it cannot naturally 
 accomplish does his creative genius manifest itself. — Wall v. Lock, 66 Fed. 
 552; 13 C. C. A. 630. 
 
 1 Rob. Pat. sec. 136 et seq.; Detmold v. Reeves, 1 Fish. P. C. 131; Morton v. 
 Infirmary, 2 Fish. P. C. 320; Morton's Patent, 8 Op. Attys. Gen. 269.
 
 §§ 684-685 INVENTION 637 
 
 The magnetic current is not itself a part of the device or invention any 
 more than a current of water is an element of a water wheel. — Thomson- 
 Houston V. Western, 70 Fed. 69; 16 C. C. A. 642. 
 
 But it does not follow that a conception is patentable merely because it is 
 first in time. Concept alone is not patentable. Concept must be accompanied 
 by mechanical embodiment; and, as the law now stands, must itself be 
 unanticipated. — Voightmann v. Perkinson, 138 Fed. 56; 70 C. C. A. 482. 
 
 § 684. Patentability — Miscellaneous Rules. 
 
 It would seem that an architectural design, such as an improvement in the 
 construction of jails, is not patentable. — Jacobs v. Baker, 74 U. S. 295; 
 19 L. Ed. 200. 
 
 Whether an invention covering an " improvement in the constructions and 
 operation of prisons " comes within any of the classes of patentable inven- 
 tions doubted in Fond du Lac v. May, 137 U. S. 395; 34 L. Ed. 714; 11 S. Ct. 
 98. 
 
 Jacobs V. Baker, 74 U. S. 295. 
 
 An invention made principally to forestall competition in trade rather than 
 to obtain the just reward of invention will not be looked upon favorably, — 
 Pope V. Gormully, 144 U. S. 254; 36 L. Ed. 426; 12 S. Ct. 643. 
 
 Complainant consulted an inventor and manufacturer of machinery 
 owning a patent upon a certain device as to devising improved means for per- 
 forming an operation in complainant's business. The inventor consulted, at 
 complainant's suggestion, made an adaptation of his patented device and con- 
 structed a device for complainant's use. Complainant bought and used the 
 device and others; and a year later, took out a patent thereon in his own 
 name. Held: That the suggestions of complainant did not amount to in- 
 vention and that the manufacturer was the true inventor. — Forgie v. Oil 
 Well, 58 Fed. 871; 7 C. C. A. 551. 
 
 If such a movement is patentable, evidently it must be because in itself, 
 and apart from any mechanism, it constitutes " a new and useful art." 
 R. S. 4886. There seems to be no controlling reason against considering the 
 claims as if for mechanisms. — Campbell v. Miehle, 102 Fed. 159; 42 C. C. 
 A. 235. 
 
 § 685. Process — Definition. 
 
 The processes used to extract, modify and concentrate natural agencies, 
 constitute invention. The elements of the power exist; the invention is not 
 in discovering them but in applying them to useful objects. Whether the 
 machinery used be novel, or consist of a new combination of parts known, the 
 right of the inventor is secured against all who use the same mechanical 
 power, or one that shall be substantially the same. — Le Roy v. Tatham, 14 
 How. 156; 14 L. Ed. 367. 
 
 A process which attains a new and previously unknown result is novel and 
 patentable, though the elements of the process are not novel. — Mowry v. 
 Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 In this case the inventor had a patent upon a process for preparing raw 
 hides for belting, etc. In his claim he uses the words " prepared raw hide." 
 The specification describes the entire several processes including that of
 
 638 THE FIXED LAW OF PATENTS § 586 
 
 removing the hair and producing a " prepared raw-hide." Effort was made to 
 limit the extent of the process to the several steps subsequent to those of 
 preparing the hide. Held, that as these first steps were made an essential 
 part of the specification and were fully described and the advantages set out, 
 he is not at liberty to construe his invention by curtailment of the steps 
 involved so as to place in infringement another using the subsequent steps 
 of the process. — Royer v. Coupe, 146 U. S. 524; 36 L. Ed. 1073; 13 8. Ct. 
 166. 
 
 The familiar doctrine was not overlooked, though not restated, that a 
 process consisting of different steps, like a combination of different mechan- 
 ical elements, may be new and patentable though every step by itself be old. 
 But when a process has no novelty unless it can be found in a particular 
 step, and it proves to be wanting there, the entire process necessarily lacks 
 patentability. — Evans v. Suess, 86 Fed. 779; 30 C. C. A. 367. 
 
 This patent cannot be sustained on the ground merely that the production 
 of a pyroxyline compound in imitation of onyx or its production in the man- 
 ner described in the specification v/as novel. It is necessary that such pro- 
 duction should also have involved invention. — Arlington v. Celluloid, 97 
 Fed. 91; 38 C. C. A. 60. 
 
 § 686. Process — Mechanic al. 
 
 The case of Westinghouse v. Boyden, 170 U. S. 537, absolutely unsettles the 
 question of the patentability of a mechanical proce.ss. The invention in 
 question is the discovery by Westinghouse of the accomplishment of a new 
 function, viz., sending the train-pipe air, in emergency, along with the reser- 
 voir air to produce a quick or emergency action. Westinghouse clearly was 
 the first to perform this function, and he disclosed in his patent mechanical 
 means for carrying out his discovery. Boyden invented mechanical means for 
 performing the same function, and apparently as good or better meai-::. It 
 is not denied that the utilization of this function or process was well-nigh 
 as great a discovery as that of the original air-brake by Westinghouse — 
 it is even so admitted in the opinion of Mr. Justice Brown. But the court held 
 by a bare majority of one (Justices Shiras, Brewer, Gray and McKenna dis- 
 senting) that although Westinghouse was unquestionably the discoverer 
 of the function and the patentee of the process, the patent (although a 
 pioneer) must be limited to the mechanical combination of the patent or 
 absolute equivalents. 
 
 In order to show the unsettled holding, the following extracts are given 
 from the opinion of Mr. Justice Brown and the dissenting opinion of Mr. 
 Justice Shiras in which Mr. Justice Brewer concurred. Justices Gray and 
 McKenna generally dissenting from the opinion and decision of the court. 
 
 Opinion of Court Dissenting Opinion 
 
 The difficulty we have found in It in no wise detracts from the 
 this claim is this: That, if it be in- merit of this invention that later 
 terpreted simply as a claim for the devices have been adopted which 
 function of admitting air to the under its practical operation are 
 brake cylinder directly from the more efficient. The very term 
 train-pipe, it is open to the objection " pioneer patent " signifies that the 
 (held in several cases to be fatal) invention has been followed by 
 that the mere function of a machine others. A pioneer patent does not 
 cannot be patented (Corning v. Bur- shut, but opens, the door for subse- 
 den, 15 How. 252; Burr v. Duryea, 1 quent invention. Being of the char- 
 Wall. 531 ; Fuller v. Yentzer, 94 U. acter as described as a pioneer, the 
 S. 288; Locomotive v. Medart, 158 patent in suit is entitled to a broad
 
 §686 
 
 INVENTION 
 
 C39 
 
 U. S. 68; Wick v. Ostrum, 103 U. S. 
 461; Paper Bag Case, 30 Fed. 63; 
 Machine Co. v. Waterbury, 39 Fed. 
 771). 
 
 This rule was clearly laid down in 
 the leading case of Corning v. Bur- 
 den, 15 How. 252, in which Mr. 
 Justice Grier, delivering the opinion 
 of the court, drew the distinction 
 between such processes as were the 
 result or effect of " chemical action, 
 by the operation or application of 
 some element or powder of nature, or 
 of one substance to another " and 
 the mere result of the operation of a 
 machine. . . . We have no desire to 
 quahfy the repeated expressions of 
 this court to the effect that, when the 
 invention is functional and the de- 
 fendant's device differs from that of 
 the patentee only in form or in a rear- 
 rangement of the same elements of 
 the combination, he would be ad- 
 judged an infringer, even if, in cer- 
 tain particulars, his device be an 
 improvement upon that of the 
 patentee. But after all, even if the 
 patent for a machine be a pioneer, 
 the alleged infringer must have done 
 something more than reach the same 
 result. He must have reached it by 
 substantially the same or similar 
 means, or the rule that the function 
 of a machine cannot be patented is 
 of no practical value. To say that 
 the patentee of a pioneer invention 
 for a new mechanism is entitled to 
 every mechanical device which pro- 
 duces the same result is to hold in 
 other language, that he is entitled to 
 a patent for his function. Mere 
 variations of form may be disre- 
 garded, but the substance of the in- 
 vention must be there. ..." That 
 two machines produce the same 
 effect will not justify the asser- 
 tion that they are substantially the 
 same, or that the devices used are 
 therefore mere equivalents for those 
 of the other." 
 
 Westinghouse v. Boyden, 170 U 
 
 or liberal construction. In other 
 words, the invention is not to be 
 restricted narrowly to the mere de- 
 tails of mechanism described as a 
 means of carrying the invention into 
 practical operation. 
 
 I cannot assent to what is perhaps 
 rather intimated than decided in the 
 opinion of the court, — that what 
 is called a " process," in order to be 
 patentable, must involve a chemical 
 or other similar elemental action." 
 The term " process or method " as 
 describing the subject of a patent, is 
 not found in the statutes. No reason 
 is given in the authorities, and I can 
 think of none in the nature of things, 
 why a new process or method may 
 not be patentable, even though a 
 mechanical device or a mechanical 
 combination may be necessary to 
 render the new process practicable. 
 It seems to be used by the courts 
 as descriptive of an invention which, 
 from its novelty and priority in the 
 art to which it belongs, is not to be 
 construed as inhering only in the 
 particular means described in the 
 letters patent as sufficient to exem- 
 plify the invention and bring it into 
 practical use. 
 
 Winans v. Denmead, 15 How^ 330; 
 McCormickv. Talcott, 20 How. 402; 
 Machine Co. v. Lancaster, 129 U. S. 
 263 ; Proctor v. Bennis, 36 Ch. Div, 
 740; Neilson's Pat. Web. P. C. 275; 
 715; Tilghman v. Proctor, 102 U. S. 
 767; O'Pteilly v. Morse, 15 How. 62; 
 Telephone Cases, 126 U. S. 1. . . . 
 
 The conclusion justified by the 
 authorities is that whether you call 
 Westinghouse's discovery, that 
 " quick action " may be accom- 
 plished by the co-operation of the 
 main pipe air and that from the 
 reservoir, a " process " or a " mode of 
 operation," yet if he was the first to 
 declare it, and to describe a mechani- 
 cal means to give practical effect to 
 the invention, he must be regarded 
 as a pioneer inventor, and as en- 
 titled to protection against those 
 who, availing themselves of the dis- 
 covery, seek to justify themselves by 
 pointing to mere differences in 
 mechanical form in the mechanical 
 devices used. 
 S. 537; 42 L. Ed. 1136; 18 S. Ct. 707.
 
 640 THE FIXED LAW OF PATENTS §§ 687-688 
 
 Note: It is perfectly clear that this dire confusion of a principle of law 
 could have been avoided and the proper award made Westinghouse for his 
 great invention, rather than leaving him with the empty compliment of 
 bein"- a " pioneer," if the court had held to a broad, sane application of the 
 doctrine of equivalents ; but this the court did not do, and to what extent 
 the next great " pioneer " will be shorn of the fruits of his genius by this 
 narrow American rule, no one can surmise. With Germany holding " func- 
 tional " claims the proper form, and England recognizing generic mechan- 
 isms capable of protection by functional claims, it seems to us Mr. Justice 
 Shiras has the better of the argument. 
 
 When he disclosed his process, he disclosed enough to enable any mechanic 
 familiar with the art or industry to which this discovery belonged to construct 
 the apparatus essential to the employment of the patented process (the proc- 
 ess of separating cotton hulls and Unt). — Johnson v. Foos, 141 Fed. 73; 
 72 C. C. A. 105. 
 
 Whether a mechanical process is patentable, see Daylight v. American, 
 142 Fed. 454; 73 C. C. A. 570. 
 
 § 687. Process — Non-Patentable. 
 
 This was simply the application by the patentee of an old process to a new 
 subject, without any exercise of the inventive faculty and without the 
 development of any idea which can be deemed new or original in the sense of 
 the patent law. The thing was within the circle of what was well known 
 before, and belonged to the public. No one could lawfully appropriate it to 
 himself and exclude others from using it in any usual way for any purpose to 
 which it may be desired to apply it. — Brown v. Piper, 91 U. S. 37; 23 L. 
 Ed. 200. 
 
 Ames V. Howard, 1 Sumn. 487; Howe v. Abbott, 2 Story, 194; Bean v. Small- 
 wood, 2 Story, 411; Winans v. R. R. 2 Story, 412; Hotchkiss v. Greenwood, 
 11 How. 248. 
 
 A mere difference in degree or thoroughness of a process resulting in the 
 same but more advantageous product is mechanical skill, not invention. — 
 Commercial v. Fairbank, 135 U. S. 176; 34 L. Ed. 88; 10 S. Ct. 972. 
 
 The complainants do nothing more than apply the lumps or cartridges to 
 beer instead of to water, and thus adopt an old form or method of applying 
 the alkali, .without any novelty in the mode of application ; and this, it has 
 been frequently decided, will not sustain a patent even if the new form of 
 result had not been before contemplated. — Zinsser v. Krueger, 48 Fed. 296; 
 1 C. C. A. 73. 
 
 Railroad v. Locomotive, 110 U. S. 490. 
 
 A mere intellectual process, such as " means for securing against excessive 
 losses of bad debts " is not patentable. — U. S. Credit v. American, 59 Fed. 
 139; sec. A. 49. 
 
 § 688. Process — Process and Machine. 
 
 Where the patentee has produced a better, though not novel, article of 
 manufacture, and described and claimed his invention in the terms of his 
 process, it was held, that all he invented was a machine for the more perfect 
 manufacture, but that the operation or function of such machine was not 
 patentable. — Risdon v. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 S. Ct. 745.
 
 §§ 689-690 INVENTION 641 
 
 Neilson v. Harford, 1 Web. P. C. 331; O'Reilly v. Morse, 50 U. S. 62, 115; 
 Househill V. Neilson, 1 Web. P. C. 673; Tilghman v. Proctor, 102 U. S. 708; 
 Mowry v Whitney, 81 U. S. 620; Cochrane v. Deener, 94 U. S. 780; New Process 
 
 V Mails, 122 U. S. 413; Telephone Cases, 126 U. S. 1; Bell Tel. v. Dolbear, 15 
 Fed. 488; Wyeth v. Stone, 1 Story, 273; Corning v. Burden, 56 U. S. 252; Mc- 
 Kay V. Jackman, 12 Fed. 615; Brainard v. Cramme, 12 Fed. 621; Gage v. Kel- 
 logg, 23 Fed. 891; Hatch v. Moffat, 15 Fed. 252; Sickles v. Falls, 4 Blatchf. 
 518; E.xcelsior v. Union, 32 Fed. 221. 
 
 (The patent contained both machine and process claims) . The defense 
 therefore is not the press upon the process. It is the other way, the process 
 upon the press; for it is impossible to consider the 5th claim as describing 
 anything but the operation and effect of the press. What, indeed, is the 
 .process — what is the force at work? And the inquiry is entirely independeiit 
 of the questions as to what constitutes a patentable process discussed by this 
 court in Risdon v. Medart, 158 U. S. 69; and in Westinghouse v. Boyden, 
 170 U. S. 537. What then, is the force at work and how is it applied? It 
 is force (pressure) applied to sheets of paper placed between " compressing 
 heads." In other words, a special application of pressure began in the press 
 and continued in the bundle by means of strings and cords. This, however, 
 is the operation and effect of the machine, and it is none the less so because the 
 pressure is held indefinitely. Its existence in the bundle is not independent 
 of the press. The pressure is as much an effect in the bundle as when first 
 applied. The pressure is applied by the press. — Busch v. Jones, 184 U. S. 
 598; 46 L. Ed. 707; 22 S. Ct. 511. 
 
 It is established by authority that an inventor may be entitled to a patent 
 for the method or process for producing new and useful results, and also 
 for the means by which it is produced, when the method or process is suscep- 
 tible of being performed by known means, and the means invented are of 
 such a character as to merit a patent. — Dayton v. Westinghouse, 118 Fed. 
 562; 55C. C. A. 390. 
 
 Merrill v. Yeomans, 94 U. S. 568. 
 
 § 689. Property of Matter. 
 
 A new property discovered in matter, when practically applied, in the 
 construction of a useful article of commerce or manufacture, is patentable. — 
 Le Roy v. Tatham, 14 How. 156; 14 L. Ed. 367. 
 
 HousehiU V. Nelson, Web. P. C. 683; See, Le Roy v. Tatham (S. C.) 22 How. 
 132. 
 
 He had discovered a new property or force in matter, and had made 
 practical application of such newdy discovered force to an object. This was 
 patentable. — American v. Howland, 80 Fed. 395; 25 C. C. A. 500. 
 
 Poillon V. Shmidt, Fed. Cas. 11,241; Smith v. Ely, Fed. Cas. 13,043; Parker 
 
 V Hulme, Fed. Cas. 10,740; LeRoy v. Tatham, 14 How. 156; Collar Co. v. White, 
 Fed. Cas. 14,396; Ansonia v. Electrical, 144 U. S. 11; Rob. Pat. sec. 101. 
 
 § 690. Result or Function. 
 
 A patent is not good for an effect, or the result of a certain process, as 
 that would prohibit all other persons from making the same thing by any 
 means whatsoever. This, by creating monopolies, would discourage arts and 
 manufactures against the avowed policy of the patent laws. — Le Roy v. 
 Tatham, 14 How. 156; 14 L. Ed. 367. 
 
 He claims a patent for an effect produced by the use of electro-magnetism, 
 distinct from the process or machinery necessary to produce it. No patent
 
 642 THE FIXED LAW OF PATENTS §690 
 
 can lawfuUv issue for such a claim. — O'Reilly v. Morse, 15 How. 62; 14 L. 
 Ed. 601. 
 
 It is for the discovery or invention of some practical method or means of 
 producing a beneficial result or effect, that a patent is Slanted and not for 
 the result or effect itself. — Corning v. Burden, lo How. 252; 14 L. Ed. 683. 
 
 The result produced by a machine or combination is not patentable. — 
 Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 The prior structures never effected the kind of result attained by Richard- 
 son's apparatus, because they lacked the thing which gave success. — 
 Consohdated v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 513. 
 
 The plaintiff may or may not have been entitled to a patent for the ma^ 
 chinery employed in the manufacture of the article in question ; but he cer- 
 tainly was not entitled to a patent for the function of such machme, nor to 
 the completed article which differs from the prior ones only in its superior 
 workmanship. - Risdon v. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 b. Ct. 
 745. 
 
 The distinction between the object of an invention and the means con- 
 trived for its accomplishment should not be forgotten. The object to be 
 achieved is not patentable; the means may be. — Brush v. Western, 76 bed. 
 761; 22C. C. A. 543. 
 
 That an unexpected function develops in actual use, which cannot be 
 referred to the combination described and claimed, if the combination 
 described and claimed is anticipated by a prior patent, such new function 
 is not sufficient to distinguish the invention from the anticipation. — Magic 
 V. Economy, 97 Fed. 87; 38 C. C. A. 56. 
 
 Corning v. Burden, 15 How. 252; Westinghouse v. Power Brake Co., 170 U. S. 
 537. 
 
 The mere end and purpose sought to be accomplished by a device is not the 
 subject of a patent, but only the new and useful means for obtaining that 
 end. — Hickory v. Frazier, 100 Fed. 99; 40 C. C. A. 296. 
 
 Knapp V. Morss, 150 U. S. 221; Wollensak v. Sargent, 151 U. S. 227. 
 
 While mere results are not ordinarily patentable, many constructions, 
 and many processes, — simple and obvious enough when looked at after the 
 occurrence, — have been held to be patentable inventions, not so much 
 because the patentee exerted inventive thought in his immediate work of 
 construction, as because the step taken lay toward the creation of some 
 new aid to the convenience of mankind — some distinct addition to the 
 equipment of civihzed classes. — Indiana v. Crocker, 103 Fed. 496; 43 C. C. 
 A. 287. . 
 
 Note: Certainly this IS a remarkable holding ; for nowhere else in the books 
 do I know of a case which has for one moment maintained that a result could 
 be made the subject of a claim. While it is true that, in a sense, a process and 
 a product are both patentable and in that sense, the result may be patented, 
 there is no authority for the suggestion that " mere result " might possibly be 
 patentable. 
 
 These ways of varying resistance, and the difference between them, have 
 been brought out and emphasized by the learned and skilled experts. These 
 ways are simply the different modes of operation of the material which com-
 
 § 691 INVENTION 643 
 
 pose the electrodes. They certainly cannot form the basis for any method 
 patent covering all materials whose mode of operation is the same, because 
 there is nothing in the so-called area varying method, or density varying 
 method, or intimacy of contact method, considered by themselves and apart 
 from the discovery of microphonic action, or the special properties of some 
 material like carbon, which has ever contributed anvthing to the progress of 
 the telephonic art, — American v. National, 119 Fed. 893; 56 C. C. A. 423, 
 
 _ Where a new result has been attained by some patentable mode of opera- 
 tion, the patentee cannot have a monopoly of the new result. It is open for 
 any one to devise and patent a new means of producing the same result — 
 a means that has a different principle of operation — and one who succeeds 
 in doing this is not an infringer of the older patent. — Ries v. Barth, 136 Fed. 
 850; 69 C. C. A. 528, 
 
 § 691. Scientific Principles and Laws. 
 
 Imparting to matter a peculiar motion in rotation according to the natural 
 laws of fluids for the purpose of assisting a chemical process, the means 
 employed being old, is not patentable. — Marchand v. Emken, 132 U. S. 
 195; 33 L. Ed. 332; 10 S. Ct. 65. 
 
 The inventor need not understand the philosophic principle embodied in 
 ids invention, — Cowles v. LowTey, 79 Fed. 331 ; 24 C, C, A. 616. 
 Eames v. Andrews, 122 U. S. 40. 
 
 That while a physical law or law of nature, like centrifugal action, is not 
 patentable, the means of employing the same to effect a definite result may 
 be patentable ; but such patent will not cover other means for effecting the 
 same result, see Whitaker v. Huntington, 95 Fed, 471 ; 37 C. C. A. 151. 
 
 He describes the process, the mode of operation and the result, and the 
 means for obtaining it. The scientific principle is not part of the process, 
 is not patentable, and need not be set forth. — Emerson v. Nimocks, 99 Fed. 
 737; 40 C. C. A. 87. 
 
 Eames v. Andrews, 122 U. S. 40. 
 
 While a law of nature — the mere principle — is not patentable, the 
 inventor of means by which the principle can be utilized may be entitled 
 to a patent. The new application of the law by the described mechanical 
 means to a new purpose, which affords a new and useful practical result, is 
 patentable. — Thomson-Houston v. Nassau, 107 Fed. 277 ; 46 C. C. A. 263. 
 
 Nor can the Bardsley patent be construed to rightfully exclude others 
 from using a jet of water, tangentially applied to the inner surface of a bowl, 
 to revolve the bowl. This was a law of nature, well known before the Bardsley 
 device. — Johnson v. McCurdy, 108 Fed. 671 ; 47 C. C. A. 577. 
 
 The motor only utilized a well-known law of nature — that a jet of water, 
 applied tangentially to the inner surface of a basin nicely pivoted, would tend 
 to revolve it. This had been partially exemphfied for many years in pre- 
 ceding water motors. — Justi v. Clark, 108 Fed. 659; 47 C. C. A. 565. 
 
 It was not, in any just sense, an independent discovery in nature, subse- 
 quently utilized in one of the arts; for, in substance, it was nothing but a 
 chemical search into a chalk already in the art, for the ingredients which
 
 544 THE FIXED LAW OF PATENTS § 692 
 
 eave to such chalk its excellence. It was research, but not patentable 
 discovery. — Hoskins v. Matthes, 108 Fed. 404; 47 C. C. A. 434. 
 
 When, under special circumstances, a particular practical application of a 
 known principle proves to be of advantage in the arts, and yet the thought of 
 making it has not occurred to those expert therein, such application, at times, 
 involves invention. — Westinghouse v. Stanley, 133 Fed. 167; 68 C. C. A. 
 523. 
 
 Watson V. Stevens, 51 Fed. 757; Heap v. Tremont, 82 Fed. 449; Western v. 
 La Rue 139 U. S. 601; National v. Boston, 166 U. S. 502; DuBois v. Kirk, 158 
 U. S. 58. 
 
 We do not understand that this ignorance of the patentee, or the knowledge 
 subsequently gained from the prior art, affects the status of the invention in 
 suit. The fact that the patentee did not fully understand the principle upon 
 w4iich his invention operated, or that his instructions were capable of a con- 
 struction which would render the patent impracticable and defeat its pur- 
 poses, should not deprive him of the benefit of a meritorious invention, pro- 
 vided it appears, as is found in this case, that the patent sufficiently disclosed 
 to those skilled in the art the cause of previous defects and a new and useful 
 discovery and invention by means of which they might be successfully over- 
 come. He is not to be deprived of the benefit of his invention because he 
 may have been mistaken in his statement of the reasons why the result was 
 secured, or may have failed to correctly state the theory of their operation. — 
 Westinghouse v. Montgomery, 153 Fed. 890; 82 C. C. A. 636. 
 
 Dixon V. Pfeifer, 55 Fed. 390. 
 
 § 692. Simplicity — Does not Negative Invention. 
 
 The simplicity of an invention, or the fact that it might have occurred to 
 anyone, does not negative invention. Citing Loom Co. v. Higgins, 105 U. S. 
 591. — Pittsburgh v. Roberts, 71 Fed. 706; 18 C. C. A. 302. 
 
 To obtain absolute simplicity is the highest trait of genius. — Dececo v. 
 Gilchrist, 125 Fed. 293; 60 C. C. A. 207. 
 
 It cannot be denied that a mere simplification of a very substantial char- 
 acter, disposing of parts which have long been in use, expensive and burden- 
 some in their nature, and which the trade has found no method of dispensing 
 with, may amount to patentable invention. To obtain absolute simplicity 
 is the highest trait of genius. — Dececo v. Gilchrist, 125 Fed. 293; 60 C. C. 
 A. 207. 
 
 Hobbs V. Goodling, 111 Fed. 403; discussing Richards v. Chase, 159 U. S. 477; 
 159 U. S. 54; National v. Hedden, 148 U. S. 482; Lawther v. Hamilton, 124 U. 
 S. 1; Crescent v. Gottfried, 128 U. S. 158. 
 
 The simplicity and obvious nature of East's device seem to be the chief 
 argument against its patentability, but the books are full of cases where 
 patents have been sustained for changes in methods which seem equally 
 simple. — Farmers' v. Spruks, 127 Fed. 691 ; 62 C. C. A. 447. 
 
 Barbed Wire Pat. 143 U. S. 275; Keystone v. Adams, 151 U. S. 144; Smith v. 
 Goodyear, 93 U. S. 498; Topliff v. Topliff, 145 U. S. 156; Crown v. Aluminum, 
 108 Fed. 845. 
 
 The device of the claim when completed is so diminutive in size and 
 simple in construction that, unless care is taken, the assertion that there 
 is no room for invention in so small a structure may receive greater con- 
 sideration than is warranted. This court has repeatedly upheld patents for
 
 § 693 INVENTION 645 
 
 similar improvements, the test being not the simplicity of the de\ice, but the 
 difficulties overcome and the result accomplished. — U. S. Fastener v. 
 Bradley, 149 Fed. 222; 79 C. C. A. ISO. 
 
 Fastener v. Littauer, 84 Fed. 164; Kent v. Simons, .39 Fed. 606; Fastener v. 
 Hays, 100 Fed. 984; Consolidated v. Fastener, 79 Fed. 795. 
 
 § 693. Simplicity — Ex post facto Judgment. 
 
 It should be borne in mind that tliis process was not one accidentally dis- 
 covered, but was the result of a long search for the very purpose. The sur- 
 prise is that the manufacturers of steel, having felt the want for so many 
 years, should have never discovered from the multiplicity of patents and of 
 processes introduced into this suit, and well known to the manufacturers of 
 steel, that it was but a step from what they already knew to that which they 
 had spent years in endeavoring to find out. It only remains now for the 
 wisdom which comes after the fact to teach us that Jones (the inventor) 
 discovered nothing, invented nothing, accomplished nothing. — Carnegie 
 V. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 Loom Co. V. Higgins, 10.5 U. S. .591. 
 
 It is true the Jones patent is a .simple one, and in the light of present 
 experience it seems strange that none of the expert steel makers, who ap- 
 proached .so near the consummation of their devices, .should have failed to 
 take the final step which was needed to convert their experiments into an 
 assured success. This, however, is Vjut the common history of important 
 inventions, the simplicity of which seems to the ordinary observer to preclude 
 the possibility of their involving an exercise of the inventive faculty. — 
 Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968; 22 S. Ct. 698. 
 
 Its very simplicity in such an old field should be a warning against a 
 too ready acceptance of the ex post facto wisdom of the bystander. — 
 Regent v. Penn, 121 Fed. 80; 57 C. C. A. 334. 
 
 It is difficult to draw the line between mechanical skill and patentable 
 invention, and now that East has succeeded in producing a barrel of great 
 commercial use, out of simple and inexpen.sive material, by what seems a 
 trivial modification of previously known devices, it is easy to say that any 
 mechanic skilled in the art, having before him the previous invention of 
 Roberts, could readily have accomplished the same object by ordinary 
 mechanical skill, but the fact remains that, notwithstanding the great 
 demand and imperative need of the very thing that Ea.st produced, no other 
 mechanic or barrel maker had ever produced such a barrel previous to East's 
 patent. Simple as the device is, others failed to see it, or to estimate its 
 value, or to bring it to the public notice. — Farmers' v. Spruks, 127 Fed. 
 691; 62 C. C. A. 447. 
 
 The fact that a new combination or device may be simple and ob\'ious to 
 the ordinary understanding, when once produced in concrete form, is not 
 necessarily proof that invention was not involved. This is almost a common- 
 place in the jurisprudence of patent law. — Buchanan v. Perkins, 135 Fed. 
 90; 67 CCA. .564. 
 
 It is easy now^ to minimize its importance and say it consisted simply 
 in applying a pneumatic hammer to a sieve, but the fact remains that, with 
 the difficulty of enameling keenly recognized in the art, no one made such a 
 combination. — Mott v. Standard, 159 Fed. 135; 86 C C A. 325.
 
 g46 THE FIXED LAW OF PATENTS §§694-696 
 
 § 694. Simplification. 
 
 Under some circumstances it may happen that there is invention in sub- 
 stituting for a complex or expensive form something simple or mexpensive. 
 If therefore, the concave-convex form had been a long tune in use, and the 
 patentee had discovered that the convex-flat form was less expensive, and 
 more simple, and yet would answer the purpose, and if he had been the first 
 to put that discovery into practice, there might be invention m so domg, 
 notwithstanding he had made a mistaken claim that his construction had 
 other advantages; but the case does not show such a condition of things. — 
 Kenney v. Bent, 97 Fed. 337; 38 C. C. A. 205. 
 
 While it is perhaps true that sometimes the mere simplification of mechan- 
 ism by omitting parts may amount to patentable invention, yet this is only 
 under exceptional circumstances. — U. S. Peg-Wood v. Sturtevant, 125 Fed. 
 378; 60C. C. A. 244. 
 
 Patentable novelty may be found in an improvement which simplifies a 
 complicated train of mechanism by eliminating some of its elements, with the 
 result that the defects due to the presence of these elements are done away 
 with. — Brown v. Huntington, 134 Fed. 735; 67 C. C. A. 639. 
 
 § 695. Substitution — Elements. 
 
 There would be no invention in changing one of the elements of the Coyel 
 patent by bringing into it a feature of the Wilkin patent. — Rich v. Baldwin, 
 133 Fed.^920; 66 C. C. A. 464. 
 
 Overweight v. Vogt, 120 Fed. 957. 
 
 The evidence, we think, fairly leads to the conclusion that the patentee 
 took the combination of Thyng's patent, but instead of using the form of 
 link of that patent, substituted therefor another old form of hnk which 
 had been commonly used for the same or analogous purposes. This sub- 
 stitution may have secured better results, but it did not involve invention. — 
 North Jersey v. BrUl, 134 Fed. 580; 67 C. C. A. 380. 
 
 Stimpson v. Woodman, 10 Wall. 117; Smith v. Nichols, 21 Wall. 112; Pennsyl- 
 vania V. Locomotive, 110 U. S. 490; Office Specialty v. Fenton, 174 U. S. 492. 
 
 § 696. Substitution — New Material — Non-Patentable. 
 
 But superiority of material of itself can never be the subject of a patent. 
 No one will pretend that a machine made in whole or in part of materials 
 better adapted to the purpose for which it is used can be distinguished from the 
 old one, or, in the sense of the patent law, can entitle the manufacturer to a 
 patent. — Hotchkiss v. Greenwood, 11 How. 248; 13 L. Ed. 683. 
 
 A mere substitution for an element in a combination producing no change 
 except a better result is not patentable. — Hotchkiss i;. Greenwood, 11 
 How. 248; 13 L. Ed. 683. 
 
 Mere change of material is not sufficient to constitute invention, the 
 purpose and the means being the same. — Hicks v. Kelsey, 85 U. S.,670; 
 21 L. Ed. 852. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Crane v. Price, Web. P. C. 409; Curt. 
 Pat. sees. 70-73. 
 
 Mere change in a machine, of one material for another, as wood or wood 
 strengthened with iron for iron alone, is not invention. — Dunbar v. Meyers, 
 94 U. S. 187; 24 L. Ed. 34. 
 
 Hicks V. Kelsey, 18 Wall. 670.
 
 § 696 INVENTION 647 
 
 The substitution of metal for wood was destitute both of patentable 
 invention and utility. — Terhune v. Phillips, 99 U. S. 592; 25 L. Ed. 293. 
 
 The substitution of one material for another without involving a new mode 
 of construction,, or developing anything substantially new is not invention. 
 — Brown v. D. C. 130 U. S. 87; 32 L. Ed. 863; 9 S. Ct. 437. 
 
 Hotchkiss V. Greenwood, 52 U. S. 248; Hicks v. Kelsey, 85 U. S. 670; Smith 
 V. Goodyear, 93 U. S. 486; PhiUips v. Detroit, 111 U. S. 604. 
 
 The substitution of one material for another which does not involve change 
 of method nor develop novelty of use, even though it may result in a superior 
 article, is not necessarily a patentable invention. — Florsheim v. Schilling, 
 137 U. S. 64; 34 L. Ed. 574; 11 S. Ct. 20. 
 
 Hotchkiss V. Greenwood, 52 U. S. 248; Hicks v. Kelsey, 85 U. S. 670; Ter- 
 hune V. PhiUips, 99 U. S. 592; Brown v. D. C. 130 U. S. 87. 
 
 The substitution of one material for another in the employment of an old 
 method of manufacture is not invention. — Hoff v. Iron Clad, 139 U. S. 326; 
 35 L. Ed. 179; 11 S. Ct. 580. 
 
 Substitution of one well known material for another such as would occur to 
 any mechanic who had skill enough to adapt a cumbersome device to new 
 circumstances is not invention. — Ryan v. Hard, 145 U. S. 241 ; 36 L. Ed. 
 691; 12 S. Ct. 919. 
 
 Mere change of material is not invention. — Potts v. Creager, 155 U. S. 
 597; 39 L. Ed. 275; 15 S. Ct. 194. 
 
 Hotchkiss V. Greenwood, 52 U. S. 248; Hicks v. Kelsey, 85 U. S. 670; Ter- 
 hune V. PhiUips, 99 U. S. 592; Brown v. D. C. 130 U. S. 87. 
 
 But when the substitution was for a purpose wholly different from that for 
 which they had been employed, under such circumstances we have repeatedly 
 held that a change of material was invention. — Potts v. Creager, supra. 
 
 Smith V. Goodyear, 93 U. S. 486; Goodyear v. Davis, 102 U. S. 222. 
 
 The specification of material in the patent is nothing more than a selec- 
 tion, for it is stated that it is preferably though not necessarily, of wood. — 
 National v. Merrill, 49 Fed. 157; 1 C. C. A. 214. 
 
 The use of wrought steel or iron in lieu of cast metal is mere substitution 
 of materials, which, whatever the degree of superiority given to the manu- 
 facture thereby, is not patentable. — Kilbourne v. Bingham, 50 Fed. 697; 
 1 C. C. A. 617."^ 
 
 Hotchkiss V. Greenwood, 11 How. 248; Hicks v. Kelsev, 18 WaU. 670; PhiUips 
 V. Detroit, 111 U. S. 604; Gardner v. Herz, 118 U. S. 180; Brown v. D. C. 130 
 U. S. 87; Florsheim v. SchiUing, 137 U. S. 64. 
 
 That the substitution of one material for another, even when the sub- 
 stitution produces a beneficial result, where the material substituted was 
 known, is not invention, see — Interior v. Perkins, 80 Fed. 528 ; 25 C. C. A. 613. 
 
 The substitution of one kind of material for another, especially of kinds 
 so intimately allied as those of cast or wrought or malleable ircn or steel, 
 is not of the character of invention, nor are the products thereof patentable, 
 for the reason that one may possess greater advantages than another. No 
 doubt there are exceptions to the general rule, but they depend upon especial 
 facts, indicating the presence of more genius or invention than is exercised
 
 g48 THE FIXED LAW OF PATENTS §697 
 
 by the ordinary skill and knowledge of those familiar with the qualities of 
 materials and their various adaptations to the useful arts. — Strom v. Weir, 
 83 Fed. 170; 27 C. C. A. 502. 
 
 Kilbourne v. Bingham, 50 Fed. 697; Hoff v. Mfg. Co. 139 U. S. 326; Potts v. 
 Creager, 155 U. S. 597. 
 
 It is conceded that the patent cannot be sustained upon the theory that 
 Shaw substituted electric power instead of steam or hydraulic power in such 
 machines. — Shaw v. Shriver, 86 Fed. 466; 30 C. C. A. 196. 
 
 That the mere substitution of electric or magnetic energy for mechanical 
 energy is not invention, see Bradford v. Belknap, 115 Fed. 711 ; 53 C. C. A. 
 293. 
 
 It is elemental in the patent law that the mere substitution of steel or 
 wrought iron for cast iron is not invention. The advantages and differences 
 of the two forms of iron are too well known to require the skill of an inventor 
 to displace one for the other, where the conditions are such as to make one 
 preferable to the other. — Drake v. Brownell, 123 Fed. 86; 59 C. C. A. 216. 
 
 Kilbourne v. Bingham, 50 Fed. 697; Strom v. Weir, 83 Fed. 170; Union v. 
 Selchow, 112 Fed. 1006; Florsbeim v. Schilling, 137 U. S. 64; Hicks v. Kelsey, 
 18 WaU. 670. 
 
 The new thing done was to substitute paper for tin or other metal, as 
 material for the dome-shaped cap. A mere substitution of one material for 
 another does not constitute invention. — Lafferty v. Acme, 138 Fed. 729 ; 
 71 C. C. A. 285. 
 
 Florsheim v. Schilling, 137 U. S. 64; Gardner v. Herz, 118 U. S. 180; CeUu- 
 loid V. Tower, 26 Fed. 451. 
 
 The rubber is fastened to the metal more securely than before, but that 
 is all. If this be invention, it must follow that one who substitutes some other 
 material — glass or porcelain, for instance — and fastens the rubber block 
 to this handle by some well-known mechanical device which he substitutes 
 for the gripping flanges of the patent in suit, will be entitled to a patent, 
 and so on until all available fastening devices are exhausted. We are clearly 
 of the opinion that the patent discloses nothing which does not belong to 
 the skill of the calling. — Kuhn v. Lock-Stub, 165 Fed. 445; C. C. A. 
 
 Rubber-Tip v. Howard, 20 Wall. 498; Reckendorfer v. Faber, 92 U. S. 347. 
 
 § 697. Substitution — New Material — Patentable. 
 
 Although carbon conductors had been used previously, it was invention to 
 select a material capable of subdivision or filamentation to produce the 
 Edison lamp. — Edison v. U. S. 52 Fed. 300; 3 C. C. A. 83. 
 
 Even if what he did was merely to employ a basic material differing in the 
 degree of porosity and toughness, and a coating differing in the degree of 
 softness from that which had been previously used, (using the " yoshino " 
 paper and a soft wax to make a mimograph stencil) he accomplished thereby 
 a new result. Each of these modifications v/as necessary to successfully 
 introduce the new principle, which differentiated his production from the 
 stencil sheets of the prior art. — Wickelman v. Dick, 88 Fed. 264; 31 C. C. 
 A. 530. 
 
 That its selection (rubber for a button for a hose-supporter) was not an 
 obvious thing is persuasively and cogently shown by the fact that during 
 many years numerous inventors were trying to remedy the defects in the old
 
 I 698 INVENTION 649 
 
 device, and it did not occur to them how simply and satisfactorily this could 
 be done by making the button of rubber or some other elastic or yielding 
 material. Its employment in the device was a new use, and imparted to the 
 device a remarkable efficiency, as compared with the best type of former 
 devices. — Frost v. Cohn, 119 Fed. 505; 56 C. C. A. 185. 
 
 To sustain a patent based upon a change of material, it must be shown 
 that some new and useful result has been accomplished; for it is only then 
 that the substitution of one material for another can attain the dignity of 
 invention. — Drake v. BrowneU, 123 Fed. 86; 59 C. C. A. 216. 
 
 Hotchkiss V. Greenwood, 11 How. 248; Union v. Selchow, 112 Fed. 1006; 
 Frost V. Cohn, 119 Fed. 505. 
 
 Quite likely the substitution alone of one material for another would not 
 amount to invention, but the successful adaptation of the metal finger- 
 head which made the use of highly tempered thread guides possible is some- 
 thing to be considered in connection with the other elements of the combina- 
 tion upon the question as to whether what he did amounted to invention. — 
 Houghton V. Whitin, 153 Fed. 740; 83 C. C. A. 84. 
 
 In solving that problem, he, in common with the plumber's art, was 
 aware that brass and iron in contact will not rust ; and that iron being harder 
 than brass, sealing surfaces of those metals grind and seal into each other. 
 In the face of these facts long and well known to the plumber's art, it is 
 remarkable that no one took advantage of them to make a brass-to-iron 
 contact in the simple and effective way Hewlitt did to produce a union for 
 common plumbing use. There are instances where an iron nut was used to 
 screw on to brass whereby a rustless joint was secured ; there are instances 
 where sealing faces of brass and iron were used, but even these uses and others 
 we might add of even greater suggest iveness, led no one prior to Hewlitt to 
 utilize these known facts to devise a common, cheap, and rustless plumber's 
 union which could be repeatedly uncoupled and recoupled without injury. — 
 Rainear v. Western, 159 Fed. 431 ; 86 C. C. A. 411. 
 
 § 698. Systems and Arrangements. 
 
 There is nothing peculiar or novel in preparing a sheet of paper with head- 
 ings generally appropriate to classes of facts to be recorded, and whatever 
 peculiarity there may be about the headings in this case, is a peculiarity 
 resulting from the transactions themselves. — U. S. Credit v. American, 59 
 Fed. 139; 8 C. C. A. 49. 
 
 Whether a new method of conducting a business such as insurance, is or 
 is not patentable, and whether " forms of contract " by which improved 
 methods in conducting such business are made effective are or are not patent- 
 able, are questions which were discussed at length upon the argument, but 
 which need not be decided upon this appeal. They do not arise under the 
 patent. — U. S. Credit v. American, 59 Fed. 139; 8 C. C. A. 49. 
 
 In view of the art, the arrangement of figures to operate as a safety check, 
 as used in postal orders does not involve invention. — Berry v. Wynkoop, 
 84 Fed. 646; 28 C. C. A. 505. 
 
 The patent describes a new plan for handUng the large number of passen- 
 gers who patronize the public vehicles pro\'ided for rapid transit in large 
 cities. It is argued that this is patentable as a " machine " under the language 
 of the statute. If a scheme for handling the traveling public in congested 
 districts can, for patent purposes, be regarded as a machine, it is by no means
 
 650 THE FIXED LAW OF PATENTS §699 
 
 easv to perceive why a new plan for reorganizing the poUce force, or mobiliz- 
 
 in'^'the army or manipulating the guests at crowded public functions, may not 
 also be aptly described as a machine and patented as such. — Fowler v. 
 City of X. Y.' 121 Fed. 747; 58 C. C. A. 113. 
 
 The patent purports to disclose an improved method of preventing and 
 rectifving mistakes in railroad shipping. The patentee has provided a 
 box in which the truckman is to deposit the voucher instead of returning it 
 to the shipping clerk, and has located it at the most convenient place, and 
 where there is the least likelihood of his making the mistake of depositing the 
 voucher in the wrong one. All this e\-idences good judgment upon the part 
 of one who is experienced in the particular business, but it does not rise to 
 the level of invention. — Hocke r. X. Y. Central, 122 Fed. 467; 58 C. C. A. 
 627. 
 
 This " system " is brought about by a rearrangement of old parts, and 
 in the Uterature of the art these parts had already been brought together in 
 such a variety of wavs, and there had been so many substitutions of one de\ice 
 for another, "so many methods shown of controlling one current by another 
 and of displaying and obscuring signals, such a transposition of parts and 
 shifting of currents that it seems to us entirely clear that the rearrangement of 
 the patentees, clever though it may have "been and in its details perhaps 
 novel, was nevertheless one of those minor improvements which was easily 
 within the ordinary skill of the telephone engineer. The case seems to come 
 within the views expressed in Atlantic v. Brady, 107 TJ. S. 199, and peculiarly 
 within those expressed in Thomson-Houston r. Western, 65 Fed. 619. — 
 Western v. Rochester, 145 Fed. 41 ; 75 C. C. A. 313. 
 
 That an invention cannot be founded merely upon an arrangement of color 
 signals, see Library Bureau v. Macey, 148 Fed. 3S0: 78 C. C. A. 194. 
 
 That an mdexing system mav be narrowly patentable, see Library Bureau 
 V. Macev, 148 Fed. 380; 78 C. C. A. 194. , , , ^ 
 
 Xote.' As a matter of fact, in its last analysis, what is held to be patentable 
 in this case is an article of manufacture or an implement, rather than a 
 system. This I believe to be the test of invention in such cases. The inven- 
 tion must reside in the novel article or implement which makes the system 
 possible. 
 
 If at the time of Hicks' application, there had been no system of book- 
 keeping of any kind in restaurants, we should be confronted with the question 
 whether a new and useful svstem of cash-registering and account-checking 
 in such an art is patentable under the statute. This question seems never to 
 have been decided by a controlling authority and its decision is not neces- 
 sary- now unless we "find that Hicks has made a contribution to the art 
 which is new and useful. We are decidedly of the opinion that he has not, the 
 overwhehning weight of authority being that claims granted for such im- 
 provements as he has made are invaUd for lack of patentability. — Hotel 
 V. Lorraine, 160 Fed. 467; 87 C C. A. 451. 
 
 Hocke V. N. Y. Central, 122 Fed. 467; U. S. Credit v. American, 59 Fed. 139. 
 
 § 699. Tests of — Last Step Rule. 
 
 Sutton ha.s taken the step which marks the difference between a success- 
 fullv operating machine and one which stops short at that point, and that 
 advance entitles him to the protection of a patent. — Cimiotti v. American, 
 198 U. S. 399; 49 L. Ed. 1100; 25 S. Ct. 697.
 
 ? "00 INA'ENTION 051 
 
 • 
 
 It is true that it h:is been s«ud upon high authority that iu the law of 
 patents it is the last step that wins, but this stride must be made bv the 
 inventor, who originates, and not by the meehanie, who merely imprvnes. 
 It is also true that the eases reivgnize the fact that an impr\>vement when 
 made is not to be deprived of the protei'tion of the law Ivcause it seems simple 
 after it is accomplished. There are cases where many have been striving to 
 reach a given result without success, when there ivmes \ipim the stvne the 
 inventor who strives the dithculty in a manner which makt^s strange the want 
 of earlier discovery of a thing so simple, but who is, nevertheltNSS, entitled 
 to the protection of the patent law. — Galvin i\ Citv, 115 Fed. 511 ; 53 C. 
 C. A. U>5. 
 
 It was this last step which has turneil previous failures into a success, 
 and we are therefore of opinion that the East patent is v.alid. — Farmers' v. 
 Spruks. 127 Fed. t>01 ; 62 0. C. A. 447. 
 
 If it lx» true that BoxW Uhe inventor of the iilleged anticipating device>, 
 even though ignorant of the fact, had previously made a machine capable of 
 doing the work of the Pine deviiv (patent in suit ) in the same way, the patent 
 of the latter cannot Ix' sustained. But , on the other hand, if Boxley intending 
 to accomplish a different ivsult ignorantly stumbU\l ujhu^ a structinv which, 
 in the light of Pine's achievement, can Iv distorttnl into a temjx^rary and 
 inefficient substitute for the successful machine, ijuite a different propivu- 
 tion is pivsented. If Pine did nothing moiv than take an old abandoned 
 failure and, by the iiUroduction of new and ingenious featuivs, no matter how 
 simple they may Ix^, convert the rustic ivlic into a living machii\e which d(.x^s 
 the rtx^uired work Ivtter, faster, cheajvr than it was ever done Wfoiv. he 
 is entitled to the protection which his patent is intended to give. — United 
 r. Beattie. 140 Fed. 73tK 79 C, C. A. 442. 
 
 Potts V. Creager. loo l'. S. o97: Clough v. Barker. llXi V. S. 166. 
 
 § 700. Tests of — Miscellaneous. 
 
 In determining the question of invention each case must depend upon its 
 own facts, the ini|uiry always being whether what has Kvn done ivqvnivd the 
 exereist^ of the inventive faculties. H.as a new or Ivtter ivsult Ixvn obtained? 
 Is it cheaper anil more dmable? Hjvs it new capabilities'* Does it jvrfonii 
 new functions? — Rumford r. New York, 134 Fed. 3So; t>7 t\ C A. 367. 
 
 Smith V. Vulcanite Co. 9;i V. S. 4S6; Lahmu Co. v. Higgins. UKS V. S. 5S0; 
 King V. Anderson. 9t) Ftnl. c>00. 
 
 The mnnber of p.utents relating to this subject which hail Ixvn taken out 
 is strong e\iilence that the ivsults which hail alivady Invn jvai'hed had 
 alreadv exhausted the common skill and learning of the craft. — Western v. 
 North," 135 Fed. 70; 67 C. C. A. 553. 
 
 While it n\ight l>e possible for a skilled mechanic with the prior art and the 
 present object both before him to construct the device of the patent ; Held: 
 To conceive the idea and then emboily it in a combinatio»» which produces a 
 machine which for acciu'acy, conveiiience, celerity and fairness to employer 
 and employed shows marked in\pri>vement over ai\y thing pi-eceding it, 
 requireil the exercise of the inventive facuhy, though not, perhaps, oi the 
 highest order. — Internationjil i\ Dey, 142 Fed. 736; 74 C\ C. A. 68. 
 
 Hobbs r. Beach. ISO V. S. ;5Si; Loom Co. v. Hisjgins, 105 V. S. 580; Cimiotti 
 V. Fur. Co. 19S F. S. ;i09; Topliff i>. ToplitT. 145 U.S. 156. 
 
 The practically abandoned exiHMimei^tjil models made by the Brill Com- 
 pany, the real defendant in interest herein, the fact that it never made any
 
 652 THE FIXED LAW OF PATENTS §§ 701-702 
 
 construction like the alleged infringement until after O'Leary had obtained his 
 patent and shown it to the president of said company, the cogent and per- 
 suasive fact that in the Brill model illustrating the use of the inflexible and 
 flexible sashes, its constructors showed their inability to adapt their methods 
 to the storage of an inflexible sash overhead, and were obliged to arrange it 
 so as to slide downwards, the state of the prior art, and the fact that with a 
 great body of would-be inventors in the field, O'Leary was the first to show 
 in a car a method of storage in an overhead chamber of inflexible panels 
 arranged to slide abreast instead of tandem ; the absence from the hansom 
 cab structure of the merging and widening grooves, and the impossibility of 
 adapting its construction to the roof of a car without substantial and radical 
 modifications; the obviation by O'Leary of all overhead obstructions or 
 interference, and the adoption by the Brill Company of a modified form 
 of the patented car, considered together, show a compliance with the most 
 rigid requirements of the tests of invention and demonstrate patentable novelty 
 beyond question. — O'Leary v. Utica, 144 Fed. 399; 75 C. C. A. 377. 
 
 § 701. Transposition of Parts. 
 
 It is true that where a mechanical result is obtained, by the movement of one 
 element upon another element of a combination, it does not usually involve 
 invention merely to reverse the operation, and secure the same result by 
 making the first element stationary and the second movable. And so, where 
 result of motion is secured by a stationary cam guiding a tool, it may often 
 be an obvious change to reverse the parts by making the cam movable and 
 the tool stationary. But the question whether it is obvious is to be deter- 
 mined by examination of the particular machines in which the change is 
 made. — Penfield v. Chambers, 92 Fed. 630; 34 C. C. A. 579. 
 
 In the Jennings case, the circuit court indicated that the proper limit of 
 the width of such strip should be not to exceed the depth of the teeth, to 
 wit: — one-thirty-second of an inch. We concur in this conclusion. 
 
 Wallace, C. J. dissenting. When it becomes necessary to discrimi- 
 nate between a temper line which is within or beyond one thirty-second 
 of an inch from the base of the teeth, and make the validity of the patent and 
 the question of infringement depend upon that test, this seems to me to be 
 splitting hairs, and, in view of the prior art, to be sustaining a patent for a 
 mere change of degree, and utterly unwarranted. — Thompson v. Bushnell, 
 96 Fed. 238; 37 C. C. A. 456. 
 
 That the mere transposition of parts, performing the same functions, 
 is not invention, see Excelsior v. Morse-Keefer, 101 Fed. 448; 41 C. C. A. 
 448. 
 
 Fastener Co. v. Hays, 100 Fed. 984. 
 
 § 702. Utility. 
 
 Inventions, in order that they may be the proper subjects of letters 
 patent, must be new and useful. Utility in most cases is a question of fact, 
 as it usually depends upon the e\^dence resulting from an actual experiment. 
 — Mitchell V. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 Patent laws have for their leading purpose the encouragement of useful 
 inventions. Practical utility is their object, and it would be strange if, with 
 such object in view, the law should consider two things substantially the 
 same which, practically and in reference to their utilitv, are substantially 
 different. — Mitchell v. Tilghman, 86 U. S. 287; 22 L. Ed. 125. 
 
 Curt. Pat. sec. 331.
 
 § 703 INVENTOR 653 
 
 Neither an invention which will not enable the operator to accomplish 
 the desired result, nor one which constantly exposes the operator to the loss 
 of his life or to great bodily harm can be regarded as being useful within the 
 meaning of the patent law. — Mitchell v. Tilghman, 86 U. S. 287 ; 22 L. Ed. 
 125. 
 
 The patent was for a process for spotting the leaves of tobacco to give 
 them the appearance of the real Sumatra leaf. Held: In authorizing patents 
 to the authors of real and useful discoveries and inventions, Congress did not 
 intend to extend protection to those which confer no other benefit upon the 
 public than the opportunity of profiting by deception and fraud. To warrant 
 a patent, the invention must be useful; that is, capable of some beneficial 
 use as distinguished from a pernicious use. — Rickard v. DuBon, 103 Fed. 
 868; 43 C. C. A. 360. 
 
 We cannot think that a decision adverse to the utility and operativeness 
 of this invention could safely rest on the ill success of experiments made by 
 those who were not specially desirous of making their experiments succeed. 
 — Crown V. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 The evidence showed that the device of the patent was not a success 
 and that the patent did not disclose means for obviating the difficulties in 
 adapting such apparatus to the needs of the art. Held: Taking this as the 
 strongest answer that can be made (that experiment would be necessary 
 to reduce the invention to actual practice) of the statutory requirement 
 that the patentee shall make a written description of his invention or dis- 
 covery, " in such full, clear and exact terms as to enable any person skilled 
 in the art to make, construct and use the same," we are of opinion, in the 
 face of strong and uncontradicted proof of those skilled in the art, that the 
 problem of roll contour has not been solved — that the disclosures of this 
 patent are not of the practical and useful character the law makes the con- 
 sideration for the grant of a patent monopoly. The evidence satisfies us 
 the problem of continuous sheet-rolling was neither solved nor disclosed by 
 this patent, and that to sustain this patent would not be to reward invention, 
 but to block further experiment and development. — Donner v. American, 
 165 Fed. 199; CCA. 
 
 Deering v. Harvester Works, 155 U. S. 286. 
 
 INVENTOR. 
 
 Statute and General Statement § 703 ] Death of Applicant § 300; Employer 
 See ~ Administrator § 38; Assign- and Employee § 3Q4; Joint Inventions 
 
 ment § 149 ; Copartnership § 270; 1 § 704; License § 749 
 
 § 703. Statute and General Statement. 
 
 Any person who has invented or discovered any new and useful art, 
 machine, manufacture, or composition of matter, or any new and useful 
 improvements thereof * * * R. S. 4886. 
 
 Any person having the maturity and mentality to understand the nature 
 of an oath may make application for a patent. By the terms of Sec. 4896, 
 as enacted 3 March, 1871, an executor or administrator of a deceased in- 
 ventor may make application for a patent upon an invention of a deceased 
 person; and since the amendment of May 23, 1908, to that section, the legal 
 representative of an insane person may, in like manner, make or prosecute 
 an application for patent. Thus there are no restrictions as to sex, race or 
 citizenship, and the full enjoyment of the right of patent is open to all who are 
 able to establish the statutory prerequisites to the grant.
 
 054 THE FIXED LAW OF PATENTS § 704 
 
 A party seeking a right under the patent statutes may avail himself of all 
 their provisions, and the court may not deny him the benefit of a single one. 
 — United States v. Am. Bell. 167 U. S. 224; 42 L. Ed. 144; 17 S. Ct. 809. 
 
 JOINT INVENTIONS. 
 
 General Statement and Rules § 704 | See — Letters Patent § 738 
 
 § 704. General Statement and Rules. 
 
 The rights of joint inventors have been recognized from the earliest times, 
 and but few questions of joint inventorship have reached the appellate courts. 
 Moreover, the few rules which are given below are not altogether universal 
 in their application. The rule in Welsbach v. Cosmopolitan, for example, 
 in that particular case was undoubtedly correct; but it is not difficult to 
 conceive of a case where an invention consisting of a " single thought " 
 might be the product of collaboration of two minds working toward and 
 finally reaching the single, decisive step and taking it in step, so to speak, 
 in such unity and simultaneousness that neither of the two could declare 
 under oath which actually produced the " single thought." On the other 
 hand, the rule in Quincy v. Krause must be qualified. Many cases exist where 
 the invention consists of a series of sub-combinations which go to make up a 
 machine, the machine itself as an entirety being non-patentable; and in 
 many such cases two or more engineers are at work impro\-ing the machine 
 or apparatus or system generally; and it is evident that a joint patent of such 
 a series of improvements would be improper, and yet would be within the 
 strict terms of the rule of that case. 
 
 There is no statutory provision as to joint inventorship; and it is well 
 there is not, for any attempt to delimit joint inventorship from sole inventor- 
 ship must be unsatisfactory. 
 
 Roper having with Spencer invented and constructed a machine which 
 contains a certain useful combination, thereafter takes out a patent in his 
 own name covering this very combination. If the prior machine produced 
 by both men, and known to both, does not disentitle Roper to cover such 
 combination in his patent, it would not disentitle Spencer to cover the same 
 combination in a patent to himself; and we should have two joint inventors, 
 each rightfully holding a separate patent for the same invention, which is 
 absurd. — Bannerman v. Sanford, 99 Fed. 294; 39 C. C. A. 534. 
 
 The patent contains two claims, the first is for a single thought, — the 
 described improvement in strengthening incandescent mantles, consisting 
 in coating a completed mantle with paraffine or other suitable material. 
 It is difficult to apprehend how two could have shared in the conception. — 
 Welsbach v. Cosmopolitan, 104 Fed. 83; 43 C. C. A. 418. 
 
 At the time the application was made they were going into a partnership, 
 and it appears most probable that they conceived the idea of ha\nng the 
 patent vest a joint interest to conform to their interest in the business. If 
 these are the facts, the patent was not properly issued to them jointly. — 
 Standard v. Computing, 126 Fed. 639; 61 C. C. A. 541. 
 
 The co-owners of the invention were foreigners and made joint application 
 in the United States after one of them had obtained sole foreign patents. The 
 invention was clearly that of one, while minor adaptations were joint. Held: 
 Invalid. — De Laval v. Vermont, 135 Fed. 772; 68 C. C. A. 474.
 
 §§ 705-706 JUDICIAL NOTICE 655 
 
 " Every machine before it can be used must be constructed as well as 
 invented. If one man does all the inventing and another does all the con- 
 structing, the first is the sole inventor." — United v. Beattie, 149 Fed. 736; 
 79 C. C. A. 442. 
 
 Agawam v. Jordan, 7 Wall. 583. 
 
 When a claim covers a series of steps or a number of elements in combina- 
 tion, the invention may well be joint, though some of the steps or some of 
 the elements mav have come as the thought of but one. — Quincy v. Krause, 
 151 Fed. 1012; 81 C. C. A. 290. 
 
 Welsbach v. Cosmopolitan, 104 Fed. 83. 
 
 JUDICIAL NOTICE. 
 
 General Statement § 705 
 Common Knowledge § 706 
 Novelty § 707 
 Patentability § 708 
 Prior Art § 709 
 
 PubHc Use § 710 
 Records § 711 
 Miscellaneous § 712 
 See — Demurrer § 324 
 
 § 705. General Statement. 
 
 The exercise of this prerogative has occurred, perhaps, more frequently 
 in connection with demurrer raising the question of the validity of the patent 
 in suit. See title Demurrer. It is thought that there is a growing tendency 
 to exercise this right in connection with injunctions. Properly exercised the 
 effect is salutary. The First Circuit has said: 
 
 It is a thoroughly settled rule that, as to patentability and the range of 
 the claims in a patent, inasmuch as these matters concern the public at 
 large, the court will not allow parties to frame their issues in such a 
 wav as to take from it the scrutiny of aU the questions which may be involved. 
 Millard v. Chase, 108 Fed. 399 f§ 681). And it is believed that the courts 
 must, in the future, recognize their duty to the public more fully than they 
 have done in the past, and with the scientific knowledge possessed by our 
 courts, the range of judicial notice should be extended. 
 
 § 706. Common Knowledge. 
 
 Courts will take notice of whatever is generally knowm within the Hmits 
 of their jurisdiction; and if the judge's memory is at fault, he may refresh it 
 by resorting to any means for that purpose which he may deem safe and 
 proper. This extends to such matters of science as are brought before 
 him. — Brown v. Piper, 91 U. S. 37 ; 23 L. Ed. 200. 
 
 Greenleaf, Ev. 11; Ores. Eq. Ev. 294; Taylor Ev. 4; Hoare v. Silverlock, 12 
 Ad. & Ell. (N. S.) 624. 
 
 The court will take judicial notice of matters of common knowledge and 
 use. — Dunbar r. Meyers, 94 U. S. 187; 24 L. Ed. 34. 
 Brown r. Piper, 91 U. S. 38. 
 
 It has always been done, and we are not required to shut our eyes to the 
 fact that with this object, among others, the sheer and flare of vessels of all 
 classes have been almost infinitely varied. — Boynton v. Morris, 87 Fed. 
 225; 30 C. C. A. 617. 
 
 King V. Gallun, 109 U. S. 99. 
 
 There are some elementary details of everyday domestic mechanics of 
 ■which a court wUl take judicial notice. No sworn testimony is needed to
 
 656 THE FIXED LAW OF PATENTS §§ 707-708 
 
 inform it that the use of leather washers to relieve friction, prevent rattling, 
 secure even pressure and avoid wear and tear between metal surfaces, has 
 been the common property not only of mechanics but of all persons possess- 
 ing ordinary intelligence, for many generations. — Bradley v. Eccles, 139 
 Fed. 447; 71 C. C. A. 291. 
 
 It is only when the court by bringing to its aid matters of common knowl- 
 edge, is convinced, that the patent is void on its face, that such proofs can 
 be dispensed with. — American v. DeGrasse, 157 Fed. 660; 87 C. C. A. 260. 
 
 § 707. Novelty. 
 
 In passing upon the novelty of the alleged improvement, we are permitted 
 to consider matters of common knowledge or things in common use. — 
 Phillips V. Detroit, 111 U. S. 604; 28 L. Ed. 532; 4 S. Ct. 580. 
 
 Brown v. Piper, 91 U. S. 37; Terhune v. Phillips, 99 U. S. 592; King v. Gallun, 
 109 U. S. 99; Ah Know v. Nunen, 5 Sawy, 552. 
 
 Whether or not the design is new is a question of fact, which, whatever our 
 impressions may be, we do not think it proper to determine by taking judicial 
 notice of the various designs which may have come under our observation. 
 It is a question which may and should be raised by answer and settled by 
 proper proofs. — New York v. New Jersey, 137 U. S. 445; 34 L. Ed. 741; 
 11 S. Ct. 193. 
 
 The court will take judicial notice of devices which are common. — 
 Black Diamond v. Excelsior, 156 U. S. 611; 39 L. Ed. 553; 15 S. Ct. 482. 
 
 Brown v. Piper, 91 U. S. 37; Terhune v. Phillips, 99 U. S. 592; King v. Gallun, 
 109 U. S. 99; Phillips v. Detroit, 111 U. S. 604. 
 
 It is a thoroughly well settled principle of patent law that in clear cases 
 the court may, of its own motion, adjudge a patent invalid, even if its 
 vaUdity is not set up by the alleged infringer. — Osgood v. Metropolitan, 
 75 Fed. 670; 21 C. C. A. 491. 
 
 That the court will take judicial notice of palpable want of novelty, even 
 if the answer contains only a general denial and no notice of the prior art, 
 see Baker v. Duncombe, 146 Fed. 744; 77 C. C. A. 234. 
 
 Black Diamond v. Excelsior, 156 U. S. 611; Brown v. Piper, 91 U. S. 37; Rich- 
 ards V. Chase, 158 U. S. 299; Specialty v. Fenton, 174 U. S. 492; Fond Du Lac v 
 May, 137 U. S. 406; Mahler v. Animarium, 111 Fed. 530; Westinghouse v. Union, 
 117 Fed. 495; Appleton v. Star, 60 Fed. 411; Beer v. Walbridge, 100 Fed. 465. 
 
 § 708. Patentability. 
 
 We think the practice thus sanctioned is not unfair or unjust to com- 
 plainants in suits brought on letters patent. If letters patent are void because 
 the device or contrivance described therein is not patentable, it is the duty 
 of the court to dismiss the cause on that ground, whether the defense is made 
 or not. It would ill become a court of equity to render money decrees in 
 favor of a complainant for the infringement of a patent which the court 
 could see was void on its face for want of invention. Every suitor in a cause 
 founded on letters patent should, therefore, understand that the question 
 whether his invention is patentable or not is always open to the considera- 
 tion of the court, whether the point is raised by the answer or not. — Slawson 
 V. Grand, 107 U. S. 649; 27 L. Ed. 576; 2 S. Ct. 663. 
 
 Dunbar v. Myers, 94 U. S. 187; Brown v. Piper, 91 U. S. 44.
 
 §§ 709-710 JUDICIAL NOTICE 657 
 
 In deciding whether the patent covers an article, the making of which 
 requires invention, we are not required to shut our eyes to matters of common 
 knowledge or things in common. — King v. Gallun, 109 U. b. 99; 2i b. t^d. 
 870; 3 S. Ct. 202. ^, ^, 
 
 Brown v. Piper, 91 U. S. 43; Terhune v. Phillips, 99 U. S. 592; Ah Know v. 
 Nunan, 5 Sawy, 552. 
 
 Where the combination, or the elements described are well known, the court 
 is at liberty to judge whether there be any invention in using them na the 
 combination claimed. — Richards v. Chase, 158 U. S. 299, 39 L. Kd. 991, 
 15 S. Ct. 831. 
 
 § 709. Prior Art. 
 
 The state of the art, under many circumstances, is a matter of which the 
 court can take judicial notice, especially in equity suits, where the court 
 exercises the privileges to a jury as well as of judges sitting to determine 
 Questions of law. It is also true there may be, with reference to a particular 
 subject matter, such a mass of patents covering so long a period, that^they 
 mav be taken to have become part of the common knowledge which the 
 court shares. So also, a mass of patents continued for a long period, may so 
 clearly indicate such a state of the art as to be sufficient to invalidate a patent, 
 Drecisely as the common state of the practical art existing throughout the com- 
 munity may invalidate it. Of course, under such circumstances in neither 
 the one case nor the other need the defense be specially pleaded under the 
 
 ^^TW^'court has several times said that it cannot assume to take notice of 
 special facts, within a Umited and peculiar field, like that which the appellej 
 seeks to bring to our attention. It is plain that the state of the art of which 
 the court may take judicial notice, and as to which it can be assisted by 
 the statements of the parties or their counsel, without proofs furnished in 
 Icco -dance with the rules of law, is matter of general knowledge and such 
 
 judicial notice cannot extend to ^«i^^g|^,P^t^\^t''/,t*Vig ^V^ ^484' 
 in a Umited art. - Parsons v. Seelye, 100 Fed. 452; 40 C. C. A 484. 
 
 Potts V. Creager, 155 U. S. 597; Locomotive 7;. Medart, 158 US. 68; Kich- 
 ards .. Elevato?, 158 U. S. 299; Office Specialty Co. ?;■ Fenton 174 U^ S. 492, 
 N. Y. V. New Jersey, 137 U. S. 445; American v. Buckskm, 72 Fed. 508. 
 
 The courts will take judicial notice of facts which are within common 
 knowledge, including those relating to the arts and industries and matters of 
 science, and may refer to the dictionaries and encyclopedias for informa- 
 timi when necessary to go outside the records. - Beer v. Walbndge, 100 
 Fed. 465; 40 C. C. A. 496. 
 
 Brown v. Piper, 91 U. S. 37. 
 
 § 710. Public Use. 
 
 The determination of this case is controlled by Brown v. Piper, 91 U. S. 
 37 We cannot fail to take judicial notice that the thing patented was known 
 and hi general use long before the issuing of the patent. - Terhune v. 
 Phillips, 99 U. S. 592; 25 L. Ed. 293. 
 
 Such a familiar device the court may properly take judicial notice of . - 
 Office V. Fenton, 174 U. S. 492; 43 L. Ed. 1058; 19 S. Ct. 641. 
 
 Brown v.' Piper, 91 U. S. 37; Terhune . PhillipsJ9 U. S. 592; King v. 
 Gallun, 109 U. S. 99; Phillips v. Detroit, 111 U. b. b04.
 
 g58 THE FIXED LAW OF PATENTS §§711-713 
 
 § 711. Records. 
 
 For the purpose of ascertaining the state of the art, when it concerns a 
 matter of general interest, as it does in the determination of the construction 
 of this class of letters patent, we are certainly authorized to take notice of 
 our own records, and perhaps we may always do so. — Cushman v. Goddard, 
 95 Fed. 664; 37 C. C. A. 221. 
 
 Butler V. Eaton, 141 U. S. 240; Smelting Co. v. Billings, 150 U. S. 31; Creamer 
 V. Washington, 168 U. S. 124; In re Boardman, 169 U. S. 39. 
 
 If there were any doubt as to what those questions are, we could take 
 iudicial notice of the records of our own court for the purpose of informing 
 ourselves. - Rumford v. Hygienic, 159 Fed. 436; 86 C. C. A. 416. Re- 
 versed, 215 U. S. 156. 
 
 § 712. Miscellaneous. 
 
 Where the bill did not allege the signature of the acting commissioner of 
 patents, the court will take judicial notice of such officer whether of a per- 
 manent or transient character. — Railroad v. Winans, 58 U. S. 31 ; 25 L. 
 Ed. 1009. 
 
 Wilson V. Rousseau, 4 How. 686. 
 
 Of private and special facts, in trials in equity and at law, the court or 
 jury is bound carefully to exclude the influence of all previous knowledge. — 
 Brown v. Piper, 91 U. S. 37; 23 L. Ed. 200. 
 
 That the same rule as to judicial notice applies in design patents as is 
 the rule with mechanical patents, see Roberts v. Bennett, 136 Fed. 193; 
 69 C. C. A. 533. 
 
 Black Diamond v. Excelsior, 156 U. S. 611; Market v. Rowley, 155 U. S. 621. 
 
 JURISDICTION. 
 
 The Statute § 713 
 
 Contracts § 714 
 
 Court of Claims § 715 {see § 428) 
 
 District Judge § 716 
 
 Equity (see § 370) 
 
 Expiration of Patent Pendente 
 Lite § 717 
 Rule § 718 
 
 For Determining Profits or Assess- 
 ing Damages Only § 719 
 
 Miscellaneous § 720 
 Infringement § 721 {see § 445) 
 Licensor and Licensee § 722 (see 
 § 765) 
 
 Residence § 723 
 State Court § 724 (see § 920) 
 Supreme Court § 725 
 See — Appeals § 130; Decrees § 301; 
 Equity § 370; Pleading § 788 
 
 § 713. The Statute. 
 
 The district courts shall have original jurisdiction as follows: 
 
 Seventh. Of all suits at law or in equity arising under the patent, the 
 copyright, and t^ie trade-mark laws of the United States. — Jud. Code, 
 Sec. 24. 
 
 The jurisdiction vested in the courts of the United States in the cases 
 and proceedings hereinafter mentioned, shall be exclusive of the courts of 
 the several States. 
 
 ******* 
 
 Fifth. Of all cases arising under the patent-right or copyright laws of 
 the United States. Jud. Code, Sec. 256.
 
 § 714 JURISDICTION 659 
 
 By the Act of Mar. 3, 189f , and re-enactmeut as Sec. 48, of the Judicial 
 Code, the following provision was made as to jurisdiction and service of 
 process : 
 
 That in suits brought for the infringement of letters patent the circuit 
 courts of the United States shall have jurisdiction in law or in equit)^ in the 
 district of which the defendant is an inhabitant, or in anj- district in which 
 - the defendant, whether a person, partnership, or corporation, shall have 
 committed acts of infringement and have a regular and established place of 
 business. If such suit is brought in a district of which the defendant is not 
 an inhabitant, but in which such defendant has a regular and established 
 place of business, service of process, summons, or subpoena upon the de- 
 fendant may be made by service upon the agent or agents engaged in con- 
 ducting such business in the district in which the suit is brought. 
 
 The subject of appellate jurisdiction, so far as the statute is concerned, 
 need not be recited here, as it has been fully set out under Appeals. 
 
 § 714. Contracts. 
 
 The object of the bill was to set aside a contract licensing the use of a 
 patented machine. The dispute does not arise under any act of Congress, 
 nor does the decision depend upon the construction of any law in relation to 
 patents. It arises out of the contract stated in the bill; and there is no act 
 of Congress provicUng for or regulating contracts of this kind. The rights of 
 the parties depend altogether upon common law and equity principled. 
 The injunction asked is to be the consequence of the decree of the court 
 sanctioning the forfeiture. And if the case made in the bill was a fit one for 
 rehef in equity, it is very clear that whether the contract ought to be declared 
 forfeited or not in a court of chancery depended wholly upon the rules and 
 principles of equity and in no degree whatever upon any act of Congress. — 
 . Wilson V. Sanford, 10 How. 99; 13 L. Ed. 344. 
 
 Complainant and defendant had made a contract (verbal) and defendant 
 had entered upon the use of the patent under such agreement. Plaintiff then 
 presented a written contract embodying the terms (and others) of the agree- 
 ment. Defendant refused to sign, and complainant brought action for 
 infringement upon the failure of defendant to pay royalties. Both were 
 citizens of the same state. 
 
 If either party disregards it, it can be specifically enforced against him, 
 or damages can be recovered for its \nolation. But until so rescinded or set 
 aside it is a subsisting agi-eement, which, whatever it is, or may be showm to 
 be, must govern the rights of these parties in the use of complainant's process, 
 and must be the foundation of any relief given to a court of equity. Such a 
 case is not cognizable in a court of the United States, by reason of its subject- 
 matter, and as the parties could not sustain such a suit in the circuit court 
 by reason of citizenship, this bill should have been dismissed. — Kartell v. 
 Tilghman, 99 U. S. 547; 25 L. Ed. 357. 
 
 Reviewing: Burr v. Greeory, 2 Paine. 426; Littlefield v. Perry, 21 Wall. 205; 
 Meserole v. Paper. 6 Blatchf. 356; Blanchard v. Sprague, 1 Chff. 288; Hill v. 
 Whit comb, 1 Holmes. 317; Brooks v. Stolley, 3 McLean, 523; Goodyear v. 
 Rubber Co., 4 Blatchf. 63. 
 
 The controversy as stated by the appellants is whether certain goods 
 manufactured by" them embody the invention covered by the appellees 
 patents. Both parties may agree as to what the patented invention is, and 
 yet disagree on the question whether the invention is employed in the manu- 
 facture of certain specified goods. The controversy between the parties in 
 this case is clearly of the latter kind and cannot be said to be one which grows
 
 660 THE FIXED LAW OF PATENTS §714 
 
 out of the legislation of Congress. — Albright v. Teas, 106 U. S. 613; 27 L. 
 Ed. 295; 1 S. Ct. 550. 
 
 Wilson V. Sanford, 10 How. 99; Hartell v. Tilghman, 99 U. S. 547; Goodyear v, 
 Kubber, 4 Blatchf. 63; Meserole v. Paper, 6 Blatchf. 355; Blanchard v. Sprague, 
 1 Cliff. 288; Hill v. Whitcomb, 1 Holmes, 317. 
 
 While in actions for infringement, in which the validity of the patent is 
 put at issue under R. S. 4920, the circuit courts have exclusive jurisdiction, 
 actions founded on contracts for the use of patented inventions may be 
 maintained elsewhere. — U. S. v. Palmer, 128 U. S. 262; 32 L. Ed. 442; 
 9 S. Ct. 104. 
 
 V S V Burns, 79 U. S. 246; Wilson v. Sanford, 51 U. S. 99; Hartell i). Tilgh- 
 man, 99 U. S. 547; Albright v. Teas, 106 U. S. 613; Dale v. Hyatt, 125 U. S. 46. 
 
 But the same does not hold good with reference to the licensee. There 
 were practically but two ways in which the patentee could impair the grant 
 he made to the'licensee, and those were by a revocation of the license by a bill 
 in equity, or by treating it as abandoned and revoked, and granting a license 
 •to another party. He elected the latter remedy and made a contract with 
 the Pacific Bridge Co. to make and sell wooden pipe within the same terri- 
 tory. A suit in a state court would either I)e inadequate or would involve 
 questions under the patent law. If the licensee sued at law he would be 
 obliged to establish the fact that the patent had been infringed which the 
 patentee might have denied and in any case could only recover damages for 
 past infringement. If he sued in equity he could only pray an injunction 
 against future infringements ; but this is exactly what he prays in this case, 
 and thereby raises a question under the patent laws. In either case the. 
 patentee could defeat the action by showing that he did not infringe, — in 
 either case the defendant could so frame his answer as to put in issue the 
 title, the validity, or the infringement of the patent. The natural and 
 practically the only remedy, as it seems to us, was for the plaintiff to assert 
 his title under the license, and to prosecute the defendants as infringers. 
 In doing this he does what every plaintiff is bound to do, namely, set forth 
 his title either as patentee, assignee, or licensee, and thereby put that title 
 in issue. The defendant is at liberty in such a case to deny the title of the 
 plaintiff by declaring that the license no longer exists, but in our opinion 
 this does not make it a suit upon the license or contract, but it still remains 
 a suit for the infringement of a patent, the only question being as to the 
 vaUdity of plaintiff's title. There can be no doubt whatever that if the 
 plaintiff sued some third person for an infringement of his patent, the de- 
 fendant might attack the validity of his license in the same way, but it would 
 not oust the jurisdiction of the court. Why should it do so in this case? — 
 Excelsior v. Pacific, 185 U. S. 282; 46 L. Ed. 910; 22 S. Ct. 681. 
 
 Hartell v. TUghman, 99 U. S. 547; Littlefield v.. Perry, 21 Wall. 205; Atherton 
 V. Atwood-Morrison, 102 Fed. 949; White v. Rankin, 144 U. S. 628. 
 
 An oral agreement existed between the parties whereby the defendants 
 were to perform certain acts in the exploitation of the invention, but by which 
 they acquired no legal or equitable interest in the patent. A subsequent 
 WTitten agreement existed, the contents and intent of which was seriously 
 disputed, by which, apparently, the defendants acquired some legal interest 
 in the title. The defendants failed to perform and the action w^as for specific 
 performance under the oral contract and also for cancellation of the alleged 
 written assignment. Held: Cases are not infrequent where, upon the facts, 
 it is somewhat difficult to draw the jurisdictional line. The case in hand, 
 however,^ presents no difficulty. It is perfectly apparent that the case is one 
 which arises entirely under the contract as set out in the bill, and for the tort
 
 §714 JURISDICTION 661 
 
 involved in the alleged fraudulent or forged assignment, and not in any wise 
 under the patent laws or laws of the United States. — Kurtz v. fetraus, 10b 
 Fed. 414; 45 C. C. A. 366. 
 
 Atherton v. Atwood, 102 Fed. 949. 
 
 Under this contract the complainant claims that it had the exclusive 
 right to use and to let to others to use and sell and deal m withm the states 
 of Maryland and Delaware and the District of Columbia. The jurisdiction 
 of the court therefore rests altogether on the diverse citizenship of the parties. 
 — Rahley v. Columbia, 122 Fed. 623; 58 C. C. A. 639. 
 
 Excelsior v. Pacific, 185 U. S. 282. 
 
 When a contract is made respecting a right under a patent, and the par- 
 ties <^et into litigation, confusion sometimes arises over the question whether 
 the cause of action originates in the contract or in the patent laws. The test 
 is this- If the plaintiff is seeking a judgment for debt or damages or a 
 decree for cancellation or specific performance, on account of the defendant s 
 breach of his covenants, the cause of action arises out of the contract ; and, 
 though the determination of the issue of breach or no breach may involve 
 the interpretation of the patent and of the prior art, the insistence of the 
 defendant that his device, according to the true construction of the patent 
 and the prior art, is not within the patent right granted him "\ the contract, 
 cannot change the nature of the action. Standard v. Les he, 118 ied. 55/. 
 On the other hand, if the plaintiff is seeking a judgment for damages, or a 
 decree for an injunction and an accounting, on account of defendant s un- 
 authorized use of the patent right in making or using or selling the device 
 without license, the cause of action arises out of the patent laws; and, though 
 the determination of the issue of infringement or no infringement may mvolve 
 the interpretation of the contract, the insistence of the defendant that his 
 act was within his rights under the contract, if Pl?Pe^ly f J^^^^^^ .^^""?,^ 
 change the nature of the action. - \ ictor v. The Fair, 123 Fed. 424, 61 C. 
 
 'wilson r Sanford, 10 How. 99; Littlefield v. Perrj-, 21 Wall. 205; Excelsior r. 
 Pacific 185 US 282; Atherton v. Atwood, 102 Fed. 949; BaU v. Ball, o8 Fed. 
 818; Siebert v. Manning, 32 Fed. 625. 
 
 An action which raises a question of infringement is an action arising 
 under the patent law. That the patentee may have a remedy for breach 
 of contract also does not defeat the jurisdiction. - Rupp v. Elhott, 131 l^ed. 
 '"i.c\ c~ C^ (^ 4 ^44 
 ' Heaton-Pemnsular .". Eureka, 77 Fed. 288; Victor v. The Fair, 123 Fed. 424. 
 
 When a patentee imposes such restrictions, they may Hkewise constitute a 
 contract between the patentee and his direct vendee or hcensee In such 
 case the patentee would have a double remedy - an action in tort for in- 
 fringemenror an action for the breach of the contract. - Park .. Hartman, 
 153 Fed. 24; 82 C. C. A. 158. ^ ^ ... i. 
 
 Heaton.. Eureka, 77 Fed. 288: Victor .. The Fair, 123 Fed. 424; Bement .. 
 National, 186 U. S. 70; National v. Schlegel, 128 ted. 166. 
 
 As is well known, a suit for injunctive relief against the infringement of a 
 pafen and incidentally for the recovery of damages arismg therefrom is 
 one arisino- under the patent laws of the United States, and may be main- 
 Sed in rhe courts of the United States; but it is firmly settled that m the 
 absence of diversitv of citizenship of the parties, a suit on a private con- 
 tract between the parties fixing and governing their rights to use a patented 
 deA^ce or a suit for the specific performance or rescission of a contract for
 
 662 THE FIXED LAW OF PATENTS §§ 715-717 
 
 the use or sale of a patent, is not maintainable in those courts. — St. Louis 
 V. Sanitary, 161 Fed. 725; 88 C. C. A. 585. 
 
 Wilson V Sanforcl, 10 How. 99; Brown v. Shannon, 20 How. 55; Dale v. Hyatt, 
 125 U. S. 46; Albright v. Teas, 106 U. S. 613; Pratt v. Paris, 168 U. S. 255. 
 
 § 715. Court of Claims. 
 
 It would seem that an action for infringement against the U. S. would be 
 properly brought in the Court of Claims. — James v. Campbell, 104 U. S. 
 356; 26 L. Ed. 786. 
 
 Carr v. U. S. 98 U. S. 433. 
 
 It would seem that the use of an invention by a government official in the 
 discharge of his duties would be an exercise of the right of eminent domain, 
 and that action would lie in the Court of Claims. — Hollister v. Benedict, 
 113 U. S. 59; 28 L. Ed. 901; 5 S. Ct. 717. 
 
 U. S. V. Mfg. Co. 112 U. S. 645. 
 
 The court of claims has jurisdiction to award royalties arising under an 
 implied contract. ^ U. S. v. Palmer, 128 U. S. 262; 32 L. Ed. 442; 9 S. Ct. 
 104. 
 
 Distinguishing: Pitcher's Case, 1 Ct. CI. 7. 
 
 The Court of Claims has no jurisdiction of an action for tort in infringe- 
 ment. — U. S. V. Berdan, 156 U. S. 552; 39 L. Ed. 530; io S. (Jt. 42U But 
 see App. § 428. 
 
 Gibbons v. U. S. 75 U. S. 269; Morgan v. U. S. 81 U. S. 531; HiU v. II. S. 149 
 U. S. 593; Schillinger v. U. S. 155 U. S. 162; U. S. v. Palmer, 12S U. S. 282. 
 
 § 716. District Judge. 
 
 The fourth objection is based upon the provisions of section 719 of the 
 Revised Statutes of the United States, relating to the issuing of an injunction 
 by a district judge. But that section does not apply to this case. Vulcanite 
 Co. V. Folsom, 3 Fed. 509. The injunction here was not issued by the district 
 judge under section 719. When the case was heard below, and the injunction 
 was granted, the district judge was holding the circuit court, under section 
 609, Rev. St. U. S. ; and his authority was co-extensive with that of any other 
 judge sitting in the same court. Robinson v. Satterlee, Fed. Cas. No. 11,967. 
 Therefore his action in granting the injunction had the same force and effect 
 as if the court had been held by the circuit justice, or a circuit judge, or by 
 a full bench. Industrial v. Electrical, 58 Fed. 732. The decree appealed from 
 is the decree of the circuit court. — McDowell v. Kurtz, 77 Fed. 206; 23 
 C. C. A. 119. 
 
 § 717. Equity — Expiration of Patent Pendente Lite. 
 
 The bill was filed 15 days before the expiration of the patent. The general 
 allegations of the bill were sufficiently comprehensive to meet such a case. 
 But even without that, if the case was one for equitable relief when the suit 
 was instituted, the mere fact that the ground for such relief expired by the 
 expiration of the patent would not take away the jurisdiction and preclude 
 the court from proceedings to grant the incidental relief w^hich belongs to 
 cases of that sort. This has often been done in patent causes, and a large 
 number of cases may be cited to that effect ; and there is nothing in Root v. 
 Railway, 105 U. S. 189 to the contrary. — Clark v. Wooster, 119 U. S. 322; 
 30L. Ed. 392; 7 S. Ct. 217. 
 
 Cotton V. Simmons, 106 U. S. 89; R. R. Co. v. Car Brake, 110 U. S. 229; Con- 
 solidated V. Crosby, 113 U. S. 157; Thomson v. Wooster, 114 U. S. 104.
 
 S 717 JURISDICTION 663 
 
 As the patent was in force at the time the bill was filed, and as the com- 
 plainants were entitled to a preliminary injunction at that time, the juris- 
 diction of the court is not defeated by the expiration of the patent by lapse 
 of time before final decree. There is nothing in the case of Root v. Railway, 
 105 U. S. 189, to sustain the objection made by the appellant on this account. 
 See also Clark r. Wooster, 119 U. S. 322 and cases there cited. — Beedle v. 
 Bennett, 122 U. S. 71; 30 L. Ed. 1074; 7 S. Ct. 1090. 
 
 This seeks to determine jurisdiction of the court by conditions which 
 came into existence after the commencement of the suit, not upon those 
 which existed at the time the bill was filed. Appellee's contention as to the 
 jurisdiction is, therefore, not justified, and a discussion of the reasons for 
 this conclusion is not necessary. — Busch v. Jones, 184 U. S. 598; 46 L. Ed. 
 707; 22 S. Ct. 511. 
 
 Clark V. Wooster, 119 U. S. 322; Beedle v. Bennett, 122 U. S. 71. 
 
 When this suit was commenced the patent had two months and 22 days to 
 run. It was therefore clearly within the power of the court to grant a tem- 
 porary injunction, if not to enter a final decree, before the patent should 
 expire ; and though no restraining order was issued or perhaps could have 
 been after the patent had expired, jurisdiction of the case was not lost on 
 that account. — Ross v. Ft. Wayne, 63 Fed. 466; 11 C. C. A. 288. 
 
 Clark V. Wooster, 119 U. S. 322; Beedle v. Bennett, 122 U. S. 71; American v. 
 Brown, 58 Fed. 409; American v. Weston, 58 Fed. 410. 
 
 The patents bearing numbers below 164,050 all expired before the suit was 
 commenced, and, therefore, as the circuit court held, afforded no basis for 
 equitable relief. No. 164,050 expired just after the filing of the original bill, 
 but before the return day of the subpoena; and the bill in respect to that 
 patent was within the discretion of the court to dismiss the bill in respect to 
 that patent for want of equity. — Russell v. Kern, 69 Fed. 94; 16 C. C. A. 
 154. 
 
 Keyes v. Mining Co. 15 Sup. Ct. 772. 
 
 It is well settled that the expiration of a patent pending suit for infringe- 
 ment does not defeat the jurisdiction of a court of equity, although it is a 
 reason for denying an injunction which was the basis of equity jurisdiction. 
 — Reedy v. Western, 83 Fed. 709; 28 C. C. A. 27. 
 
 Beedle v. Bennett, 122 U. S. 71; Clark v. Wooster, 119 U. S. 322. 
 
 The bill was filed nearly three months before the expiration of the patent, 
 and contained prayers for a preliminary and a perpetual injunction. The 
 patent had yet a month to run after the defendant was required to answer 
 under the rules. It was therefore clearly within the power of the court, 
 when the suit was begun, not only, upon proper proof, to grant a preliminary 
 injunction, but, either by a decree pro confesso, in case of default, or upon 
 the bill and answer, if an answer should be filed within the rules, to dispose 
 of the case finally, by awarding a permanent injunction, before the expira- 
 tion of the patent, the conditions at the time the bill was filed thus availing 
 to give the court jurisdiction, both for the purpose of a preliminary injunc- 
 tion and a permanent decree, during the life of the patent, such jurisdiction 
 could not be defeated by subsequent happenings, whether due to the delay 
 of the defendant or the contingencies of litigation. — U. S. Mitis v. Detroit, 
 122 Fed. 863; 59 C. C. A. 589. 
 
 New York v Peoria, 21 Fed. 878; Brooks v. Miller, 28 Fed. 615; Singer v. 
 Wilson, 38 Fed. 586; American v. Chicago, 41 Fed. 522; Keyes v Mfg. Co 45 
 Fed 199- Ross V. City, 63 Fed. 466; Chinnock v. Paterson, 110 Fed. 199; Clark
 
 664 THE FIXED LAW OF PATENTS §718 
 
 V Wooster, 119 U. S. 322; Beedle v. Bennett, 122 U. S. 71; Busch v. Jones, 184 
 U. S. 598.' 
 
 ■ The court below took the view that its jurisdiction in equity was de- 
 pendent upon the right of the complainant to a preliminary injunction upon 
 the bill as filed, and therefore held the verification upon information and belief 
 insufficient. But there was no attempt to use the bill as evidence to secure 
 an injunction pendente lite. Nor was there any need to do so, in order to 
 sustain the jurisdiction of the court. The bill was filed Apr. 10. The patent 
 did not expire until July 8. Under the rules the answer of the defendant 
 was due June 5, more than a month before the patent expired. _ The bill, 
 after describing the patent, averring its ownership by the complainant, and 
 setting forth the adjudication sustaining it, charged the defendant with 
 infringement, and called for answers to certain interrogatories calculated to 
 clear up any doubt upon the point of infringement. If the defendant had 
 answered upon the rule day, June 5, admitting the use of the patented process, 
 or if it had failed to plead, and allowed the bill to be taken pro confesso, in 
 either event the complainant would have been entitled to a permanent 
 injunction a month before the expiration of the patent. The fact that the 
 defendant failed to comply with the rules cannot prejudice the complainant. 
 The complainant had reason to expect the answer on the rule day, and on each 
 day thereafter until the defendant filed its pleading. For these reasons it was 
 not necessary to verify the bill in positive terms. — U. S. Mitis v. Detroit, 
 122 Fed. 863; 59 C. C. A. 589. 
 
 Hughes V. Northern, 18 Fed. 106; Black v. Allen, 42 Fed. 618; Burns v. Lynde, 
 6 Allen, 305; More v. Cheeseman, 23 Mich. 290; Hawkins v. Hunt, 14 111. 42; 
 Sand Creek v. Robbins, 41 Ind. 79. 
 
 The bill was filed Mar. 12, 1906. The patent expired June 3, 1906. The 
 bill was for a preliminary and permanent injunction and an accounting. 
 No motion for a preliminary injunction was made. Demurrer was filed 
 challenging jurisdiction. Held: The suit was then one of equitable juris- 
 diction when instituted, and under the rules of practice in equity there can 
 be no doubt there was ample time to award a preliminary injunction before 
 the patent expired. These facts, we think, conferred jurisdiction for all 
 purposes, not only for the preliminary injunctive relief, but also for the 
 incidental accounting. — Carnegie v. Colorado, 165 Fed. 195; C. C. A. 
 
 Root V Railway, 106 U. S. 189; Keyes v. Eureka, 158 U. S. 150; Deere v. 
 Dowagiac, 153 Fed. 177; Clark v. Wooster, 119 U. S. 322; Beedle v. Bennett, 
 122 U. S. 71; Busch v. Jones, 184 U. S. 598; Ross v. Fort Wayne, 63 Fed. 466; 
 Chinnock v. Paterson, 112 Fed. 531; U. S. Mitis v. Detroit, 122 Fed. 863. 
 
 § 718. Equity — Rule. 
 
 The plain and obvious purpose of this provision (the Act of 1870) is, to 
 furnish appropriate modes in equity pleading for the trial of all issues, both 
 of fact and law, relating both to the alleged infringement and the validity of 
 the patent, without the necessity of framing special issues out of chancery 
 for trial by jury, or sending the parties to a court of law for the trial of an 
 action in that forum, in order to determine their legal right. It proceeds upon 
 the idea that the court of equity having acquired jurisdiction, for the purpose 
 of administering the equitable relief sought by the bill, may determine 
 directly and for itself, in the same proceeding, all questions incidental to 
 the exercise of its jurisdiction, notwithstanding they may be questions 
 affecting legal rights and legal titles. — Root v. Ry., i05 U. S. 189; 26 L. 
 Ed. 975. 
 
 The difficulty with the defendant's position in the case under consideration 
 is that it apparently leaves the plaintiff without an adequate remedy. De-
 
 § 719 JURISDICTION 665 
 
 fendant has broken no express covenant of the contract, since it has made 
 no covenant. It has simply ignored the existence of the contract and granted 
 a license to another party. It is difficult to see what remedy is available 
 to the plaintiff in a state court that would not involve the right of the de- 
 fendant to use the patent. In other words, it would be an ordinary suit for 
 infringement in which the federal courts alone would have jurisdiction. 
 Whether it sued at law, or in equity, its damages would be such as are usual 
 in cases of infringement, and the only injunction it could obtain would be 
 against the further use of the invention. — Excelsior v. Pacific, 185 U. S 
 282; 46 L. Ed. 910; 22 S. Ct. 681. 
 Pratt V. Paris, 168 U. S. 255. 
 
 It is not denied in this case (Root v. Railway) but that there may be other 
 grounds for equitable relief than the right to an injunction which would 
 justify a circuit court, sitting as a court in equity, in trying a patent case, 
 and, as an incident to the equitable matters presented in the bill, take an 
 accounting of the profits and revenues of which the patentee may have been 
 deprived by the infringement of his patent, and also the validity of the patent, 
 and the fact of infringement. Before any of these matters however, can 
 be considered, the bill must clearly present some ground for the interposition 
 of a court of equity. — Germain v. Wilgus, 67 Fed. 597; 14 C. C. A. 561. 
 
 Root V. Railway, 105 U. S. 189; Smith v. Sands, 24 Fed. 470: Adams v Iron 
 26 Fed. 324; Brooks v. Miller, 28 Fed. 615; Clark v. Wooster, 119 U. S. 323. 
 
 § 719. Equity — For Determining Profits or Assessing Damages 
 Only. 
 
 The objection that there is a remedy at law is only available when such 
 remedy is as plain, adequate and effectual as the remedy in equity. Here, if 
 the complainants could recover the moneys claimed, they would be entitled 
 also to discovery and account. — Sullivan v. Railroad, 94 U. S. 806 ; 24 
 L. Ed. 324. 
 
 Boyce v. Grundy, 3 Pet. 215. 
 
 The prayers of the bill are sufficient in either aspect, as they include dis- 
 covery and an account, a decree for payment, injunctions to prevent the vio- 
 lation of the provisions of the agreement, " and such other relief as the equity 
 of the case may require." So far as the relief desired is a mere account of 
 stipulated royalties, counsel are not able to point out any decision of the 
 Supreme Court clearly sustaining the bill. On the other hand, it is claimed 
 that Root V. Railway, 105 U. S. 189, defeats jurisdiction in the case at bar. 
 But that was a case of a mere tortious infringement of a patent expired 
 before the bill was brought, while this suit, in our view, relates to patents 
 still in life, and, in another, to agreed royalties. — B, & S. Fastener v. B. G, 
 Fastener, 58 Fed. 818; 7 C. C. A. 498. 
 
 The ground upon which a court of equity will take cognizance of a suit for 
 an infringement of a patent is the relief through an injunction. There is 
 nothing so peculiar to a suit for damages and profits for infringement of a 
 patent as will, independently of some recognized ground of equitable juris- 
 diction, justify a court of chancery in assuming jurisdiction. It must ap- 
 pear that the legal remedy at law is inadequate, and if the case is one in 
 which equitable relief by injunction is inappropriate, as when the patent 
 has expired, or when the circumstances are such as to justify a court in 
 refusing equitable relief, the suit will not be entertained for the mere 
 purpose of an account of past damages and profits. — Woodmansee v 
 Williams, 68 Fed. 489; 15 C. C. A. 520.
 
 666 THE FIXED LAW OF PATENTS § 720 
 
 Root V. Railway, 105 U. S. 189; McLaughlin v. Railway, 21 Fed. 574- Clark v. 
 Wooster, 119 U. S. 325. 
 
 It is doubtless true, as contended, aside from any right to an injunction, 
 that there may be ground for jurisdiction in equity in the nature and cir- 
 cumstances of the account, and in the necessity for discovery, but in respect 
 to the expired patents, which are here assumed to be valid, it is not shown 
 that the remedy at law would be inadequate. — Russell v. Kern, 69 Fed 
 94; 16 C. C. A. 154. 
 
 Equity will not entertain a suit which simply involves the ascertainment 
 of damages and profits for past infringement. — Truman v. Holmes, 87 Fed 
 742; 31 C. C. A. 215. 
 
 Root V. Railway, 105 U. S. 189; Hayward v. Andrews, 106 U. S. 672- Carv v 
 Wooster, 119 U. S. 325; Rob. Pat. sec. 1086; Walk. Pat. sec. 572. 
 
 § 720. Equity — Miscellaneous. 
 
 The single question remains whether the assignee of a chose in action may 
 proceed by bill in equity to enforce for his own use the legal right of his 
 assignor, merely because he cannot sue at law in his own name. If the 
 assignee of the chose in action is unable to assert in a court of law the legal 
 right of the assignor, which in equity is vested in him, then the jurisdiction of 
 a court of chancery may be invoked because it is the proper forum for the 
 enforcement of equitable interests and because there is no adequate remedy 
 at law; but when, on the other hand, the equitable title is not involved in 
 the litigation, and the remedy is sought merely for the purpose of enforcing 
 the legal right of his assignor, there is no ground for an appeal to equity 
 because, by an action at law in the name of the assignor, the disputed right 
 may be perfectly indicated and the wrong done by the denial of it fully re- 
 dressed. To hold otherwise would be to enlarge the jurisdiction of courts of 
 equity to an extent the limits of which could not be recognized ; and that, 
 in cases where the only matters in controversy would be purely legal rights. 
 — Hayward v. Andi-ews, 106 U. S. 672; 27 L. Ed. 271 ; 1 S. Ct. 544. 
 
 Explaining, Root v. Ry. 105 U. S. 189; Hammond v. Messenger, 9 Sim. 
 
 Walker v. Brooks, 125 Mass. 241; Dhegetaft v. London, 4 Bro P C 2nd ed 
 436; Motteux v. Insurance, 1 Atk. 545; Cator v. Burke, 1 Bro Ch 434- Hunt v' 
 Hollingsworth, 100 U. S. 103; Van Norden v. Merton, 99 U. S. 380;' Rose v 
 S o""^', ^ Ju'^r^ ^J^K- F,f'' ^^'■^^^ "■ I^s- Co. 1 Johns, Ch. 463; Bank v. Mumford,' 
 ?.5'''■^ o^Ji- ^3 RiddeU V. MandeviU, 5 Cranch, 322; Lenox v. Roberts, 2 
 Wheat. 373; Thompson v. R. R. 6 Wall. 134; Walker v. Derville, 12 Wall. 442. 
 
 Where plaintiff's damages were measurable in terms of royalties estab- 
 lished there bemg no other ground for equity jurisdiction, the remedy is 
 complete at law. — Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. 
 Ct. 772. 
 
 .v.'^tert^""^^^^ having made a full appearance and pleaded to the merits of 
 the bill, has waived the objection that as the suit was begun it was against 
 another party on account of an erroneous statement as to county location, 
 and also the objection that the original complainant had an adequate remedy 
 at law. — Ross v. Ft. Wayne, 63 Fed. 466; 11 C. C. A. 288. 
 Kilbom V. Sunderland, 130 U. S. 509. 
 
 A complainant in equity may transfer to another his interest in the subject- 
 matter of the contest, and confer upon the assignee the right to prosecute
 
 §720 JURISDICTION ^^"^ 
 
 ,h. «„it to a decree upon the merits, notwithstanding by reason of events 
 
 Tn this case the appellee had sued appellant at law for infnngement of a 
 in thib case tne apije infringement of a prior patent owned by 
 
 open to grave doubt. 
 
 rho sncreestion has been made- that, although defendants may be guilty of 
 
 cumstances of the Ccose, equity oug ^^^^ ^^^^^ 
 
 S^„|eS';^:'paS^^^ Fed. 288; 25 C. C. A. 267. 
 
 Supply Co. V. McCready, Fed. Cas. 29o. 
 
 The bill W.S upon the ^J-y Pf]-^^ ^.^^ ^ 
 patent which complainant o^^'^^d but^did not sue oi ^^e Hahl patent 
 
 Answer and.the decree -^s pro con^ ss^^ ^ame n and ^^^^ "'"' °^'""' 
 having expired P^^^^ente lite defendant came in .^^f.i^ ^^^ent was. if 
 
 '"^"•;\t M7a?^nt ?^e1d'' iThi^rrhe argument foi' the appellant 
 any, of the Hail patent, ntiu. ^hioh show that the merits of 
 
 overlooks the distinction bet^:een the farts^^^^^^^ ^hat the court is 
 
 the case are against the plaintiff, f "^^^^ ,'^^^^ It is also verv clear 
 
 without jurisdiction to determine t^^^^ ^^^ l^.^^^i^.^ 
 
 that the facts which t.^e appellant b com sei^s^^^^^ 
 remedv is at law really in their effect establ sh ^.^at^tie piai ^^^^^^ 
 
 right to recover either at l-^'^^- ^^ jj^' ould not ecover in an action 
 the Hahl Patent 1 IS clear that thp^^^^^^^^^^^ cou ^^.^ ^^^^ 
 
 at law any more than by a suit ni ^4"i > answer and made an issue 
 
 patent only. If the defendant had ,f S^^^^^;^^^^^^^^^ allegations 
 
 C. C. A. 142.
 
 558 THE FIXED LAW OF PATENTS § 721 
 
 plainly upholding jurisdiction in equity for like relief, in favor of the manu- 
 facturer, primarily sued for infringement, to prevent complication and injury 
 in further suits against purchasers from him of the alleged infringing article. 
 Whether the injunction should issue depends upon the equities presented. — 
 Commercial v. Avery, 159 Fed. 935; 87 C. C. A. 206. 
 
 § 721. Infringement. 
 
 An action which raises a question of infringement is an action arising 
 "under the patent law," and one who has the right to sue for the infringement 
 may sue in the circuit court. Such a suit may involve the construction of a 
 contract as well as the patent, but that will not oust the court of its jurisdic- 
 tion. If the patent is involved it carries with it the whole case. — Littlefield v. 
 Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 It would seem that an action for infringement against the U. S. would be 
 properly brought in the Court of Claims. — James v. Campbell, 104 U. S. 
 356; 26 L. Ed. 786. 
 
 Carr v. U. S. 98 U. S. 433. 
 
 Where the validity of the patent was admitted and there was an established 
 license fee, the remedy at law was complete and adequate at law. — Keyes 
 V. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 772. 
 
 The act of Congress of 1870, as embodied in Section^ 629 of the Revised 
 Statutes, provides that the " circuit courts shall have original jurisdiction 
 as follows : ... of all suits at law or in equity, arising under the patent or 
 copyright laws of the United States." The jurisdiction thus conferred is 
 exclusive. All questions, therefore, which concern the infringement or 
 validity of, and the title to, patents granted under the patent laws of the 
 United States, must be litigated in the circuit courts of the United States. 
 " It is perfectly well settled," however, " that where a suit is brought on a 
 contract, of which a patent is the subject-matter, either to enforce such con- 
 tract or to annul it, the case arises on the contract or out of the contract, 
 and not under the patent laws." Where a bill in equity states a contract 
 between complainant and defendant, and which it seeks to have set aside 
 in order to pursue the defendant as an infringer, or where the bill states a 
 contract between complainant and defendant, which it seeks to enforce, as 
 giving complainant title to the patent, the case cannot be said to arise under 
 the patent laws. In either case the court is called upon to administ?er the law 
 of the contract, and not the patent laws of the United States, or rights claimed 
 under them. But, where the contract set up or stated is not between the 
 parties to the suit, it is collateral thereto and cannot, therefore, give character 
 to the case as being on the contract, and not one arising under the patent 
 laws. In the case before us the action was not brought to enforce a contract 
 or to set aside a contract between defendant and complainant. In other 
 words, it was not a suit upon a contract between the parties to the suit, within 
 the scope of the decisions referred to. The appellee is mistaken in its conten- 
 tion that questions of title to patents, such as are raised in this case, cannot 
 be questions arising under the patent laws of the United States, because they 
 involve the derivation of title from a contract. The complainant in this case 
 has stated in its bill that it is the owner of the patent in suit, and derives title 
 through an assignment from the patentee. — Atherton v. Atwood-Morrison, 
 102 Fed. 949; 43 CCA. 72. 
 
 That one who manufactures, filling a specific order for a dealer according 
 to the terms of the order, without intent to infringe, and after discontinu-
 
 §722 
 
 JURISDICTION 669 
 
 ance of such infringement, and with no evidence of threatened continuance of 
 infringement, cannot be sued in equity, there being adequate remedy at law 
 for past acts, see- Globe-Wernicke v. Brown, 121 Fed. 90; 57 C. C. A. 344. 
 
 Although both the parties are citizens of New York, as the action was for 
 the infringement of a patent, and was so tried and decided m the courts 
 below this court has jurisdiction, notwithstanding that one of the detenses 
 depends upon the construction of a contract of license. We do not think-^that 
 the decision in Kartell v. Tilghman, 99 U. S. 547, implies. — Clancy v. Troy, 
 157 Fed. 554; 85 C. C. A. 314. 
 
 Complainant's counsel contends before this court that the defendants by 
 filing a general appearance in the cause without objection to the jurisdiction 
 of the court, waived their right to object to being sued in the Eastern Dis- 
 trict of Pa., and hence that, as the action is within the general jurisdiction 
 of the circuit court, the complainant, because of such waiver may show in 
 support of his bill acts of infringement committed outside of such district. 
 If that be admitted, however, as a general proposition, it does not relieve the 
 complainant in this case of the burden of proving that the defendants have 
 committed infringing acts within said district, since that was substantially 
 the issue tendered by the bill, denied by the answer, and to the^maintenance 
 of which the proofs were directed. — Gray v. Gnnberg, 159 ted. 138, hb 
 C. C. A. 328. 
 
 § 722. Licensor and Licensee. 
 
 A mere licensee cannot sue strangers who infringe. In such cases redress 
 is obtained through or in the name of the patentee or his assignee. Here, 
 however, the patentee is the infringer, and as he cannot sue himseit, the 
 licensee s powerless so far as the courts of the United States are concerned 
 unless he can sue in his own name. A court of equity looks to substance 
 rather than form. When it has jurisdiction of parties it grants the appropriate 
 relief without regard to whether they come in as phuntitf or defendant, in 
 this case the person who should have protected the plaintiff against a 1 infringe- 
 ments has bicome himself the infringer. He held the legal title to his patent 
 in trust for his licensees. He has been faithless to his trust and courts of 
 equity are always open for the redress of such a wrong. This wrong is an 
 infrincrement. Its redress involves a suit, therefore, arising under the patent 
 laws and of that suit the circuit court has jurisdiction. — Littleheld v. 
 . Perry, 88 U. S. 205 ; 22 L. Ed. 577. 
 
 While we do not allow the jurisdiction of the federal courts to be invoked 
 primarily for the determination of the respective rights of parties to a con- 
 tract concerning patents, yet when the bill is an ordinary one for mfringemeiit, 
 and the answer puts in issue the title of the plaintiff to sue, we think the 
 furisdiction is not ousted by the mere allegation that the hcense has been 
 revoked, and that the court is at liberty to go o"^"^ determine that fact. - 
 Excelsior v. Pacific, 185 U. S. 282; 46 L. Ed. 910; 22 S. Ct. 681. 
 
 Littlefield v. Perry, 21 Wall. 205; White v. Rankin, 144 U. S. 628. 
 
 The bill in this case is in the customary form for infringement of letters 
 natent and the proposition contended for necessarily implies that the juns- 
 §icSon invoked by ^the fihng of such a bill may be defeated by a pea of 
 Hcense which adn.its the use and validity of the patent sued om If the 
 decision of Kartell p.Tilghman,99 U.S 547, ever meant that much it hf been 
 explained and limited by later decisions, ^vhich leave no doubt of the edera^ 
 jurisdiction in cases like the present. - Elgm v. Nichols, 65 Fed. 215. 12 
 C. C. A. 578.
 
 670 THE FIXED LAW OF PATENTS §§ 723-724 
 
 White V. Rankin, 144 U. S. 628; Mfg. Co. v. Hyatt, 125 U. S. 46; Marsh v. 
 Nichols, 140 U. S. 344. 
 
 The validity of the under-Hcense or contract and the right of the hcensee 
 to restrain future sale in violation thereof must necessarily be determined 
 by the patent laws, and by the rules applicable to a suit by a patentee or 
 an assignee to enjoin the infringement of a patent. — National v. Schlegel, 
 128 Fed. 733; 64 C. C. A. 594. 
 
 § 723. Residence. 
 
 The Act of Congress exempts a defendant from suit in any district of, which 
 he is not an inhabitant, or in which he is not found at the time of the service 
 of the writ. It is an exemption which he may waive, but unless waived, he 
 need not answer and will not be bound by anything which may be done 
 against him in his absence. — Butterworth v. Hill, 114 U. S. 128; 29 L. Ed 
 119; 5S. Ct. 796. 
 
 The act of March 3, 1897, was obviously intended to add to the general 
 statutes upon the subject of jurisdiction in patent cases a definition for the 
 particular requisites for jurisdiction, of such cases by the various circuit 
 courts, and of the proper method of service of process upon a defendant in 
 the district of which he is not an inhabitant. The object was to determine 
 with precision the boundaries of jurisdiction, and to create a future method 
 of service of process in patent causes against non-resident defendants, which 
 had not theretofore been stated in a federal statute. — Westinghouse v. 
 Great Northern, 88 Fed. 258; 31 C. C. A. 625. 
 
 The averment is, that the defendant had a regular and established place 
 of business in Philadelphia, and that the acts of infringement luul been com- 
 mitted by the defendant in that city. It by no means follows, that, because 
 the defendant had not such a place of business in the exhibition, it might not 
 have had one or more such places of business elsewhere in Philadelphia; 
 nor are _we ready to hold that because one writ of subpoena in this case has 
 proved ineffectual, valid service of another may not be made. We, there- 
 fore, do not regard the order appealed from as in any sense a final decree 
 either in substance or form. — Waterman v. Parker, 107 Fed. 141- 46 C 
 C. A. 203. 
 
 In re Grossmayer, 177 U. S. 48; Ex parte Schollenberger, 96 U. S. 369. 
 
 A corporation chartered under the laws of New Jersey is not an inhabitant 
 of the district in Texas where it does business. It might "have agents and carry 
 on business in every one of the many districts of the United States, and [t 
 could not be held that, because of such business, it was an inhabitant of every 
 district in which it did business. — Shaw v. American, 108 Fed. 842; 48 
 C. C. A. 68. 
 
 Shaw V. Mining Co. 145 U. S. 444; Carter, Jur. Fed. Cts. 155. 
 
 § 724. State Court. 
 
 An action to recover royalties under contract for the sale of a patent, 
 though there may arise collaterally the question whether articles made 
 come within the patent does not arise under the patent laws so as to give 
 jurisdiction to the Circuit Court. — Albright v. Teas, 106 U. S. 613; 27 L. Ed. 
 295 ; 1 S. Ct. 550. 
 
 Wilson V. Sanford, 10 How. 99.
 
 § 725 
 
 LACHES 
 
 671 
 
 The federal courts have no right, irrespective of citizenshij), to entertain 
 suits for the amount of an agreed license or royalty, or for the specific execu- 
 tion of a contract for the use of a patent, or of other suits where a subsisting 
 contract is shown governing the rights of the party in the use of an invention, 
 and that such suit not only may, but must, be brought in the state court. — 
 Pratt V. Paris, 168 U. S. 255; 42 L. Ed. 458; 18 S. Ct. 62. 
 
 Kartell v. Tilghman. 99 U. S. 547; Wilson v. Sanford, 10 How. 99; Albright v. 
 Teas, 106 U. S 613; Goodyear v. Day, 1 Blatch. 565; Blanchard v. Sprague, 1 
 Cliff. 288; Mfg. Co. v. Hyatt, 125 U. S. 46; Wade v. Lawder, 165 U. S. 624. 
 
 It is no objection to the jurisdiction of the state court that the question 
 of validity may involve the examination of conflicting patents, or the testi- 
 mony of experts. It is the fact of its invalidity, and not the reasons for it, 
 that is material. (Citing at length the state law on the subject). — Pratt v. 
 Paris, 168 U. S. 255; 42 L. Ed. 458; 18 S. Ct. 62. 
 
 § 725. Supreme Court. 
 
 The Supreme Court has jurisdiction on appeal of a cause arising under the 
 patent laws regardless of the amount involved. — Phillip v. Nock, 80 U. S. 
 185; 20 L. Ed. 567. 
 
 As the court had jurisdiction at the inception of the suit, even though upon 
 narrow ground, yet, as the defendants did not ask the dismissal of the bill 
 on the ground of want of jurisdiction, we should be very reluctant, if we had 
 the power now, on an appeal, after the case had been tried and determined, 
 to reverse the decree. — Clark v. Wooster, 119 U. S. 322; 30 L. Ed. 392; 
 7 S. Ct. 217. 
 
 We have jurisdiction to review the final decree in the suit and all inter- 
 locutory decrees and orders. — Worden v. Searles, 121 U. S. 14; 30 L. Ed. 
 853; 7S. Ct. 814. 
 
 Distinguishing Ex parte Kearney, 20 U. S. 39; New Orleans v. Steamship, 
 87 U. S. 387. 
 
 The Supreme Court has jurisdiction to review a judgment of the Court 
 of Appeals D. C. — U. S. v. Seymour, 153 U. S. 353; 38 L. Ed. 742; 14 S. 
 Ct. 849. 
 
 Now, actions at law for infringement and suits in equity for infringement, 
 for interference, and to obtain patents, are suits which clearly arise under the 
 patent laws ; being brought for the purpose of vindicating rights created by 
 those laws, and coming strictly within the avowed purpose of the act, (Ju- 
 diciary Act, Mar. 3, 1891) to relieve the court of that burden of litigation 
 which operated to impede the disposition of cases of peculiar gravity and 
 general importance. We are of opinion that it is reasonable to assume that 
 the attention of Congress was directed to this class of cases ; — that there is 
 nothing intended to place a limitation on the appellate jurisdiction of 
 this court in a case such as this. — United States v. Am. Bell, 159 U. 
 S. 548; 40 L. Ed. 255; 16 S. Ct. 69. 
 
 LACHES. 
 
 General Statement § 726 
 Application § 727 
 Bringing Suit § 728 
 Excuses § 729 
 Injunction § 730 (see § 533) 
 
 Reissue § 731 (see § 869) 
 Miscellaneous Rulings § 732 
 See — -Abandonment § 1; Defenses 
 306; Disclaimer § 339; Injunction § 
 558, 568
 
 572 THE FIXED LAW OF PATENTS §§ 726-727 
 
 § 726. General Statement. 
 
 The Patent Statute does not employ the term laches. Delay of applica- 
 tion which bars a patent is abandonment under Sec. 4886. See title Aban- 
 domnent. Failure to prosecute an application may work abandonment. 
 Sec. 4894. Failure to pay the final fee within the prescribed period may 
 work abandonment, and the question of abandonment will be considered as 
 a question of fact by the Patent Office. Sec. 4897. While Sec. 4916, relating 
 to reissues does not make delay a bar to a valid reissue, the fact of unreason- 
 able delay or of intervening rights may render the reissue invalid. See 
 Reissue. The common rules of laches and stale claims apply to cases in 
 equity involving patents. 
 
 § 727. Application. 
 
 Congress has established a department, with officials selected by the 
 government, to whom all applications for patents must be made; has pre- 
 scribed the terms and conditions of such applications, and entrusted the 
 entire management of affairs of the department to those officials; that when 
 an applicant complies with the terms and conditions prescribed, and files 
 his application with the officers of the department, he must abide their action, 
 and cannot be held to suffer or lose rights by reason of any delay on the part 
 of those officials, whether reasonable or unreasonable, unless such delay has 
 been brought about through his corruption of the officials or through his 
 inducement or at his instance. Proof that they were in fault, that they 
 acted unwisely, unreasonably, and even that they were culpably dilatory, 
 casts no blame on him and abridges none of his rights. — United States v. 
 Am. Bell, 167 U. S. 224; 43 L. Ed. 144; 17 S. Ct. 809. 
 
 The mere fact of delay does not, therefore, operate to deprive the inventor 
 of his legal rights. Before he can be punished it must be shown that he has 
 been guilty of a wrong — that he has caused the delay. He cannot be pun^ 
 ished on account of the delay of the tribunal before which he is presenting his 
 suit. — United States v. Am. Bell, 167 U. S. 224; 43 L. Ed. 144; 17 S. Ct. 
 S09. 
 
 We do not, however, intend to have it inferred that we have determined 
 that the law requires any degree of diligence beyond a compliance with the 
 statutory provisions, official regulations, and the formal demands from time 
 to time of the public officials charged with duties under the patent law. We 
 do not determine that any degree of laches whatever will forfeit a patent once 
 granted, reserving, of course, cases of abandonment, and other cases where, 
 through laches, the equities of strangers have become established. Congress, 
 in 4894 and 4904, R. S,, established certain fixed periods for giving progress 
 to applications for patents, which the Supreme Court has so far recognized 
 by analogy as to apply the limitation to a bill in equity filed under sec. 
 4915 R. S. Gandy v. Marble, 122 U. S. 432. The United States asks us to 
 establish a period of limitations other than that fixed by statute, and we do 
 not decide that, under any circumstances, we have any authority so to do. 
 We merely determine that the case of extreme diligence as made by the 
 United States cannot be maintained. — Am. Bell Tel. v. U. S. 68 Fed. 542; 
 25 C. C. A. 569. 
 
 That others received his invention with incredulity and ridicule was no 
 fault of his. He never abandoned his invention. Nor do we find such laches 
 on his part as to deprive him of its use. He was a poor man and was ill for a 
 long time. He, unaided, was without means to construct his apparatus on 
 such a scale as to demonstrate its merit. Those to whom he applied for its
 
 § 728 LACHES 673 
 
 introduction turned a deaf ear to him. In the face of discouragement and 
 with reasonable diUgence in view of his circumstances, he persisted m tiis 
 efforts until they were finally crowned with success. We must therefore hold 
 that the Reid & Billington apparatus did not anticipate any of the claims ot 
 the patent in suit, and consequently that Williamcs was under no obligation 
 to enter a disclaimer. - McNeely v. Williames, 96 Fed. 978; 37 C. C. A. 641. 
 
 Late in December, 1893, the inventor became insane. At this crisis there 
 remained three months' time during which an application might have been 
 filed if there had been anyone legally capable of making an application. 
 The trouble was that there was then no law authorizing the guardian to hie 
 an application for a patent upon an invention made by an insane person. 
 The law which for the first time took cognizance of such a situation was passed 
 Feb 28 1899 (C. 227, 30 Stat. 915). The act of that date amended sec. 
 4896 r' S which authorizes the administrator or executor of a deceased 
 inventor to file an application for an invention made by his intestate or 
 t-stator, by providing that the guardian of an insane person may hie ^^ aPP"; 
 cation upon an invention made by such person before his insanity. Ihe last 
 clause of that act provides that it " is to cover all applications now on hie 
 in the Patent Office or which may be hereafter made." Jenner, as guardian, 
 at date of this act had on file an application for a patent upon the insane 
 inventor's invention. There was no authority of law for its filing at the time 
 it was filed, but that trouble, we shall assume, was cured by the retroactive 
 effect of the act of 1899. But the date of that application was Nov. 20, 1895, 
 and we are confronted with the fact that at that date the invention had 
 been in public use for more than three years. Congress having created the 
 monopoly, may put such restrictions upon it as it pleases. Having made no 
 exception in favor of an insane person, we can make none. - Jenner v. 
 Bowen, 139 Fed. 556; 71 C. C. A. 540. 
 
 § 728. Bringing Suit. 
 
 Delay in bringing suit for 15 years is laches. — Leggett v. Standard, 149 
 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. 
 
 McLean v. Fleming, 96 U. S. 245; Spiedel v. Henrici, 120 U. S. 377; GaU.her 
 V. CadweU, 145 U. S. 368. 
 
 It is thus apparent that so far from the complainant having made out a 
 case of wilful infringement by defendant company, the converse is the fact. 
 Fully aware as early as 1880, which ic about a year after the mf ringing nets 
 were made, that the defendant was using them, and kept advised from time 
 to time by his foreman that infringement was continuing, complainant care- 
 fully refrained from saying or doing anything to warn defendant that it wa^ 
 infringing until almost the very day when the patent expired. The reason 
 for this policy of inaction is quite apparent. A careful examination of the 
 record ^vSl leave no doubt in any unprejudiced mind, that had complainant 
 notffied defendant at any time from 1880 to 1886 that the slings were in- 
 fringements of his patent, the use of such slings would have ceased forthwith. 
 They were convenient, and in some respects and under some conditions, 
 superior to other appliances; hence, the set of four were always kept renewed 
 But manifestly, they were not so superior as complainant contends for their 
 numtTer was n^ver increased. If they did not offer sufficient advantages 
 to warrant increasing their number, itis difficult to beheve that those ad- 
 vantages would have been sufficient to induce continued use after defendant 
 was advised that they were infringements of a patent.. The complainant 
 has deliberately chosen not to warn an unconscious infringer whom he has 
 watched infringing year after year, no doubt hoping thereby to mcrease the
 
 674 THE FIXED LAAV OF PATENTS § 729 
 
 amount of profits ultimately recoverable. This is sharp practice, and if 
 there ever was a case where complainant should be required to establish these 
 profits by reliable and tangible proof, this is preeminently such. — Hohorst 
 V. Hamburg- American, 91 Fed. 655; 34 C. C. A. 39. 
 
 § 729, Excuses. 
 
 It would seem that poverty or sickness would excuse delay in prosecuting 
 an application. — Woodbury v. Keith, 101 U. S. 479; 25 L. Ed. 939. 
 
 Where, it otherwise appearing on the face of the bill that the claim is stale, 
 or is barred by lapse of time, and it is sought to avoid the effect of such a bar 
 on the ground that the'fraud complained of was concealed and had been only 
 recently discovered. It is necessary that the particular acts of fraud or 
 concealment should have been set forth by distinct averments, as well as the 
 time when discovered, so that the court may see whether, by the exercise of 
 ordinary diligence the discovery might have been before made. — Wollensak 
 V. Reiher, 115 U. S. 96; 29 L. Ed. 355; 5 S. Ct. 1132. 
 
 Eeanbien v. Beanbien, 23 Plow. 190; Steames v. Page, 7 How. 819; Moore v. 
 Green, 19 How. 69; Marsh v. Whitmore, 21 Wall. 178; Godden v. Kimmell, 99 
 U. S. 201; Bads^er v. Badger, 2 Wail. 87; Wood v. Carpenter, 101 U. S. 135; 
 Lansdale v. Smith, 106 U. S. 391. 
 
 Plaintiff's povertv is no excuse for laches in this case. — Leggett v. Stand- 
 ard, 149 U. S. 287;' 37 L. Ed. 737; 13 S. Ct. 902. 
 
 Hayward v. Bank, 96 U. S. 611. 
 
 Note: This holding is without authority and the citation is not truly made. 
 In Hayward v. Bank, the court did not say " that a party's poverty or pecuni- 
 ary embarrassment was not a sufficient excuse for postponing the assertion 
 of his rights." What the court did say was " His poverty or pecuniary 
 embarrassment was not a sufficient excuse for postponing the assertion of 
 his rights," which is quite a different thing when the true context is seen. 
 That was a case for the recovery of hypothecated stocks, a case in equity to 
 recover title to personal property. The delay there was a very different one 
 from an action in tort against a great monopoly like the present case', and 
 the learned justice went a long way and spun a very fine thread of analogy 
 in an attempt to make such a hard and fast rule. 
 
 The plaintiff's excuse, in this instance, that he preferred for prudential 
 reasons, to receive a salary from the defendant rather than to demand a 
 royalty is entitled to a less favorable consideration by a court of equity than 
 if his conduct had been that of mere inaction, — Lane v. Locke, 150 U. S. 
 193; 37 L. Ed. 1049; 14 S. Ct. 78. 
 
 The Edison company brought suit seasonably against the first and prin- 
 cipal infringer. It was not laches to delay bringing suit against other in- 
 fringers until the first suit had reached adjudication. Edison Electric v, 
 Sawyer-Man. 53 Fed. 592; 3 C. C A. 605. 
 
 With knowledge of infringement by complainant and its predecessors in 
 business for fourteen years without any excuse equitable rights are lost. - 
 Woodmansee v. Williams, 68 Fed. 489; 15 C. C. A. 520. 
 
 Action was brought against a prior infringer within a year from the time 
 the infringement began, and the issue was not finally settled until within a 
 year previous to the time this suit was brought. Held: That suit was finally 
 determined in favor of the complainant on Oct. 21, 1898 (the bill here was 
 filed Apr. 10, 1899). Such pending Utigation involving the validity and con-
 
 §§ 730-732 LACHES 675 
 
 struction of the patent was sufficient reason for not bringing other suits for 
 infringement until the patent should be finally adjudicated. — U. S. Mitis 
 V. Detroit, 122 Fed. 863 ; 59 C. C. A. 589. 
 
 Edison v. Sawyer, 53 Fed. 592; Taylor v. Sawyer. 75 Fed. 301; New York v, 
 Loomis, 91 Fed. 421; Stears-Roger v. Brown, 114 Fed. 939. 
 
 § 730. Injunction. 
 
 Where there was a delay of seventeen years nearly and no explanation was 
 made, such laches would disentitle complainant to a preliminary injunction. 
 
 — Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 772. 
 McLaughlin v. People's, 21 Fed. 574; American v. Chicago, 41 Fed 522- Keyes 
 
 V. Pueblo. 31 Fed. 560: Root v. Railway, 105 U. S. 189; Clark v. Wooster 119 
 U. S. 322; Lane v. Locke, 150 U. S. 193. 
 
 For full list of cases on this subject see Injunction — Grounds for Re/using 
 
 — Laches, § 568. 
 
 § 731. Reissue. 
 
 Even if the patentee had the right to a reissue if applied for in seasonable 
 time, he had lost it bv his lachec and unreasonable delay. — Johnson v. 
 Flusliing, 105 U. S. 539; 26 L. Ed. 1162. 
 
 Miller V. Brass Co. 104 U. S. 350. 
 
 Laches in obtaining reissue. — Wollensak v. Sargent, 151 U. S. 221; 38 
 L. Ed. 137; 14 S. Ct. 291. 
 
 For full list of cases on this subject see Reissue — Delay, §§ 875-9. 
 
 § 732. Miscellaneous Rulings. 
 
 Delav of twelve years raises laches. — Lane v. Locke, 150 U. S. 193: 37 
 L.Ed. 1049; 14S.Ct. 78. 
 
 Reasonable diligence as well as good faith are necessary to call into opera- 
 tion the powers of a court of equity. — Woodmansee v. Williams, 68 Fed, 
 489; 15 C. C. A. 520. 
 
 Maxwell v. Kennedy. 8 How. 222; Kittle r. Hall, 29 Fed. 511; Piatt v. Vattier, 
 9 Pet. 416; Leggett v. Oil, 149 U. S. 288: McLaughlin v. Railway, 21 Fed. 574; 
 Speidel v. Henrici, 15 Fed. 7.53; The Walter M. Fleming, 9 Fed. 474: Lewis v. 
 Chapman, 3 Beav. 133; Lane v. Locke, 150 U. S. 193; Keyes v. Mining, 158 U. 
 
 S. 772. 
 
 The infringement not benig evident either from the name or character of 
 the article, and neither complai lant nor its assignor having actual knowledge 
 of it, although the article v^'as sold for years, does not constitute laches to 
 prevent recovery by accounting. — Imperial v. Stein, 77 Fed. 612; 23 C. 
 C. A. 353. 
 
 This suit was brought about two and one-half months before the expiration 
 of the patent, and after the extensive and expensive manufacture of Appleby 
 machines had progressed at an increasingly active rate within the coni- 
 plainant's knowledge and observation for about 14 years. All the adjudged 
 cases in regard to laches proceed upon the inequitable conduct of the com- 
 plainant, and the inequity which would result if the stale claim was permitted 
 to be enforced, and the judgments adverse to the complainant are founded 
 upon the fact that the party to whom the laches is imputed has all the time 
 " knowledge of his rights, and an ample opportunity to establish them in
 
 676 
 
 THE FIXED LAW OF PATENTS 
 
 §§ 733-734 
 
 the proper forum ; that, by reason of his delay, the adverse party had good 
 reason to believe that the alleged rights arc worthless or had been abandoned; 
 and that; because of the change in conditions or relations during this period 
 of delay, it would be an injustice to the latter to permit him to now assert 
 them." A further reference to the cited cases is unnecessary, as Judge Coxe 
 has cited many of them in his opinion (82 Fed. 95). — Richardson v. Osborne, 
 93 Fed. 828; 36 C. C. A. 610o 
 
 LAW ACTIONS 
 
 General Statement § 733 
 X)ire>iing Verdict § 734 
 Findmgs § 735 
 Instructions § 736 
 JMiscelianeous Rules § 737 
 
 See — Appeals §§ 131-2; Damages 
 
 § 285; Defenses § 306; Evidence §§ 
 401-6; hifringement § 492; JuriscLc- 
 tion § 713; Pleading and Practice § 
 788 
 
 § 733- General Statement. 
 
 The subject of Jurisdiction has been considered under that title, and Sec. 
 491C need not be here repeated. Under the old practice, prior to the revision 
 of the Patent Act in 1870-1872, action on the caca was the common method 
 of procedure. At the present time law actions arc rare except in the Ninth 
 Circuit. Where there is no ground for equitable relief, with the present rules 
 as to damages, and in the absence of a very clear measure of damages — 
 making the computation little more than a simple problem in arithmetic — 
 a law act, on is well-nigh futile. It is, furthermore, the observation of the 
 writer that the submission of facts in a patent case to a jury is a most 
 hazardous proceeding. It is not possible, under our jury system, to obtain 
 a panel of scientific men. 
 
 § 734. Directing Verdict. 
 
 The courts of the United States have no power to order a peremptory 
 nonsuit, against the will of the plaintiff. — Silsby v. Foote, 14 How. 218; 
 14 L. Ed. 394. 
 
 Doe V. Grymes, 1 Pet. 469; D'Wolf v. Raband, 1 Pet. 476: Cram v. Morris, 
 6 Pet. 598. 
 
 Where it is entirely clear that the plaintiff cannot recover, it is proper 
 to give such a direction, but not otherwise. — Klein v. Russell, 86 U. S. 433; 
 22 L. Ed. 116. 
 
 _ In our opinion this was a question of fact properly to be left for determina- 
 tion to the jury, under suitable instructions from the court upon the rules of 
 law, which should guide them to their verdict. And there was evidence upon 
 both sides of the issue sufficient to require that it should be weighed and 
 considered by the jury in determination of the question; and this implies 
 that, if it had been submitted to the jury and the verdict had been for the 
 plaintiffs, it would have been the duty of the court to set it aside as not sup- 
 ported by sufficient evidence. The court erred, we think, in withdrawing 
 the case from the jury as it did by directing a verdict for the defendants. — 
 Keyes v. Grant, 118 U. S. 25; 30 L. Ed. 54; 6 S. Ct. 974. 
 Randall v. Baltimore, 109 U. S. 478. 
 
 ^ A motion to direct a verdict is broad enough to cover the question of the 
 mvalidity of the patent. — May v. Juneau, 137 U. S. 408; 34 L. Ed. 729; 
 11 S. Ct. 102.
 
 §735 
 
 LAW ACTIONS 677 
 
 Brown v. Piper, 91 U. S. 37; Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 
 107 U. S. 649; Hendy v. Golden, 127 U. S. 370. 
 
 We are of opinion the court ought to have directed a verdict for tlie de- 
 fendant on the ground_ that the patent was void. - Fond Du Lac v. May, 137 
 
 ^■^ote?Bufse^e o^i'\histubVect whether s^ 
 
 Justice Blatchford is justified by the rule laid down m bilsby ^^ Foote, 14How. 
 21^?DofrGrvme^ 1 Pet. 469; D 'Wolf v. Raband, 1 Pet. 476; Cram r. Morris 6 
 Pe^'598an7c^mpare Justice Fuller's remark in Haines r McLaughlin, 13a 
 US 584 savin- " all questions of fact are exclusively for the jury to decide. 
 ?he court does not decide nor instruct you whether any device was or was 
 not an an^cipation of plaintiff's patent. The question of anticipation is 
 purely a question of fact and is exclusively for the jury to determine. 
 ^ In view of the fact that the state of the art had to be considered in this 
 case the broad statement of Justice Blatchford seems open to criticism. 
 
 Tf'upon the state of art as shown to exist by the prior patents and upon a 
 compSn of the older de^'ices with those described in the patent in suit, it 
 3d appear that the patented claims are not -vel it becomes U.e dut.y of 
 the court to so instruct the jury. - Market v. Rowley, lo5 U. b. 621, 39 
 L Ed 284 • 15 S Ct '^24. 
 
 Giant . California, 98 U. S. 126; Heald .. Rice, 104 U. S. 737; Fond Du Lac .. 
 May, 137 U. S. 396. r , • i • • f 
 
 Dissented to by Justice Brown, and rightly too, as I think, in view of 
 Battin V. Taggart, 58 U. S. 74; Bischoff v. \\etherhead, /6 U. &. 81- 
 
 \nd if therefore, the construction of plaintiff's patent was for the deter- 
 mmattn of the court, either on the face of the l-t-jt. - on the fac^^ 
 
 s^cIm irt^ss^.:s '^^^ttisiz f ^t srji: of 
 £roij;?s^js^atSJiu?:,r^Jj= 
 
 11 C. C. A. 355. 
 
 Th. Inw i^ now well settled that the trial court not only has the power, 
 defendant. - Overweight v. Improved, 94 Fed. 15o, 36 L. L. A. i-o. 
 
 The question of invention is ordinarily. for the jul^^ ^n teltters patnt 
 tion of the court concerning the construction to ^e Put on the etter. pa^^^ 
 
 require the submission of the question of invention to the jury. 
 
 May, 137 U. S. 395; Market v. Rowley, 155 U. &. b^i. 
 
 S 735. Findings. 
 
 In a suit at law where evidence was taken and the question of mfrmgement 
 
 ;-r-lr^a:rrsu^i::"rsrr^^^^
 
 678 THE FIXED LAW OF PATENTS §§ 736-737 
 
 Upon a special finding upon different issues, if judgment has been given in 
 favor of the defendant, if the finding on one issue is unassailable, no error 
 of law or fact in respect to another issue can be deemed harmful. — Keene v. 
 Barratt, 100 Fed. 590; 40 C. C. A. 571. 
 
 § 736. Instructions. 
 
 It is not error to refuse to instruct as to an abstract question, and instruc- 
 tions should never be given upon hypothetical statements of fact, of which 
 there is no evidence. — Haines v. McLaughlin^ 135 U. S. 584; 22 L. Ed. 
 241; 10 S. Ct. 876. 
 
 Where the court stated the facts as shown by the evidence as to an anticipa- 
 ting device, and then left the matter wholly to them, there was no error. — 
 Haines v. McLaughhn, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. - 
 
 Eastern v. Hope, 95 U. S. 297. 
 
 A statement by the court to the jury which is immaterial, if it is justified 
 in the course of the trial, will not be regarded on appeal. — Haines v. Mc- 
 Laughlin, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. 
 
 At the trial in the court below, the presiding judge read to the jury, as 
 a part of his charge, an extract from the opinion of Judge Colt in McDonald v. 
 Whitney, 24 Fed. 600. Defendants excepted. We are of opinion that this 
 action of the court below was erroneous, and that the exception was well 
 taken. The case read from was a suit between different parties on the same 
 patent. In the extract read to the jury. Judge Colt gave his views upon the 
 questions of law and fact involved. Upon these issues the finding of another 
 tribunal in a case between other parties was not competent evidence, and 
 should not have been called to the attention of the jury. — Arey v. De 
 Loriea, 55 Fed. 323; 5 C. C. A. 116. 
 
 It was the duty of the court to define the patented invention as the same 
 was expressed in the language of the claim. — Holmes v. Truman, 67 Fed. 
 542; 14 C. C. A. 517. 
 
 Rob. Pat. p. 378. 
 
 § 737. Miscellaneous Rules. 
 
 During opening, and before any evidence was taken, a juror became ill. 
 The court called and swore a new juror. On exception, held that as such was 
 the practice in the state where the circuit was held, and as it was a case 
 where no serious injury could result, it was in the discretion of the court. — 
 Silsby V. Foote, 14 How. 218; 14 L. Ed. 394. 
 
 When the essence of an alleged infringing machine is not in dispute, so 
 that the question of infringement by it turns so plainly on the true construc- 
 tion of the patent alleged to be infringed that such construction being ascer- 
 tained or not in dispute, a verdict in one direction ought to be set aside as 
 against the weight of evidence, then, under the rule as now understood, the 
 court ought to direct a verdict in the other direction ; and under such cir- 
 cumstances, the issue of infringement is essentially the same as that of the 
 construction of the patent in suit. — DeLoriea v. Whitney, 63 Fed. 611; 
 lie. C. A. ,35,5. 
 
 The action was on contract. The court directed non-suit on the ground that 
 the claims of the patents in suit, in view of the prior art, could not be con-
 
 §738 , LETTERS PATENT 679 
 
 strued to cover defendant's acts. Held: The present case is at law, and the 
 question is not one of equity but of strict contract right. The contract is 
 exphcit, and, in our opinion, excludes any enquiry into the pnor art tor the 
 purpose of limiting the scope of the patent. — Leslie v. Standard, 98 l^ed. 
 827; 39C. C. A. 314. 
 
 LETTEKS PATENT. 
 
 Statutory Requirements § 738 
 General Statement § 739 
 Construction § 740 
 Contract Theory § 741 
 Defective § 742 
 Definition § 743 
 Monopoly § 744 
 Nature of Grant § 745 
 Property Rights in § 746 
 
 Scope § 747 
 
 Miscellaneous Decisions § 748 
 See — Assignment § 149; Copartner- 
 ship § 270; Joint Invention § 704; 
 License § 749; Licensor and Licensee 
 § 765; Reissue § 869; Royalties § 
 897; Title § 925; Unpatented Invent 
 tions § 930 
 
 § 738. Statutory Requirements. 
 
 The seal heretofore provided for the Patent Office shall be the seal of the 
 Office, with which letters patent and papers issued from the Office shall be 
 authenticated. R. S. 478. 
 
 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 Commissioner 
 of Patents, and thev shall be recorded, together with the specifications, in 
 the Patent Office in books to be kept for that purpose. K. b. 4883. 
 
 Every patent shall contain a short title or description of the invention 
 or discovery, correctlv indicating its nature and design, and a grant to the 
 patentee, his heirs or assigns, for the term of seventeen years, of the exclusive 
 mht to make, use, and vend the invention or discovery throughout the 
 United States and the Territories thereof, referring to the specffications tor 
 the particulars thereof. A copy of the specifications and drawings shall be 
 affixed to the patent and be a part thereof. R. b. 4884. 
 
 Every patent shall issue within a period of three months from the date 
 of the payment of the final fee, which fee shall be paid not later than six 
 months from the time at which the application was passed and allowed and 
 notice thereof was sent to the applicant or his agent ; and if the final fee 
 is not paid within that period the patent shall be withheld. R. S. 4S8o as 
 amended May 23, 1908. 
 
 As thus amended the section differs materially from the section as origi- 
 nally enacted July 8, 1870. The section as affecting all patents issued prior 
 to May 23, 1908, read as follows: . 
 
 Every patent shall bear date as of a day not later than six months from 
 the time at which it was passed and allowed and notice thereof was sent to 
 the applicant or his agent; and if the final fee is not paid within that period 
 the patent shall be withheld. _ , , ,, • ? .u„ 
 
 Patents may be granted and issued or reissued to the assignee of the 
 inventor or discoverer; but the assignment must first be entered of record 
 in the Patent Office. And in all cases of an application by an assignee for 
 the issue of a patent, the application shall be made and the specification sworn 
 to bv the inventor or discoverer; and in all cases of an application for a 
 reissue of any patent, the appHcation must be made and the c^orrected spe^cv- 
 ficat ion sic-ned by the inventor or discoverer, if he IS living, * ■ * K. b. 4895.
 
 g80 THE FIXED LAW OF PATENT^ §§ 739-742 
 
 As provided by Sec. 4896, the representative of a deceased inventor or an 
 insane inventor may make the necessary appHcation. 
 
 § 739. General Statement. 
 
 It is unnecessary to enter upon the refinements that have been made to 
 establish the so-called " contract theory," or the distinction between a patent 
 and a crown monopoly, or even the distinction between a patent for an in- 
 vention and a patent for land. This is certain : The patent for an invention 
 is a grant which exists only by reason of the Constitution and the acts of 
 Congress. Every right and every ruling must, therefore, root back in the 
 statute. This principle is fundamental. Again, this we know to be tlie fact: 
 Whether the contract theory applies or not, the practical question in deter- 
 mining whether the inventor has performed his part is whether he has com- 
 plied with the terms of the statute. 
 
 § 740. Construction. 
 
 The letters patent need not contain a recital that all prerequisites to the 
 grant have been complied with. — Railroad v. Stimpson, 14 Pet. 448; 10 
 L. Ed. 535. 
 
 The character and purpose of the specification as compared with the 
 English system. — Hogg v. Emerson, 6 HoWo 437 ; 12 L. Ed. 505. 
 
 It is not, of course, doubted that the courts in construing the patent as all 
 other statutes, must have regard to the spirit as well as the letter. That 
 simply requires that the courts shall ascertain their true meaning, but when 
 this is ascertained the applicant for a patent is entitled to all the benefits 
 which these statutes thus construed give. — United States v. Am. Bell, 
 167 U. S. 224; 42 L. Ed. 144; 17 S. Ct. 809. 
 
 § 741. Contract Theory. 
 
 The legislation based on the provision (Const. Art I, sec. 8) regards the right 
 of property in the inventor as the medium of the public advantage derived 
 from his invention; so that in every grant of the limited monopoly two 
 interests are involved, that of the public, who are the grantors, and that of 
 the patentee. There are thus two parties to any application for a patent, and 
 more, when, as in case of interfering claim or patents, other private interests 
 compete for preference. The questions of fact arising in this field find their 
 answers in every department of physical science, in every branch of mechani- 
 cal art ; the questions of law, necessary to be applied in the settlement of this 
 class of public and private rights, have founded a special branch of technical 
 jurisprudence. — Butterworth v. Hoe, 112 U. S. 50; 28 L. Ed. 656; 5 S. Ct. 25. 
 
 A patent is a contract by which the Government secures to the patentee 
 the exclusive right to vend and use his invention for a few years, in consider- 
 ation of the fact he has perfected and described it and has granted its use to 
 the public forever after. The general rules for the interpretation of grants 
 and contracts govern its construction. — National v. Interchangeable, 106 
 Fed. 693; 45 C. C. A. 544. 
 
 § 742, Defective. 
 
 In this case the patent was issued in the regular process of business. Sub- 
 sequently and after infringement and after this suit was brought, it was 
 discovered that the signature of the acting or assistant Secretary of the 
 Interior had, by accident, been omitted. This defect was sought to be cured
 
 §§ 743-744 LETTERS PATENT 681 
 
 by having the signature supplied by the secretary who had been succeeded 
 in that office. The defense had left complainant to his proofs as to the grant 
 of the letters, and therefore set up the defense that the patent was invalid. 
 Held, that such error defeated the patent ; that the same might be remedied 
 by proper proceeding, but not by having the signature supplied; that no 
 recovery for infringement prior to the correction could be had, and that 
 under correction the grant could not relate back to the date of its issue. — 
 Marsh v. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168. 
 
 Note: While it is not the author's purpose to criticise the decisions of the 
 great court at Washington, it would seem, that if the court had considered the 
 fact of notice which the issue and record of the grant gave, and the fact that 
 the defendant was a tort feasor, trespassing under such notice, it should have 
 held that, notwithstanding the general rule, the defendant was estopped to 
 question the regularity of the method by which the error was corrected. 
 
 A mistake in issuance cannot be corrected by supplying the omitted signa- 
 ture after issue, and certainly not after such officer had gone out of office. — 
 Marsh v. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 St. 168, 
 
 Where the defect in the patent is apparent on its face, it may be attacked 
 without special pleading setting up the specific acts which defeat the instru- 
 ment. — Marsh v. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168. 
 
 Eureka v. Bailey, 78 U. S. 492. 
 
 The patent, as originally issued being in every respect a regularly executed 
 document, and the statute providing for no subsequent alteration thereof by 
 the patent office (except in cases of reissue, which this is not) the action of 
 the commissioner in endorsing it with an attempted " correction," was 
 without jurisdiction and wholly void. — Edison v. U. S. 52 Fed. 300; 3 
 C. C. A. 83. 
 
 § 743. Definition. 
 
 The meaning of the words " patent " and " patented " as used in section 
 4887, is not difficult to ascertain. The word " patent," originally a qualifying 
 adjective applied to the " open letters " by which a sovereign grants an estate 
 or privilege, has come to mean, in connection with the so-called patent laws 
 of the United States, as well as in common parlance, the exclusive privilege 
 itself granted by the sovereign authority to an inventor with respect to his 
 invention. What the nature and extent of the exclusive pi-ivilege thus 
 granted by the constitution and laws of the United States may be, depends 
 upon the terms of the act of Congress providing for and regulating the same ; 
 and, when this section 4887 speaks of an invention which has been previously 
 patented in a foreign country, it obviously means an invention with respect 
 to which the inventor has received from the sovereign authority of such 
 country such exclusive privilege as its laws provide for or sanction. — Atlas 
 V. Simonds, 102 Fed. 643; 42 C. C. A. 398. 
 
 § 744. Monopoly. 
 
 His exclusive right does not rest alone upon his discovery, but also upon 
 the legal sanctions which have been given to it, and the forms of law with 
 which it has been clothed. — Shaw v. Cooper, 7 Pet. 292 ; 8 L. Ed. 689. 
 
 The entire question of a monopoly founded upon a patent or a series of 
 patents in relation to recent federal legislation against restraint of commerce 
 and trade has been so fully reviewed by the Supreme Court in the Harrow
 
 682 THE FIXED LAW OF PATENTS § 744 
 
 Case that to excerpt from it would result in quoting substantially the entire 
 opinion. A few of the salient points of that case may be summarized: 
 
 1. That the findings of a state court in an equity suit are conclusive upon 
 the Supreme Court. 
 
 2. That the Act of July 2, 1890, may be set up as a defense by an in- 
 dividual. 
 
 3. That ordinarily, restrictive provisions in the license or sale of a patent 
 are not in contravention of that act. 
 
 4. That the owner of a patent may sell, keep, use, license, or refuse to 
 use a patent, as he pleases ; this the monopoly grants. 
 
 5. That a state has the right to regulate its internal affairs, including the 
 manufacture, use, or sale of an article subject to a patent. 
 
 6. That common carriers employing patented means in its business must 
 recognize the paramountcy of their duties under their franchises, and cannot 
 make a patent monopoly, if used, a means for the evasion of duty to the 
 public. 
 
 7. That notwithstanding these limitations (5 and 6), the general rule is 
 absolute freedom in use, sale, or license; since the patent is a monopoly 
 created under the constitution and statute in contravention of the common- 
 law right. 
 
 8. That reasonable and legal conditions and restrictions put upon an 
 assignee or licensee are not within the purview of the interstate commerce 
 act. 
 
 9. That license or sale conditions fixing prices of a patented article are 
 not in violation of that act. 
 
 It is believed that the fundamental principle underlying this decision and 
 the others quoted from in this section is this: When the essence of the act 
 resides within the monopoly of the patent, such act is a conceded, limited 
 privilege ; when the essence of the act resides without the monopoly of the 
 patent, and the monopoly of the patent is made a cover for combinations 
 and machinations contrary to law, the patent grant will not avail the wrong- 
 doer. — Bement v. National, 186 U. S. 70; 46 L. Ed. 1058; 22 S. Ct. 747. 
 
 It is manifest, as well from the contract as from the proofs outside of it, 
 that the purpose of the parties was to form a combination between the various 
 manufacturers to prevent competition in business and enhance prices. The 
 corporation provided to hold the legal title of the several patents, is merely an 
 instrument to effect this object. The fact that the property involved is 
 covered by letters patent is urged as a justification; but we do not see how 
 any importance can be attributed to this fact. Patents confer a monopoly 
 as respects the property covered by them, but they confer no right upon 
 the owners of several distinct patents to combine for the purpose of restrain- 
 ing competition and trade. Patented property does not differ in this respect 
 from any other. The fact that one patentee may possess himself of several 
 patents, and thus increase his monopoly, affords no support for an argument 
 in favor of a combination by several distinct owners of such property to 
 restrain manufacture, control sales and enhance prices. Such combinations 
 are conspiracies against the public interests, and abuses of patent privileges. 
 The object of these privileges is to promote the public benefit, as well as to 
 reward inventors. The suggestion that the contract is justified by the situa- 
 tion of the parties — their exposure to litigation — is entitled to no greater 
 weight. Patentees may compose their differences, as the owners of other 
 property may, but they cannot make the occasion an excuse or cloak for the 
 creation of monopolies to the public disadvantage. — National v. Hench, 83 
 Fed. 36: 27 C. C. A. 349.
 
 J 744 LETTERS PATENT 683 
 
 T, ■ r ifii Pn «;t 47'^- Ciibon Co. v. MrMillin, 119 N. Y. 46; 
 ZTl °Ba«ry"l8'pa.'ll mfmSBg'.'people, 41 N. E. 188; National .. 
 Quick, 67 Fed. 130. 
 
 Griffin, 126 Fed. 364; 61 C. C. A. 334. 
 
 ;:St„"his'irveT^VcuUies,he wU, reata 
 
 he has already invented. - American ». Pungs, 141 tea. J-i, /a '^ 
 
 '^Harrison «. Glucose, 116 Fed. 304; Morse .. Morse, 103 Mass. 73. . 
 
 That an article which is the product of a patent is -t - ordinary article 
 of commerce, see - Indiana v. Case, 154 Fed. 36o, 83 C. t. A. 34d. 
 
 The rule in U. S. Bell Tel. Co. 167 U. S. 224, followed. - Indiana .. Case, 
 154 Fed. 365; 83 C. C. A. 343. 
 
 Congress ha^dng created the patent law, has t^e right to ^epe|^o^^^^^^ 
 it, in whole or in part, directly or by --^^^^^^,"^3 3^ 
 contains no reference to the Patent law^ Each ^^as passed ^ professed to 
 and distinct constitutional grant of P.^J^ J.' ^f '^ j^ ^ot one iota was taken 
 advantage the public; ^he necessary imj^hcationin n^^^^ 
 
 away from the patent law ; f/.^^^/^^^^^^^^^^ the dominion 
 
 unless or until they are released by the o™r 01 tnepai^^ ^^^^^^^^ 
 
 of his monopoly, are not articles of trade or ^^mmej^e am g 
 states. — Rubber Tire v. Milwaukee, 154 l^ed. d5», ^6 v.. v.. 
 
 The only grant to the patentee was the right to e-f ^e oto^^^^^^^^ and 
 to hold for himself and his assigns a monopo^, not ^ [^|ht Jmited^ 
 ditioned according to the sentiment o^.^^f es^Xrs Over and above an 
 constitutionally conferred by the ««^'«^^V^^",^l^™^f l' f ^te unlau^ul 
 absolute monopoly created by lf^;];^^J^"^4j!^fhe sole Ser of Grant tires, 
 monopoly in the same thing? If P.^^^^^f/^,^' ^A't fniur^^he people, deprive 
 how could plaintiff's control of prices and output ^^J^^^;*'^"^^^^^ or de- 
 
 C. C. A. 336.
 
 684 THE FIXED LAW OF PATENTS § 745 
 
 The right of an owner of a patent to reserve to himself as a part of his 
 monopoly the control of the price at which dealers may sell the patented 
 product to users is unquestioned. — The Fair v. Dover, 166 Fed. 117; 
 C. C. A. 
 
 Victor i;. The Fair, 123 Fed. 424; Fuller v. Berger, 120 Fed. 274; Rubber Tire 
 V. Milwaukee, 154 Fed. 358; Indiana v. Case, 154 Fed. 365; Continental v East- 
 ern, 210 U. S. 405; Bobbs-Merrill v. Straus, 210 U. S. 339; Globe v. Walker, 210 
 U. S. 356. 
 
 § 745. Nature of Grant. 
 
 Letters patent are not to be regarded as monopolies, created by the 
 executive authority at the expense and to the prejudice of all the community 
 except the persons therein named as patentees, but as public franchises 
 granted to the inventor of new and useful improvements for the purpose of 
 securing to others as such inventors, for the limited term therein mentioned, 
 the exclusive right and liberty to make and use and vend to others 
 to be used their own inventions, as tending to promote the progress 
 of science and the useful arts, and as matter of compensation to the inventors 
 for their labor, toil and expense in making the inventions, and reducing the 
 same to practice for the public benefit, as contemplated by the Constitution 
 and sanctioned by the laws of Congress. — Seymour v. Osborne, 78 U. S. 
 516; 20 L. Ed. 33. 
 
 The authority by which the patent issues is that of the United States of 
 America. The seal which is used is the seal of the Patent Office, and that was 
 created by Congressional enactment. It is signed by the Secretary of the 
 Interior, and the Commissioner of Patents, who also countersigns it, is an 
 officer of that Department. The patent, then, is not the exercise of any prerog- 
 ative power or discretion by the President, or by any other officer of th3 
 Government, but it is the result of a course of proceeding, quasi judicial in its 
 character, and is not subject to be repealed or revoked by the President, the 
 Secretary of the Interior, or the Commissioner of Patents, when once issued. 
 — United States v. Am. Bell, 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 U. S. V. Schurz, 102 U. S. 378. 
 
 Charters and patents authenticating grants of personal privileges were in 
 the earlier days of the English Government made by the Crown. They were 
 supposed to emanate directly from the King, and were not issued under any 
 authority given by Acts of Parliament, nor were they regulated by any 
 statutes. Being, therefore, in their origin an exercise of his personal preroga- 
 tive, the power of working them, so far as they could be worked at all, was 
 in the King, and was exercised by him as a personal privilege. But whatever 
 may have been the course of procedure in English jurisprudence, it can have 
 but httle force in limiting or restraining the measures by which the govern- 
 ment of the United States shall have a remedy for an imposition upon it 
 or Its officers in the procurement or issue of a patent. We have no King in 
 this country; we have had no prerogative right of the Crown; and letters 
 patent whether for inventions or for grants of land, issue not from the Presi- 
 dent, but from the United States. The President has no prerogative in the 
 matter. He has no right to issue a patent, and, though it is the custom for 
 patents for lands to be signed by him, they are of no avail until the proper 
 seal of the Government is affixed to them. Indeed, a recent Act authorizes 
 the appomtment of a clerk for the special purpose of signing the President's 
 name to patents of that character. And so far as patents for inventions are 
 concerned, smce the Act of 1870, they are issued without his signature and
 
 § 746 LETTERS PATENT 685 
 
 without his name or his style of office being ^^^^^tioned in them. - United 
 States V. Am. Bell, 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 The monopoly thus granted is one entire thing and cannot be divided into 
 parts except as authorized by law. - Waterman v. Mackenzie, 138 U. b. 
 252; 34 L.Ed. 923; 11 S. Ct. 334. 
 
 Compared with Patents for Land, see United States v. Am. BeU, 167 U. 
 S. 224, and cases cited; 42 L. Ed. 144; 17 S. Ct. 809. 
 
 The cases declare that he receives nothing from the law that he did not have 
 before and that the only effect of the patent is to restram others from manu- 
 fad^ir ng and using that which he has patented. Wherever this court has 
 had occasion to speak, it has decided that an inventor receives from a pa ent 
 the right to exclude others from its use for the time prescribed by tl.e statute. 
 - Continental v. Eastern, 210 U. S. 405; 51 L. Ed. 922; 28 S Ct ,48. 
 
 p^^t ,. Rnllwnv 105 U S 189- U. S. V. Bell Telephone, 167 U. S. 224; Grant 
 . Raviioifd rfe 24^^^ McQuewan, 14 How. 539; Patterson .. 
 
 KeSv 97 U S 501; WUson .. Rousseau, 4 How. 646; Seymour ^;. Osborne 
 U Wall 516; Cammeyer v. Newton, 94 U. S. 225; Densmore .. f^ofield, 102 
 U S 375; Bement i;. National, 186 U. S. 70; Heaton v. Eureka, 77 Fed. 294, 
 Hoe V. Knapp, 27 Fed. 204. 
 
 Under its constitutional right to legislate for the promotion of the useful 
 art., Congress passed the patent statutes. The public po icy hereby declaed 
 is this: Inventive minds may fail to produce many useful things that the^ 
 would produce if stimulated by the promise of a substantial reward; what is 
 prod iced is the property of the inventor; he and his heirs and assignees may 
 K n.s a secret till the end of time; the public would be largely benefied 
 bv obtaining conveyances of these new commodities; so the people thiough 
 theii ilpresentatives say to the inventor : Deed us your proper y, possession 
 to be y e ded at the end of 17 vears, and in the mean time we will protect you 
 absolutely in the right to exclude everyone from making, using, or vending 
 the thii7patented, without your permission. Congress put no imitations, 
 excepthig time, upmi the monopoly. Courts can create none without legis- 
 S n^ The monopoly is of the iAvention. the mental concept as distinguished 
 f?om the materials that are brought together t. give J a boc^ Use of th 
 materials may be enjoined as in urious to the public; but that does not inv ade 
 Jhe monopoly. Use of the invention cannot be had except on the inventor s 
 tSrm^ Xh^out pajdng or doing whatever he exacts, no one can be exempted 
 fr^m his ri-ht to exclude. Whatever the terms, courts wil enforce them, 
 provided only that the licensee is not thereby required to violate some law 
 outside of the patent law, hke the doing of murder or arson. Does 
 the equirement ^that the licensee join other icensees in a combina- 
 tion o^iool to control the prices and output of an innociious patented 
 «rt?ple V olate the Sherman law? We cannot dispose of the question on 
 ttettho rity of Bement .. National, 186 US. 70 for according to our 
 reading the question was expressly excepted from the decision. - Rubber 
 Tirei^.Milwaukee, 154Fed.358; 83C.C.A.336. , ^ ^^, ^ 
 
 Bloomer .. McQuewan. 14 How. 539; U. S. .BeU Tel- 167 US. 224 Bement 
 V National, 186 U. S. 70; Good ^. Deland, 121 N. Y. 1' f ^^^erji- ^pd 730 
 Fed. 274; Victor t;. The Fair, 123 Fed. 424; Rupp v. EUiott, 131 l^ed. 7dU. 
 
 § 746. Property Rights in. 
 
 Inventions secured by letters patent are property in the holder of the 
 patent, and as such are as much entitled to protection as any other property 
 ?oS ng of a franchise, during the time for which the franchise or the
 
 6g6 THE FIXED LAW OF PATENTS § 746 
 
 exclusive right is granted. — Seymour v. Osborne, 78 U. S. 51G; 20 L. Ed. 
 33. 
 
 Right of parties with reference to a patented invention will be construed 
 accor'ding to the act under which the patent was granted. — Brown v. Piper, 
 91 U. S. 37; 23 L. Ed. 200. 
 
 The right of property in a patented invention is as much entitled to pro- 
 tection as any other right. — Cammeyer v. Newton, 94 U. S. 225; 24 L. 
 Ed. 72. 
 
 Seymour v. Osborne, 11 Wall. 516; 16 St. at L. 201. 
 
 Patents rightfully issued are property, and are surrounded by the same 
 rights and sanctions which attend all other property. Patentees as a class 
 are public benefactors, and their rights should be protected. But the public 
 has rights also. The rights of both should be upheld and enforced by an 
 equally firm hand, wherever they come under judicial consideration. — Dens- 
 more V. Scofield, 102 U. S. 375; 26 L. Ed. 214. 
 
 The property right of a patentee is, after all, but a property right, and 
 subject as is all other property, to the general law of the land. We may also 
 concede that contracts respecting the use of inventions and discoveries are, 
 like all other contracts, subject to the hmitations imposed by definite prin- 
 ciples of pubhc policy. 
 
 Neither the patentee, nor the machine involving his invention, nor a license 
 for use, can be exempted from the liabilities and regulations which, in public 
 interest, attach to all persons and property under the general law of the 
 land. Neither is the right to make or sell or use a patented invention or 
 process free from the restraints imposed by the police power in the states. 
 — Heaton v. Eureka, 77 Fed. 288; 25 C. C. A. 267. 
 
 Missouri V. Bell Tel. Co., 23 Fed. 539; State v. Delaware, 47 Fed. 633; State v. 
 Delaware, 50 Fed. 677; Patterson v. Kentucky, 97 U. S. 501; Vasuini v. Paine, 
 1 Har. 65; Registering Co. v. Sampson, L. R. 19 Eq, 462. 
 
 If he see fit, he may reserve to himself the exclusive use of his invention 
 or discovery. If he will neither use his device, nor permit others to use it, 
 he has but suppressed his own. That the grant is made upon the reasonable 
 expectation that he will either put his invention to practical use, or permit 
 others to avail themselves of it upon reasonable terms, is doubtless true. 
 This expectation is based alone upon the supposition that the patentee's 
 interest will induce him to use, or let others use, his invention. The public 
 has retained no other security to enforce such expectations. A suppression 
 can endure but for the life of the patent, and the disclosure he has made will 
 enable all to enjoy the fruit of his genius. His title is exclusive and so clearly 
 within the constitutional provisions in respect of private property that he 
 is neither bound to use his discovery himself, nor permit others to use it. 
 The dictum found in Hoe v. Knapp, 27 Fed. 204, is not supported by reason or 
 authority. — Heaton v. Eureka, 77 Fed. 288; 25 C. C. A. 267. 
 
 Wilson V. Rousseau, 4 How. 674; Pitts v. Wemple, Fed. Cas. No. 11,194; 
 Grant v. Raymond, 6 Pet. 218; U. S. v. Bell Tel. 29 Fed. 17; Consolidated v. 
 Coombs, 39 Fed. 805; Campbell v. Manhattan, 49 Fed. 935. 
 
 Whether his patent be good or bad, no one has the right to claim the 
 privilege of making and selling his goods as though made under it and there- 
 by depriving the owner of such credit as belongs to it, and inducing the pul)lic 
 to suppose that the seller has title to the invention supposed to be embodied 
 in the subject of the sale. — Stimpson v. Stimpson, 104 Fed. 893; 44 C. C. 
 A. 241.
 
 §§ 747-748 
 
 LICENSE 
 
 687 
 
 § 747. Scope of. 
 
 It was authoritatively declared in James v. Campbell, 104 U. S. 356, that 
 the right of the patentee was exclusive of the government as well as of all 
 others. — Hollister v. Benedict, 113 U. S. 59; 28 L. Ed. 901; 5 S. Ct. 717. 
 
 The inventor's right to make, use, and vend his device does not come from 
 the patent law; it is his natural right. The government's grant to the 
 patentee and his assigns is the right to exclude others from practising the 
 invention. As Mr. Chief Justice Taney said in Boomer v. McQuewan, 14 
 How. 539: " The franchise which the patent grants consists altogether in 
 the right to exclude every one from making, using or vending the thing 
 patented, without permission of the patentee. This is all he obtains by the 
 patent." — Fuller v. Berger, 120 Fed. 274; 56 C. C. A. 588. 
 
 § 748. Miscellaneous Decisions. 
 
 Delivery is not necessary to the validity of letters patent. 
 Madison, 1 Cranch, 137; 2 L. Ed. 60. 
 
 Marbury v. 
 
 Power to grant letters patent is conferred by law upon the Commissioner 
 of Patents, and when that power has been lawfully exercised, and a patent 
 has been duly granted, it is of itself prima facie evidence that the patentee is 
 the original and first inventor of that which is therein described and secured 
 to him as his invention. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 The power therefore, (in view of Art. 4, sec. 3, par. 2) to issue a patent for 
 an invention, and the authority to issue such an instrument for a grant of 
 land, emanate from the same source, and although "exercised by different 
 bureaux or officers under the Government, are of the same nature, character 
 and validity, and imply in each case the exercise of the power of government 
 according to modes regulated by Acts of Congress. — United States v. Am. 
 Bell, 128 U. S. 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 The full six months are allowed by the statute to the applicant, and it 
 can hardly be supposed that Congress intended that this period could be cut 
 short by the exigencies of the Patent Office. Again, the statute declares 
 that, if the final fee is not paid within the six months, the patent shall be with- 
 held, but it does not declare that, if not dated as directed, the patent shall 
 not issue, or, if issued, shall be void. — Western v. North, 135 Fed. 79; 67 
 C. C. A. 553. 
 
 LICENSE. 
 
 Statutory Provision § 749 
 
 General Distinction from Assignment 
 
 § 750 
 
 Assignment § 751 {see § 149) 
 
 Construction of § 752 
 
 Contract § 753 
 
 Estoppel § 754 (see § 381) 
 
 P'orfeiture § 755 
 
 Implied § 756 
 
 Machine § 757 (see § 768) 
 
 Non-Assisrnaljle § 758 
 
 Parol § 759 
 
 Royalties § 760 {see § 897) 
 
 Scope § 761 
 Termination of § 762 
 Territorial § 763 
 Miscellaneous § 764 
 See — Administrator § 40; Assign- 
 ment § 165; Copartnership § 270; 
 Corporations § 271; Damages § 292; 
 Defenses § 311; Employer and Em- 
 ployee § 366; Estoppel § 384; In- 
 fringement §§ 509-13; Injunction § 
 569; Jurisdiction § 722; Licensor 
 and Licensee § 765; Royalties § 897; 
 Sale 0} Patented Article § 899
 
 688 THE FIXED LAW OF PATENTS §§ 749-751 
 
 § 749. Statutory Provision. 
 The statute does not use the term license. By the terms of sec. 4898 
 
 Every patent or any interest therein shall be assignable in law by an in- 
 strument in writing, and the patentee or his assigns or legal representatives 
 may, in like manner, grant and convey an exclusive right under his patent to 
 the whole or any specified part of the United States. 
 
 And sec. 4899 makes the following provision as to purchase before appli- 
 cation : 
 
 Every person who purchases of the inventor or discoverer, or, with his 
 knowledge and consent, constructs any newly invented or discovered machine, 
 or other patentable article, prior to the application by the inventor or dis- 
 coverer for a patent, or who sells or uses one so constructed, shall have the 
 right to use, and vend to others to be used, the specific thing so made or pur- 
 chased, without liability therefor. 
 
 § 750. General Distinction from an Assignment. 
 
 The patentee or his assigns may, by instrument in writing, assign, grant 
 and convey, either (1) the whole patent comprising the exclusive right to 
 make, use and vend the invention throughout the United States; or, (2) 
 an undivided part or share of that exclusive right; or, (3) the exclusive right 
 under the patent within and throughout a specified part of the United States. 
 (R. S. 4898.) A transfer of either of these three kinds of interests is an assign- 
 ment properly speaking, and vests in the assignee a title in so much of the 
 patent itself, with a right to sue infringers; in the second place conjointly 
 with the assignor, in the first and third cases in the name of the assignee alone. 
 Any assignment or transfer short of one of these, is a mere license, giving the 
 licensee no title in the patent; and no right to sue at law in his own name 
 for infringement. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 
 11 S. Ct. 334. 
 
 Gayler v. Wilder, 51 U. S. 477; Moore v. Marsh, 74 U. S. 515. 
 
 § 751. Assigimient. 
 
 An assignment of a right to make, use and sell for a limited time in a 
 limited territory, in the absence of express words, does not pass to an executor 
 or administrator. — OHver v. Rumford, 109 U. S. 75; 27 L. Ed. 862; 3 
 S. Ct. 61. 
 
 Troy V. Coming, 14 How. 193. 
 
 Not assignable unless so expressed in instrument. — Lane v. Locke, 150 
 U. S. 193; 37 L. Ed. 1049; 14 S. Ct. 78. 
 
 Where a licensee assigns a license to a corporation succeeding to the 
 business and the original licensor acquiesces in or by implication ratifies the 
 transfer it is binding upon him. — Lane v. Locke, 150 U. S. 193 ; 37 L. Ed. 
 1049; 14S. Ct. 78. 
 
 Hammond v. Mason, 92 U. S. 724; Lightner v. Boston, 1 Law. Des. 338. 
 
 Distin^ishing, Hapgood v. Hewitt, 119 U. S. 226; Troy v. Corning, 55 
 U. S. 193; Oliver v. Rumford, 109 U. S. 75; Applying, McClurg v. Kingsland, 
 42 U. S. 202; Solomons v. U. S. 137 U. S. 342. 
 
 No license is assignable by the licensee to another unless it contains words 
 which show that it was intended to be assigned, — Waterman v. Shipman, 55 
 Fed. 982; 5 C. C. A. 371.
 
 §752 
 
 Fa( 
 Adams 
 
 LICENSE 689 
 
 Factory .. Corning, 14 How 193; . Rubber Co ^■Goodyear, 9 WaU: 788; 
 lams t'. Howard, 22 Fed. 656; Baldwm v. Sibley, 1 Cliff. loO. 
 
 A license to use a patented invention that does not contain words import- 
 W aiTgnabiUty is arrant of a mere personal right to the hcensee which does 
 S pasf to Seirs or representatives and wliich cannot be transferred to 
 another ll^ut the expressed consent of the Ucensor. - Bowers .. Lake 
 Suoerior, 149 Fed. 983; 79 C. C. A. 493. 
 
 Hapgood .. Hewitt, 119 U. S. 227; Oliver .. Romford, 109 U. S. 75; Troy .. 
 
 Coming, 14 How. 193 
 
 752. Construction of. 
 
 " The sole and exclusive right and license to manufacture and finountain 
 npnhnlders containing the said patented improvement throughout the United 
 iutes '' chd not Sde the right to use such penholders, at^least if manu- 
 factured by third persons, and was therefore a mere Ucense and not an assign- 
 nSofX title and did not give the .li-nsee fhe "|ht to sue abne at law 
 or in equity. — Waterman v. Mackenzie, 138 U. b. 2o2, 34 L. t.a. \)^6, li 
 
 S Ct 334. 
 Gayler v. WUder, 51 U. S. 477; Paper Bag Cases, 105 U. S. 766, 771. 
 
 An assignment which is neither an undivided interest in the ^-hole patent 
 nofof an exclusive right within a certain territory, is a mere hcense. - Pope 
 V. Gormully, 144 U. S. 298; 36 L. Ed. 420; 12 S. Ct. 637. 
 
 We are however, of opinion that tender of an executed license is not a 
 condition precedent to recovery of royalties arising from use of the Patented 
 mTcl nes By the contract the defendants agreed to pay a specified royalty 
 fT such use they, or another for them, have had the use and reaped the 
 benefi The delivery of the executed, formal Ucense m no way affected that 
 benent. ^"f "«";^ ^ , ^ { the contract a condition precedent 
 
 f f fn filCn? T^ oblSion to pay was dependent upon the use, not 
 u'r,on^ ieSi ?• TWefendan^^^^ wer^in no way injured, nor their interest 
 Xar^zed by the omission. Aside from the grant of use the licenses were 
 jeopaicuzea uy I « regulat ng and restricting the use. Ihe 
 
 '^IthlJd; Sprag'iie^a^^^^^ McClurg .. Kingsland, 1 How 202; Chabot 
 
 .. Overseaming Co. 6 Fish. 71; Hermam. .. Hermann, 29 Fed. 94. 
 
 Th.t where two Ucense agreements existed in which Ucense fees v;ere not 
 tnT,emWundeT the terms of the second Ucense except m the event of the 
 to be paid uncler tne le ^^^ ^^^^^^^ ^.^^ terminated 
 
 — Shepard v. Kinnear, 86 Fed. 638; 30 C. C. A. 315. 
 
 That a contract to be subsequently approved and signed, is invalid if 
 
 met, see — Keene v. Barratt, 100 Fed. 590, 40 C. C. A. 5/1.
 
 ggO THE FIXED LAW OF PATENTS § 753 
 
 No implied contract of license, arising from the circumstances under which 
 the patent was taken out and the relations of the parties, can be set up m the 
 face of a proved special contract. — Standard v. Arrott, 135 Fed. 750; 68 
 C. C. A. 388. 
 
 That a state statute or code provision affecting contractile relations applies 
 to Ucenses of patents, see Wilfley v. New Standard, 164 Fed. 421 ; C. C. A. 
 
 § 753. Contract. 
 
 Complainant agreed to furnish patented parts, and in event of failure, to 
 allow defendant to make. Complainant failed to furnish ; defendant made. 
 Held, that no notice from defendant was necessary and the making was not 
 infringement. — Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767. 
 
 A license contract cannot be set aside at the mere volition of the licensor 
 so that he can sue for infringement. — Burdell v. Denig, 92 U. S. 716; 23 
 L. Ed. 764. 
 
 Complainants contracted to sell to defendants certain machines upon 
 agreed terms of royalty. Defendants thereupon organized the W. P. B. Co., 
 officered by them and had the machines shipped to their company. Held: 
 that as there was no consent on the part of complainant as creditor of de- 
 fendants, the delivery of the machines to such company at the request of 
 defendants did not work novation. — American v. VanNortwick, 52 Fed. 
 752; 3 C. C. A. 274. 
 
 The contract was between complainant and defendant. It is no answer to 
 say that, in ordering the licensed machines to be delivered to their company, 
 they acted in a representative capacity. If they had personal objection to 
 such delivery, they should have made it manifest. They were silent when it 
 became them to speak. They cannot now object that the delivery, which as 
 representatives of the company, they sought and obtained, was counter to 
 their individual wishes. They are estopped. — American v. VanNortwick, 
 52 Fed. 752; 3 C. C. A. 274. 
 
 Swain v. Seamens, 9 Wall. 254; Bronson v. Chappell, 12 Wall. 681. 
 
 The right does not, however, grow out of the paper, but out of the contract, 
 of which the paper is evidence simply. — Union v. Johnson, 61 Fed. 940; 
 10 C. C. A. 176. 
 
 Walk Pat. sec. 303; Rob. Pat. sees. 806, 809; Buss v. Putney, 38 N. H. 44; 
 Potter V. Holland, 4 Blatchf. 206; Baldwin v. Sibley, 1 Cliff. 150; Jones v. Berger, 
 58 Fed. 1006. 
 
 The secret intentions of the parties cannot be injected into a written con- 
 tract to vary its terms by parol evidence. — Standard v. Leslie, 78 Fed. 325; 
 24 C. C. A. 107. 
 
 Proof of the circumstances out of which the contract grew, and which sur- 
 rounded its adoption, may be proven to ascertain its subject-matter and the 
 standpoint of the parties in relation to it, where the language of the contract 
 is obscure or doubtful; but such evidence cannot be received to vary the 
 contract by addition or substitution. — Standard v. Leslie, 78 Fed. 325; 
 24 C. C. A. 107. 
 
 West V. Smith, 101 U. S. 263; Union v. Western, 59 Fed. 49. 
 
 Grammatical rules raise only a prima facie presumption, and do not pre- 
 clude the settling of the meaning by detracting somewhat from the exactness
 
 § 754 LICENSE 691 
 
 of the language in order to give effect to more cogent reasons of another sort. 
 — Cowles V. Lowry, 79 Fed. 331 ; 24 C. C. A. 616. 
 
 C. Litt. 197 a; Justice Windham's Case, 5 Coke, 7 b; Wharton v. Fisher, 2 
 Serg. & R. 182; Williams v. Hadley, 21 Kan. 350; Judd v. Gibbs, 3 Gray, 539; 
 Von Wittberg v. Carson, 44 Conn. 289; Coffin v. Douglass, 61 Tex. 406; Shoe Co. 
 V. Ferrell, 68 Tex. 638; Bank v. Beedle, 37 Minn. 527. 
 
 The license contract contained a provision requiring the plaintiff in error 
 to " vigorously prosecute infringers of said letters patent, and to prevent as 
 far as possible all unlawful interference with the business and rights of said 
 party of the second part under and by virtue of the contract." These are 
 proper provisions, and they are not open to criticism. — U. S. Consolidated 
 V. Griffin, 126 Fed. 364; 61 C. C. A. 334. 
 
 § 754. Estoppel. 
 
 A plea of that condition, to satisfy the words " in case it should at any time 
 be judicially decided " that the patent was bad, would have to be that it 
 had been decided to that effect. It would not be enough to say that the 
 defendant thought the patent bad and would like to have the court decide 
 so now. — U. S. V. Harvey, 196 U. S. 310; 49 L. Ed. 492; 25 S. Ct. 240. 
 
 Complainant sold defendant two of his designs before patent at the regular 
 price with knowledge that the same were purchased to be copied. It was a 
 license, although the sale was made in the threat of defendant to purchase 
 elsewhere if complainant would not sell them. — Anderson v. Eiler, 50 Fed. 
 775; 1 CCA. 659. 
 
 The complainant company is the owner of the Spaulding patent with a 
 great many others in the same art. Some time before bringing this suit, it 
 made an arrangement with the owners of other patents by which all were 
 conveyed to a trustee to issue licenses to others for the use of all their patents. 
 In some of these licenses the Spaulding patent was included as one of a num- 
 ber, and it is now agreed that the complainant company cannot be heard to 
 deny the operativeness of the Spaulding patent. As the defendants were not 
 among complainant's hcensees, no estoppel arises in this suit, and the fact 
 is only evidential as an admission against complainant which can be ex- 
 plained or rebutted. The evidence in the case as to the Spaulding patent, 
 and its inoperative character, in our view, completely overcomes any in- 
 ference thus sought to be drawn, while the omnibus character of the licenses, 
 including so many patents, much weakens the evidential force of the otherwise 
 natural implication of a license that the licensor asserts the operativeness 
 of the device Ucensed. — McCormick v. Aultman, 69 Fed. 371; 16 C C. A. 
 259. 
 
 The defendants agreed to pay the expenses of the patents, but failed and 
 refused to do so. They as infringers are estopped to plead a license. — 
 Timoney v. Buck, 84 Fed. 887; 28 C. C A. 561. 
 
 That a licensee may show the state of the prior art for the purpose of 
 enabling the court to ascertain the scope of the patent, see — American v. 
 Helmstetter, 142 Fed. 978; 74 C C A. 240. 
 
 In a former suit between the same parties, a mutual agreement had been 
 reached by which the complainant practically Hcensed the defendant to 
 manufacture the device in brass so long as he did not manufacture it in iron. 
 Subsequently the defendant manufactured a device in iron, but not one which 
 came within the terms of the contract. Complainant then brought this
 
 592 THE FIXED LAW OF PATENTS §§ 755-756 
 
 suit on the ground that the conduct of defendant had operated as a revoca- 
 tion of the license. Held: that such manufacture of the device in iron not 
 in infringement of the patent did not revoke the hcense to manufacture 
 in brass. — Clancy v. Troy, 157 Fed. 554; 85 C. C. A. 314. 
 
 § 755- Forfeiture. 
 
 An attempted sale in violation of a specific agreement works a forfeiture 
 of the hcense. — Piatt v. Fire Extinguisher, 59 Fed. 897; 8 C. C. A. 357. 
 
 The defendant agreed that if he failed to perform his covenants, the license 
 might be forfeited by a written notice served upon him, or his successor, and 
 this was done. His subsequent tender of money in payment of royalties, 
 and a promise to perform his covenants, could not avail to remove the for- 
 feiture without the consent of the Hcensor and the other licensees. — Piatt 
 V. Fire Extinguisher, 59 Fed. 897; 8 C. C. A. 357. 
 
 Hammacher v. Wilson, 26 Fed. 239; White v. Lee, 3 Fed. 222. 
 
 The hcense purported to be an exclusive one. Its very exclusiveness 
 was the substance of the thing granted. It was of the essence of that for 
 which the defendants in error agreed to pay royalties. It was coupled with 
 a covenant to protect the licensees in the exclusive use of the rights so granted. 
 There has been a total breach of that covenant. The licensors, instead of 
 affording the promised protection, have by their own acts in effect reappro- 
 priated to their own use that which they granted the licensee. In short, their 
 course was such that the licensee was evicted from the granted right immedi- 
 ately after the execution of the license, and the eviction was continuous 
 until the commencement of the suit . — Wilfley v. New Standard, 1G4 Fed. 
 421 ; C. C. A. 
 
 Rob Pat § 1241; Angler v. Eaton, 98 Pa. 594; Edison v. Thakara, 167 Pa. 
 530; McKay V. Smith, 39 Fed. 556; National v. Boston, 41 Fed. 48; Standard v. 
 Ellis, 159 Mass. 448. 
 
 It will hardly be denied that, if at any time the licensees' operations 
 are unsatisfactory, the parties might by subsequent agreement modify them ; 
 or, if the operations of the licensee were so unsatisfactory and unbusinesslike as 
 to amount to a breach of the agreement, the licensor would have the right to 
 terminate it and make a hcense to another. — Goshen v. Single Tube, 166 
 Fed. 431; CCA. 
 
 § 756. Implied. 
 
 Whatever license resulted to the corporation from the facts of the case to 
 use the invention, it was confined to that corporation and not assignable by 
 it. — Hapgood v. Hewitt, 119 U. S. 226; 30 L. Ed. 369; 7 S. Ct. 193. 
 
 Troy V. Corning, 55 U. S. 193; Oliver v. Rumford, 109 U. S. 75. 
 
 Where complainant through his foundryman furnished defendant with 
 certain parts of machinery used in complainant's process, which parts were 
 employed in other processes, the defendant could not claim implied hcense to 
 the process from the purchase of such elements used therein. — Lawther 
 V. Hamilton, 124 U. S. 1; 31 L. Ed. 325; 8 S. Ct. 342. 
 
 Where partnership constructed a machine with knowledge and consent of 
 inventor before application ; an implied license arises in favor of the machine 
 so constructed. Wade v. Metcalf , 129 U. S. 202 ; 32 L. Ed. 661 ; 9 S. Ct. 271 .
 
 § 756 LICENSE 693 
 
 Where a government employee made an invention and made a contract with 
 his superior Ucensing the bureau to use his invention during the term of his 
 employment, Held, that such agreement did not abrogate the right of the 
 bureau to a shop right use of the invention after the discharge of the employee. 
 — McAleer v. U. S. 150 U. S. 424; 37 L. Ed. 1130; 14 S. Ct. 160. 
 
 Solomons v. U. S., 137 U. S. 342; Davis v. U. S. 23 Ct. CI. 329; McClurg v. 
 Kingsland, 42 U. S. 202; Seitz v. Brewers, 141 U. S. 510. 
 
 Where a government employs a mechanic who invents, obtains a patent 
 and makes a specific assignment of a shop right to his bureau, such license will 
 not be abrogated by any subsequent parol agreement. — McAleer v. U. S. 
 150 U. S. 424; 37 L. Ed. 1130; 14 S. Ct. 160. 
 
 We know of no principle upon which a contract can be evoked from a 
 distinct refusal of one party to recognize the rights of the other, and a formal 
 protest against any such rights being granted him. — Kirk v. U. S. 163 
 U. S. 49; 41 L. Ed. 66; 16 S. Ct. 911. 
 
 Defendant purchased of complainant two articles of complainant's design 
 with the stated purpose of copying them, paying the market price. Held: 
 that such sale constituted a license. — Anderson v. Eiler, 50 Fed. 775 ; 1 
 C. C. A. 659. 
 
 Do the facts that the copartnership, styled the Bank of Fargo, was per- 
 mitted to use the patented invention for seven months before the appUca- 
 t ion for a patent was filed, and that the defendant subsequently succeeded to 
 their business and property, confer upon it an implied license to make and 
 use the new account books embodying the patented invention? The appli- 
 cation was filed Dec. 31, 1886. The Bank of Fargo first applied the invention 
 to their account book June 2, 1886, and used it thereafter with complainant's 
 consent until the firm was dissolved Jan. 1, 1887. The defendant corporation 
 was organized and commenced business on that day. The defendant did not 
 purchase, construct, or use any article embodying complainant's invention 
 l)efore he filed his application for a patent, since it did not come into existence 
 tnitil after that filing. Whatever license it had it derived from the dis- 
 solved copartnership by purchase or assignment; but the only right the 
 partnership had was the statutory privilege of using and vending to others 
 to be used the specific thing they had made with complainant's consent. This 
 was not a grant of any portion of the franchise ; it was a mere naked Ucense, 
 personal to the copartnership, and incapable of assignment or transfer. — 
 Thomson v. Citizens Nat. Bk. 53 Fed. 250; 3 C. C. A. 518. 
 
 Haogood V. Hewitt, 119 U. S. 226; Locke v. Bodley, 35 Fed. 289; Troy v. 
 Corning, 14 How. 193; Oliver v. Chem. Wks., 109 U. S. 75. 
 
 The duration and scope of a license must depend upon the nature of the 
 invention and the circumstances out of which an imphed license is presurned, 
 and both must at least depend upon the intention of the parties. — With- 
 ington V. Kinney, 68 Fed. 500; 15 C. C. A. 531. 
 
 Rob. Pat. sees. 808-811; Montross v. Mabie, 30 Fed. 237. 
 
 According to the rule in Mfg. Co. v. Kinney, 68 Fed. 500, an implied license, 
 if it relates to an improvement in the process, ordinarily authorizes the em- 
 ployer to continue to practise the process during the whole period of the 
 patent. This follows because the subject matter is indivisible ; but, if the 
 invention pertains to a machine, it is understood, ordinarily, that only the 
 specific machine or machines which have been set up during the time of the 
 employment are protected. Such is the ordinary rule, and it is plainly based
 
 694 THE FIXED LAW OF PATENTS §756 
 
 on a sound discretion. It is, of course, more a rule for the application of 
 facts than a rule of law, and therefore is not rigid. When the patented matter 
 is a product, particularly if it is a minor product, or even if it is a minor 
 machine, so that in either case it is used in ciuantity, like the stop -valve m 
 Lane v Locke, L50 U. S. 193, its unlimited use during the time of employ- 
 ment may raise an implication of facts in favor of a license for a time likewise 
 unlimited, as in the case of a process. — Boston v. Allen, 91 l^ed. 248; 66 
 CCA 485. 
 
 McCIurg i^'Kingsland, 1 How. 202; Hapgood v. Hewitt 119 TJ. S 226; Wade 
 V. Metcalf? 129 U. S. 202; Solomons v. U. S. 137 U S. 342; DalzeU ^. Mfg. Co., 149 
 U. S. 315; Keys v. Mining Co. 158 U. S. 150; Gill v. U. S. 160 U. S. 426. 
 
 To restrict the right of a purchaser of an apparatus embodying a patented 
 invention to use it for the purposes for which it is peculiarly adapted, there 
 must appear some express or implied agreement by which the mode or time 
 or place of use has been limited ; and this was the principle upon which the 
 Button Fastener Case was decided. But there may be circumstances under 
 which the sale by a patentee of one patented article, will carry with it the 
 right to use another in co-operation with the first, although the thing be 
 covered by a second patent. Thus, if the article sold be of such pecuhar 
 construction as that it is of no practical use unless it be used in combination 
 with some subordinate part, covered by another patent to the vendor the 
 right to use the latter in co-operation with the former, might be implied from 
 circumstances. It is a general principle of law that a grant necessarily 
 carries with it that without which the thing granted cannot be enjoyed. The 
 limitation upon this is, that the things which pass by implication only must 
 be incident to the grant, and directly necessary to the enjoyment of the thing 
 granted. The foundation of the maxim Ues in the presumption that the 
 grantor intended to make his grant enjoyable. — Edison v. Peninsular, 101 
 Fed. 831 ; 43 C. C. A. 479. 
 
 Cutter V. Sheldon, 10 Blatchf. 1; Heaton v. Eureka, 77 Fed. 288; Adams v. 
 Burks, 17 Wall. 453. 
 
 It is evident that the extent of an implied license must depend upon the 
 peculiar types of each case. The question in each case is, whether or not the 
 circumstances are such as to estop the vendor from asserting infringement. 
 — Edison V. Peninsular, 101 Fed. 831 ; 43 C. C. A. 479. 
 
 Roosevelt v. Electric Co. 20 Fed. 724; United v. California, 25 Fed. 475; Amer- 
 ican V. Ament, 74 Fed. 789; Stonecutter v. Shortsleeves, 16 Blatchf. 381; 111- 
 ingsworth v. Spaulding, 43 Fed. 831. 
 
 Among the defenses interposed was that of an implied license to the de- 
 fendants to use the invention. The defense was based upon Brickill's conduct 
 in equipping two of the steam fire engines of the fire department with his 
 patented apparatus before making application for his patent, and in per- 
 mitting other engines to be equipped with it while he remained in the employ 
 of the department. The court below was of the opinion that a license to use 
 the invention with the first two engines was to be implied, but that none was 
 to be implied as to the others. There is no assignment of error challenging the 
 correctness of the decree in respect to this defense. The defense was not 
 argued at the bar, although it is urged in the brief for the appellants. Under 
 the circumstances we do not feel called upon to consider it further than to 
 say that we think the court below disposed of it correctly. — Brickill v. 
 Mayor, 112 Fed. 65; 50 C. C. A. 1. 
 
 In view of the fact that buildings specially designed for the use of Barber's 
 process and apparatus were constructed under his direction, we think the
 
 757 LICENSE 
 
 695 
 
 presumption is that he intended to grant to the carbon company the right to 
 use his process in connection with the machines, for which space in the several 
 factories had been specially arranged with his knowledge and under his 
 direction. The right of use presumed is the right to use such number of 
 machines as had been prepared for, and the right is not limited t^ the life 
 of the particular machine, but will include replacements so long as the carbon 
 company continues in the manufacture of carbons. The scope of the hcense 
 therefore includes the seventh machine, constructed after Barber was dis- 
 charged, to occupy the place prepared for it under Barber s direction. By 
 his conduct Barber has estopped himself from asserting that the use of his 
 invention to this extent is an infringement of his right as a patentee. — 
 Barber v. National, 129 Fed. 370; 64 C. C. A. 40. 
 
 Solomons v. U. S. 137 U. S. 342; Lane v. Locke, 150 U. S. 193; Gill v. U. S. 160 
 U. S. 426. 
 
 Facts- Complainant sold defendant 22 electric locomotives for use in 
 its tunnels and consented to the installation, by a third party, of electric 
 switches, without which the locomotives could not be operated, bubse- 
 quentlv defendant purchased other locomotives of another manufacturer 
 and operated the same in its tunnels in connection with the electric switches 
 installed. The infringement complained of consisted in the use ot the 
 patented electric switches with any locomotive not made by complainant, it 
 being claimed that the right to use the switch was given only in connection 
 with the purchase of complainant's locomotives. Held: Appellee having no 
 notice of the restriction and not having dealt for the purchase of the loco- 
 motives with such restriction in mind, the license that the law raises upon 
 the transactions between the parties is as broad as if "o such restriction 
 usually entered into the dealings of appellant (compl t.) with the purchasing 
 world The sole transaction disclosed here in the sale of locomotives to be 
 operated without royalty, restriction (express or implied) or further license 
 in connection with the trolley switching devices - a transaction tbat must 
 be held to permit the use of the same devices in connection with other loco- 
 motives. — Thompson-Houston v. lUinois, 152 Fed. 631 ; 81 C. t. A. 47d. 
 
 Edison v. Peninsular, 101 Fed. 836. 
 
 § 757. Machines. 
 
 The purchase of a machine with the right to use th^ invention embraced 
 therein carries with it no interest in the patent. — Mitchell v. Hawley, 83 
 U. S. 544; 21 L. Ed. 322. 
 
 When the patentee has himself constructed a machine and sold it without 
 any conditions, or authorized another to construct, sell and deliver it, or 
 to construct, use and operate it, without any conditions and for a considera- 
 tion paid, he parts with his monopoly in that machine. - MitcheU v. Hawley, 
 83 U. S. 544; 21 L. Ed. 322. 
 
 Bloomer v. Millinger, 1 Wall. 350. 
 
 A machine made with the knowledge and consent of the inventor before hi^ 
 application, as provided in sec. 4899, carries mth it an implied hcense frora 
 the inventor good to any purchaser. - Wade v. Metcalf, 129 U. S. 202, 32 
 L.Ed. 661; 9 S. Ct. 271. ^^ ^^ ^ ^^^ 
 
 McClurg V. Kingsland, 42 U. S. 202; Bloomer \McQueewan 55 g | 53^; 
 Bloomer r Millinger. 68 U. S. 340; Adams v. Burks, 84 U. S. 453, Birdsail v. 
 Shaliol, 112 U. S. 485.
 
 ggg THE FIXED LAW OF PATENTS §§ 758-760 
 
 § 758. Non- Assignable. 
 
 A license, though usually not transferable, is transmissible by succession 
 to a coFDoration formed by the union of two licensees succeeding to the obliga- 
 tions of both. - Lane v. Locke, 150 U. S. 193; 37 L. Ed. 1049; 14 S. Ct. 78. 
 
 Lightner v. Boston, 1 Law. Des. 338. 
 
 May be waived if the patentee ratifies the transfer of the license by other- 
 wise treating the assignee as the licensee was entitled to be treated. — Lane 
 V. Locke, 150 U. S. 193; 37 L. Ed. 1049; 14 S. Ct. 78. 
 
 Hammond v. Mason, 92 U. S. 724. 
 
 § 759. Parol. 
 
 It is true that a license may be created by parol andjje established by 
 clear implication from proven facts and circumstances (Solomons v. U. S. 
 137 U. S. 342; McClurg v. Kingsland, 1 How. 202; Anderson v. Eiler, 50 
 Fed. 775; Withington v. Kinney, 68 Fed. 500) but it is also true that by like 
 implication arising from facts and circumstances and the conduct of the 
 parties a continuing assignable quality may be given to a license ongmally 
 unassignable. That the proof thereof rests in parol is not material where no 
 one is concerned except the parties and their privies. — Bowers v. Lake 
 Superior, 149 Fed. 983; 79 C. C. A. 493. 
 
 As to the world at large, an assignment is not good unless put in writing 
 and recorded; but as between parties to the transaction, a license by parol 
 may be sustained, and enforced, if need be, by a decree for specific per- 
 formance. — Cook V. SterUng, 150 Fed. 766; 80 C. C. A. 502. 
 
 § 760. Royalties. 
 
 There was at least an implied license to use the improvement upon the 
 same terms and royalties fixed for other parties from the time complainants 
 left the employ of defendant, while defendant was entitled to use the inven- 
 tion without payment of any royalties during the continuance of such em- 
 ployment. And, apart from^hat, that the decree cannot be reversed on the 
 ground that the circuit court erred in dismissing the bill because when it 
 was filed complainants were not entitled to any relief resting on grounds of 
 equity, while their remedy at law, then and thereafter, was plain, adequate 
 and complete. — Keyes v. Eureka, 158 U. S. 150; 39 L. Ed. 929; 15 S. Ct. 
 772. 
 
 The contract embraces only what the parties reasonably may be under- 
 stood to have expected to be patented. The provision for the cessation of 
 payments on final adverse action must be applied to such claims as were 
 rejected for want of novelty ; and after such rejection, the licensor can make 
 the defendant account only for the use of devices embodying what remained 
 of his claims. The covenant to use due business diligence in pushing the sale 
 did not preclude defendant from using any later invention, nor would it 
 require him to enter upon a hopeless contest, and would not prevent him from 
 avoiding such contest by purchase. In that event he would not be account- 
 able to the hcensor for "royalties on the new machine. — Echpse v. Farrow, 
 199 U. S. 581 ; 50 L. Ed. 317; 26 S. Ct. 150. 
 
 Thorn v. Washburn, 159 U. S. 423. 
 
 Complainant licensed the invention to defendant at a specific royalty and 
 minimum feUing price. This complainant violated, making and selling at a 
 lower price. The defendant's ability to pay the royalty depended upon the
 
 § 7G1 LICENSE 697 
 
 non-competition by complainant at reduced prices. This breach by com- 
 plainant of his undertakings, when found to be unjustifiable by any previous 
 conduct of defendant, relieved defendant from the obligation which it has 
 assumed. — Brusie v. Peck, 54 Fed. 820; 4 C. C. A. 597. 
 Kingston v. Preston, Doug. 634; 2 Parson Con. 189. 
 
 Defendant gave a license to plaintiff providing for a minimum annual royalty 
 so much per article and a fixed royalty per article in excess of that number. 
 Defendant also agreed to make no other license on better terms, or if he did 
 to give plaintiff the benefit of a like reduction. Defendant subsequently 
 gave another license to other parties at the same rate per article but for a 
 smaller minimum number and no royalty on articles over that number. 
 Plaintiff sues. Held: That he was entitled to recover moneys paid, subsequent 
 to said second agreement in excess of the royalty provided in the second 
 contract whether the second contract had resulted in the production of the 
 minimum number of articles or not. — Guggenheim v. Kirchhofer, 66 Fed. 
 755; 14C. C. A. 72. 
 
 The parties made a contract containing the following clause : " And 
 provided, further, and it is hereby distinctly understood and agreed, that n 
 the said parties of the second part shall sell or lease, or cause to be sold or 
 leased, for use, or shall cause to be used, in any foreign country any . . . 
 machines at rates of royalty or rental less than those charged for the use of 
 like machines in this country, then the royalty rate to be paid by said parties 
 of the second part to said parties of the first part shall be forty-five per cent., 
 in lieu of forty per cent., as herein above provided." The licensees subse- 
 quently began selling machines in foreign countries and offered to pay the 
 increased per cent, from that time. Licensors brought suit for the difference 
 between 40 and 45 per cent, for the time prior to the beginning of such foreign 
 business. Held: That the contract could not be retroactive from its language 
 and that the licensor was entitled to only 40 per cent, up to the time the 
 foreign sales commenced. — National v. Willcox, 74 Fed. 557; 20 C. C. A, 
 654. 
 
 Unless the contrary appears to have been the intention of the parties, 
 the presumption is that, under a license for the exclusive right to manufacture 
 and sell under a patent, royalties are not payable upon articles manufactured 
 and sold after the expiration of the life of the patent. Parties may, of course, 
 contract as they choose ; but, in the absence of some provision by which a 
 promise for the continuing payment of royalties upon expired patents may 
 be fairly incurred, the presumption is that the contract is upon the ordinary 
 terms as to the duration of royalties. — Sproull v. Pratt & Whitney, 108 Fed. 
 963; 48 C. C. A. 167. 
 
 For a case covering license for several patents, capable both of conjoint 
 and separate use, and a curious holding as to the effect of the expiration of 
 one of the patents under the pecuhar terms of that contract, see — Sproull v. 
 Pratt & Whitney, 108 Fed. 963; 48 C. C. A. 167. 
 
 § 761. Scope of. 
 
 Where one sells a machine to another and subsequently purchases the 
 patent, or an interest therein, covering such machine, such subsequent pur- 
 chase gives the purchaser of the machine a license as against his vendor, but 
 whether such license by purchase would extend to and include other co-owners 
 of the patent is not decided. — Gottfried v. Miller, 104 U. S. 521 ; 26 L. Ed. 
 851.
 
 698 THE FIXED LAW OF PATENTS § 762 
 
 That a license for the invention of a patent cannot be construed to cover 
 other devices made by the hcensee which are not fairly within the terms of 
 the patent, see — Eclipse v. Farrow, 199 U. S. 581; 50 L. Ed. 317; 26 S. Ct. 
 150. 
 
 The exclusive right granted to a person other than the patentee to use and 
 sell a patented device within a named district of country, excludes the owner 
 of the letters patent from selling the same or using the same in that region. 
 A licensee does not use or sell in the name of the owner of the patent, but in 
 his own name, and for his own benefit. Having an exclusive license to use 
 and sell, no one has a right to use or sell in the country of such a licensee. — 
 Brush V. California, 52 Fed. 945; 3 C. C. A. 368. 
 
 A license which provides that the hcensee shall supply the market and pay 
 royalties on all machines containing the patented improvement, when the 
 invention licensed is not a monopoly and where it is no specific restriction, 
 does not prohibit the licensee from making and selling devices not containing 
 the patented devices without paying royalty. — Standard v. Leslie, 78 Fed. 
 325; 24 C. C. A. 107. 
 
 By its terms, the grant covers three separate or separable fields. The 
 patentee may agree with one that he will not exclude him from making, with 
 another from using, and with yet another from selling devices that exemplify 
 the principles of his invention. Within the field of making, it has never 
 been doubted, so far as we are aware, that he may subdivide as he pleases and 
 offer to sell or lease in the most fanciful parcels on the harshest terms; that 
 whether purchasers and tenants come or not is purely his own concern ; and 
 that, if purchasers or tenants do come, the courts will enforce the terms of 
 the sale or lease. And how could it be otherwise? Owning the whole, he owns 
 every part. The field being his property, and there being no law for seizing 
 it and adjudging his damages, he cannot be compelled to part with his own 
 except on inducements to his liking. The same conditions must prevail 
 within the field of use, for how can it be distinguished? — Victor v. The Fair, 
 123 Fed. 424; 61 C. C. A. 58. 
 
 Heaton v. Eureka, 77 Fed. 288; Cortelyou v. Lowe, 111 Fed. 1005; Bement v. 
 National, 186 U. S. 70; Edison v. Kaufman, 105 Fed. 960; Edison v. Pike, 116 
 Fed. 863. 
 
 The consideration upon which the defendant agreed to pay royalties was 
 the privilege of using " the devices described and claimed." This must be 
 interpreted as an agreement to pay for the use of such devices as the defendant 
 would not otherwise have the right to use, namely, such as were covered by 
 the claims of the patent, and not for such as were merely described and not 
 claimed, or as were included as single elements only in a combination claimed 
 as a whole. — Western v. Robertson, 142 Fed. 471 ; 73 C. C. A. 587. 
 
 § 762. Termination of. 
 
 Defendant cannot force a termination of contract except by suit to set it 
 aside, until which time he cannot say what he afterwards does is not under 
 the contract provided the machine made embodied the patent in suit. — 
 St. Paul V. Starling, 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. 
 
 The truth seems to be that the proviso is a more or less well-known and 
 conventional one in licenses, not a special contrivance for this special case, and 
 that the fact alone is enough to invalidate attempts to twist the meaning of 
 the words to the interest of either side. The proviso was inserted, no doubt,
 
 § 763 LICENSE 699 
 
 on the assumption that a licensee, when sued for royalties, is estopped to deny 
 the validity of the patent which he has been using, and to give him the benefit 
 of litigation by or against third persons, notwithstanding that rule. — U. S. v. 
 Harvey, 196 U. S. 310; 49 L. Ed. 492; 25 S. Ct. 240. 
 Charter v. Charter, 47 III. App. 36. 
 
 It is settled law that a license to use a patent is a personal privilege, 
 which terminates with the life of the individual licensee to which it is granted, 
 unless the grant contains words expressly confirming the power to sell or 
 assign. In the absence of such power if the licensee be a natural person and 
 dies, or an artificial person or partnership and ceases to exist, the license 
 expires equally in either case. — Haffcke v. Clark, 50 Fed. 531; 1 C. C. A. 
 570. 
 
 Oliver v. Chemical Co. 109 U. S. 75; Nail Factory v. Coming, 14 How. 19 j; 
 Gayler v. Wilder, 10 How. 477. 
 
 It is to be kept in mind that the license under consideration was not 
 like that in St. Paul v. Starling, 140 U. S. 184, unhmited in duration, which 
 requires mutual consent, or some positive act by one of the parties to ter- 
 minate it. This license was of limited duration ; it ran only for a year ; and 
 the positive act required was not one to end, but to extend, it. — Seal v. 
 Bookkeeper, 130 Fed. 449; 64 C. C. A. 651. 
 
 § 763. Territorial. 
 
 The right to use a machine or article made under a territorial license 
 stands on a different ground from the right to make and sell them, and 
 inheres in the nature of a contract of purchase which carries no implied 
 limitation of the right of use within a given locality. — Adams v. Burks, 84 
 U. S. 453; 21 L. Ed. 700. 
 
 Where a patentee has assigned his right to manufacture, sell and use within 
 a limited district an instrument, machine or other manufactured product, 
 a purchaser of such instrument or machine, when rightfully bought within 
 the prescribed limits, acquires by such purchase the right to use it anywhere 
 without reference to other assignments of territorial rights by the same 
 patentee. — Adams v. Burks, 84 U. S. 453; 21 L. Ed. 700. 
 
 A license to make and sell within a specified territory does not prevent 
 the use of an article so made and sold rightfully within the territory from 
 being used anywhere without the territory. — Adams v. Burks, 84 U. S. 
 453; 21 L. Ed. 700. 
 
 Defendant cannot terminate, without consent of plaintiff, the rights con- 
 ferred by the license, and that, as there was no limitation on its face, the 
 license continued until the expiration of the patent. — St. Paul v. Starling, 
 140 U. S. 184; 35 L. Ed. 404; 11 S. Ct. 803. 
 
 The sale of a patented article by an assignee within his territory carries 
 the right to use it everywhere, notwithstanding the knowledge of both parties 
 that a use outside the territory is intended. — Hobbie v. Jennison, 149 U. S. 
 355; 37 L. Ed. 766; 13 S. Ct. 879. 
 
 Adams v. Burks, 84 U. S. 453; BirdsaU v. Shaliol, 112 U. S. 485; Wade v. 
 Metcalf, 129 U. S. 202; Boesch v. Graff, 133 U. S. 697. 
 
 One who buys patented articles of manufacture from one authorized to 
 sell them becomes possessed of an absolute property in such articles, unre-
 
 700 • THE FIXED LAW OF PATENTS § 764 
 
 stricted in time or place. Whether a patentee may protect himself and his 
 assignees by special contracts brought home to the purchasers is not a question 
 before us, and upon which we express no opinion. It is, however, obvious 
 that such question would arise as a question of contract, and not as one 
 under the inherent meaning and effect of the patent laws. 
 
 The conclusion reached does not deprive a patentee of his just rights, 
 because no article can be unfettered from the claim of his monopoly without 
 paying its tribute. The inconvenience and annoyance to the public that an 
 opposite conclusion would occasion are too obvious to require illustration. — 
 Keeler v. Standard, 157 U. S. 659; 39 L. Ed. 848; 15 S. Ct. 738. 
 
 Dissenting: Justices Brown, Fuller and Field. 
 
 The grant was of the exclusive right to use and sell within the states 
 named. This, under the authorities, was perhaps nothing more or less than 
 a license. — Brush v. California, 52 Fed. 945; 3 C. C. A. 368. 
 
 Walk. Pat. sec. 296; Hamilton v. Kingsbury, 17 Blatchf. 264; Waterman v. 
 Mackenzie, 138 U. S. 252. 
 
 § 764. Miscellaneous. 
 
 The exclusive right to use a machine continues no longer than the term of 
 the original patent. — Paper Bag Cases, 105 U. S. 766; 26 L. Ed. 959. 
 Wilson V. Rousseau, 4 How. 646. 
 
 An infringer does not by paying damages for making and using a machine 
 in infringement of a patent, acquire any Fight himself to the future use of the 
 machine. On the contrary he may, in addition to the payment of damages 
 for past infringement, be restrained by injunction from further use, and, 
 when the whole machine is an infringement of the patent, be ordered to de- 
 liver it up to be destroyed.— Birdsall v. Shaliol, 112 U. S. 485; 28 L. Ed. 768; 
 5 S. Ct. 244. 
 
 Suffolk V. Hayden, 3 Wall. 315; Root v. Ry. 105 U. S. 189; Needham v. Oxley, 
 8 L. T. N. S. 604; Frearson v. Loe, 9 Ch. Div. 48. 
 
 Note: The destruction of infringing machine is not based on any statute 
 and has been denied in American v. Kitsell, 35 Fed. 521. 
 
 The licenses were never demanded by the defendants nor executed. If 
 tender of the licenses were essential to recovery under the contract, we are 
 of opinion that the conduct of the defendants operates as a waiver of per- 
 formance. The proper licenses were tendered for execution. Failure of 
 execution and delivery were due to the inattention or evasion of the defend- 
 ants. They are not permitted to take advantage of their own wrong. The 
 licenses contained mutual obligations. The duty of the parties to execute 
 them was concurrent. — American v. VanNortwick, 52 Fed. 752 ; 3 C. 
 C. A. 274. 
 
 U. S. V. Peck, 102 U. S. 64. 
 
 As a general rule, it may be said that a license is not divisible. The term 
 " assigns " must be construed as the right to assign the license as an entirety. 
 — Brush V. California, 52 Fed. 945; 3 C. C. A. 368. 
 
 Walk. sec. 310; Brooks v. Byam, 2 Story, 525. 
 
 Upon the defendants rests the burden of proof that Kendrick, though not 
 an owner of record, had a right to license manufacture under the patent. — 
 Denning v. Bray, 61 Fed. 651 ; 10 C. C. A, 6. 
 
 Although the agent exceeded his authority under his power of attorney, and 
 although his authority might be revoked (under Willcox v. Ewing, 141 U.
 
 f 764 LICENSE 701 
 
 S. 627) all acts previously done in pursuance of it remain in force. — Union 
 V. Johnson, 61 Fed. 940; 10 C. C. A. 176. 
 
 A license from one member of a firm to the firm during the continuance of 
 the partnership is not an assignable or purchasable asset, notwithstanding 
 that the tools and patterns exclusively useful in the making of the patented 
 device pass as an asset to an assignee or receiver. — Elgin v. Nichols, 65 Fed 
 215; 12 C. C. A. 578. 
 
 Anderson v. Eiler, 50 Fed. 775. 
 
 That while a former licensee may be restrained by injunction from using 
 the trade name which designated the article of the patent, in an action seeking 
 such relief, the injunction order may not include restraint from using the 
 patent, see — Stimpson v. Stimpson, 104 Fed. 893; 44 C. C. A. 241. 
 
 In an action by a licensor against a licensee to recover royalties upon 
 sales made under an exclusive hcense upon an invalid patent, which was, at 
 the time when the account accrued, apparently valid and in force, and from 
 which there had been no eviction, the invalidity of which had not been de- 
 clared by an adjudication under legal proceedings, and no notice had been 
 given by the licensee of its refusal to pay on account of its defects, such 
 invalidity is no defense to the suit. As long as the licensee continues to manu- 
 facture under a patent presumably valid, without giving notice of its in- 
 validity and without eviction, he is presumed to manufacture in accordance 
 with his license. — Holmes v. McGill, 108 Fed. 238; 47 C. C. A. 296. 
 
 Marston v. Swett, 66 N. Y. 211 and 82 N. Y. 526; Lawes v. Purser, .38 Eng Law 
 & Eq. Rep. 48; White v. Lee, 14 Fed. 789; Birdsall v. Perego, Fed. Cas. 1,435; 
 Stott V. Rutherford, 92 U. S. 107; Eureka v. Bailey, 11 Wall. 488; 3 Rob Pat 
 696. 
 
 Kisinger Co. sued Bradford Co. on Morrison patent and Kisinger patent. 
 Bradford Co. defended under Girard & Lawrence patent, a subsequent 
 improvement to v.'hich it held license. Decree for Kisinger Co. on Morrison 
 patent. Bradford Co. then brought this suit alleging that Girard & Law- 
 rence had in the assignment of use to Bradford Co. guaranteed the patent 
 against all prior patents, etc., and alleging that Kisinger Co. prior to suit 
 had obtained by mesne assignments from Girard & Lawrence the full title 
 to the patent under which the Bradford Co. held license and guaranty from 
 Girard & Lawrence and that such purchase was with full knowledge. Held: 
 No doubt the general rule is that the assignee takes the title subject to the 
 equities of the other parties who have acquired rights therein, of which he 
 had notice, express or implied. But he takes no other burden. He comes 
 under no affirmative obligation to make good the previous contracts of his 
 assignor. The claim of the appellant is that it is let into the enjoyment 
 of the Morrison patent by a transaction which it had no right to compel or 
 prevent. The appellant has been put in no worse situation by the transfer. 
 W^hat equity has supervened in its favor since the decree in the former suit? 
 The appellee owed it no duty, and has not prejudiced the appellant. Nor has 
 it acquired any right which it has not paid for, or which, owing no duty to 
 the appellant, it had not equal right to purchase with any other person. — 
 Bradford v. Kisinger-Ison, 113 Fed. 811; 51 C. C. A. 483. 
 
 The owner of an undivided part of the rights secured by a patent may, 
 without the consent of his co-owners, grant a valid license to use the monopoly 
 it protects. — Paulus v. Buck, 129 Fed. 594; 64 C. C. A. 162. 
 
 Bloomer v. McQueewan, 14 How. 539; Blackledge v. Weir, 108 Fed. 71.
 
 702 THE FIXED LAW OF -PATENTS § 765 
 
 The license so granted is personal in its nature, and unassignable, no 
 intent being shown in the contract that it should be otherwise. — Standard 
 V. Arrott, 135 Fed. 750; 68 C. C. A. 388. 
 
 Complainant's final letter, ordering defendants to " discontinue building 
 said racks in cars without authority by me to do so under penalty of the law," 
 coupled with the statement that, if he should " conclude to allow said lacks 
 built in cars, my standing price will be five dollars per car," was in entire 
 accord with the understanding of both parties either that there had been no 
 contract for a future license, or that, even if any such license might have been 
 claimed, it was one terminable at the will of complainant's assignor, and the 
 statements in his letter were acquiesced in by defendants as constituting a 
 complete revocation of whatever rights or license they might otherwise have 
 claimed. The contract, if any, was thereby rescinded by mutual agreement. 
 — American v. Jones, 142 Fed. 974; 74 C. C. A. 236. 
 
 HarteU v Tilghman, 99 U. S. 547; Walker on Pat. 266; White v. Lee, 14 Fed. 
 789; Ross v. Fuller, 105 Fed. 510; Schenectady v. Holbrook, 101 N. Y. 45; De- 
 nise V. Swett, 142 N. Y. 602. 
 
 Use of the invention cannot be had except on the inventor's terms. With- 
 out paying or doing whatever he exacts, no one can be exempted from his 
 right to exclude. Whatever the terms, courts will enforce them, provided 
 only that the licensee is not thereby required to violate some law outside of 
 the patent law. — Rubber Tire v. Milwaukee, 154 Fed. 358; 83 C. C. A. 336. 
 
 LICENSOR AND LICENSEE. 
 
 Right to Sue § 765 
 
 Title § 766 (see § 925) 
 
 Miscellaneous § 767 
 
 See — Assignment § 165; Copartner- 
 
 ship ^270; Defenses ^ 311; Employer 
 and Employee §§ 367-8; Estoppel § 
 384; Infringement §§ 509-13; In- 
 junction § 749; Jurisdiction § 722 
 
 § 765. Right to Sue. 
 
 The conveyance was for neither an individual interest in the patent nor 
 for an exclusive territory. It is therefore to be regarded as a license only, 
 and under the act does not enable the assignee to maintain an action for 
 infringement. — Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504. 
 
 A mere licensee cannot sue strangers who infringe. In such cases redress 
 is obtained through or in the name of the patentee or his assignee. — Little- 
 field V. Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 The defendants first took a license from the patentee, and under it and 
 under his directions erected substantially the same apparatus now used. 
 Receiving what they regarded as additional light, they refused to continue 
 payment of royalty and put the complainant to his legal remedy. — Tilghman 
 V. Procter, 102 U. S. 707; 26 L. Ed. 279. 
 
 Licensees must enforce their rights through the name of the patentee (or 
 assignee). — Paper Bag Cases, 105 U. S. 766; 26 L. Ed. 959. 
 Littlefield v. Perry, 88 U. S. 223. 
 
 See full discussion and settlement of the law in Waterman v. Mackenzie, 
 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 If the licensee cannot use the name of its licensor in an action to protect 
 its rights against an infringement of the patented device or improvement it
 
 §766 LICENSOR AND LICENSEE 703 
 
 has the exclusive right to use and sell, we have a case of a person possessing 
 imDortanrSs with no legal power to protect them; for a licensee cannot 
 r fhL'Xname for anyingement of t^e Patent conc^g wh.h he 
 hasalicense.-Brusht;.Califorma,52Fed.945; 3C.C.A 368 
 
 Gayler .. Wilder, 10 How. 477; Waterman .Mackenzie 138 U^S - 2 
 
 i'Tf ''-p^eSv ?i^?VaT^O?%^:ich%andl"^^^^^^^^ - 
 
 St 4 Ban' I A 11- Huber .. Sanitary Depot 34 Fed. 752; Goodyear .. 
 Bishop! 4 Bttchf 438; Brush .. Thomson, 48 Fed. 224. 
 
 A mere licensee cannot sue strangers who inf""f- I)--^ -J-Xt?n 
 is obtained through or in the name of the owner of the patent. Waterman 
 V. Shipman, 55 Fed. 982; 5 C. C. A. 371. 
 
 A license amounting to a transfer of the title is not forfeited by a breach 
 
 Kartell v. Tilghman, 99 U. S. 547. 
 
 As licensee, the defendant in error has no authority to maintain the action. 
 — Chauche v. Pare, 75 Fed. 283; 21 C. C. A. d-.J. . ^ 252 
 
 BirdsaU v. Shaliol, 112 U. S. 486; Waterman v. Mackenzie, 138 U. S. 252. 
 
 There can be no doubt that a licensee can sue the patentee, who has granted 
 thJK for infringing the patent within ^^^^^^^Z'^^Z^^t w^a 
 in the same manner and with like ettect as tnougn i e p 
 stranger. -Smith v. Ridgley, 103 Fed. 8/5, 43 C. C A. 3b5 
 
 Littlefield V. Perry, 21 Wall. 205; Adriance v. McCormick, 55 Fed. 288, Walk. 
 Pat. sec. 400. 
 
 The complainant had a «-- to n,ake and s H ^ -t^n ten.^ory, 
 
 ireove. -Excelsior .. City of Seattle m Fed UO ^« C^^C^^^^'^t'.' 477; 
 MiSlTSailey te wa. 5«; Ha^arf i. Uews, .06 U. S. 672; Oliver . 
 Chemical, 109 U. S. 75. 
 
 S 766. Title. . u- u-^ 
 
 Thl Uri that the licensor has undertaken to make an assignrnent which it 
 
 ha5tt\S;t^^^^^ ^^';t ifc^SeThlt^tf ^^^^^^^^^ w'^a 
 
 is no stipulation m the contract ^^ ^^f^'^^^XTuch d there is 
 
 forfeiture of the rights granted by it J^^^"^^^^^^ ^(^'"^ A. 368. 
 no forfeiture. -Brush v. Cahforma, 52 Fed. 945 6 L. u. i^. 
 Walker, sec. 308; Purifier Co. .. Wolf, 28 Fed. 814. 
 
 y:^;;o,iheXr=ed^^^^^ 
 
 .aid patent, or that it had no existence a-^the^ ™ 'f^ft date to grant the 
 made, or on the ground that it "M "o a""""™;^ extensive fraud upon the 
 f"'^- V:!:?e ofrpTnnrghtZta insTLptd^arranty as'lo title, 
 'Srn\fSr7c*irea%ff obtafned by the vendor inures to the vendee.- 
 Brush V. California, 52 Fed. 945; 3 C. C. A. db».
 
 704 THE FIXED LAW OF PATENTS §§ 767-768 
 
 Faulks V Camp, 3 Fed. 898; Curran v. Birdsall, 20 Fed. 835; Gottfrield v. 
 Miller, 104 U. S. 520; Smith v. Sheley, 12 Wall. 358. 
 
 § 767. Miscellaneous. 
 
 The recovery of nominal damages by a licensor without joining his licensee 
 does not bar the licensee from recovering actual damages by a separate suit 
 for the same infringement. — Birdsall v. Shaliol, 112 U. S. 485; 28 L. Ed. 
 768; 5 S. Ct. 244. 
 
 Defendants were licensees from plaintiffs, and an agreement based upon 
 such license provided for an equal sharing of expenses of litigation affecting 
 such patents. Defendants were sued, and plaintiffs intervened and defended. 
 The licensed patent was held bad and defendants refused on that ground 
 and on the ground that plaintiffs had intervened to pay their share of costs 
 and expenses. Held: Neither the intervention nor the defeat of the patent 
 excused the defendants. — Leicester v. Macon, 116 Fed. 196; 53 C. C. A. 
 621. 
 
 We are satisfied, in view of the radical departures from said licensed blocks, 
 and from the patented construction, in defendant's later blocks, that it is 
 not precluded from showing that said blocks are not covered by the claims 
 in suit. — Western v. Robertson, 142 Fed. 471; 73 C. C. A. 587. 
 
 The patentee may grant, if he will, an unrestricted right to make or sell or 
 use the device embodying his invention, or may grant only a restricted right 
 in either the field of making, using or selling. To the extent that he restricted 
 either one of these separable rights, the article is not released from the domain 
 of the patent, and any one who violates the restrictions imposed by the 
 patentee, with notice, is an infringer. — Park v. Hartman, 153 Fed. 24; 
 82 C. C. A. 158. 
 
 The licensor has the right not only to royalties, but also to the licensee's 
 silence respecting the validity and prima facie scope of the patents. — 
 Indiana v. Case, 154 Fed. 365; 83 C. C. A. 343. 
 
 Siemans v. Duncan, 142 Fed. 157. 
 
 MACHINE. 
 
 Statute and Definition § 768 
 Right to Use § 769 
 See — Anticipation § 100; Designs § 
 333; Destruction of § 338; Infringe- 
 ment §§ 514-5; Invention § 686; 
 
 License § 767; Machine and Process 
 § 770; Machine and Product § 771; 
 Process § 817; Secret Process or 
 Machine § 898 
 
 § 768. Statute and Definition. 
 
 A machine is the second of the classes of patentable inventions named 
 in sec. 4886. Brief reflection will reveal the insufficiency and inaccuracy 
 of the following definitions. No one of them distinguishes, clearly, a machine 
 from a tool — an article of manufacture. Take this simple example : A 
 screw-driver of the ordinary sort is clearly a tool and not a machine; it is 
 an article of manufacture, and if it were novel, would be patentable as such. 
 Now add to this screw-driver a ratchet mechanism, so that when one rotates 
 the handle one way the blade or bit must turn with the handle, and when 
 rotated the other way the bit remains at rest and the ratchet permits the 
 handle to turn independently of the bit. In the ordinary screw-driver there 
 is no law of action imposed by the mind of the inventor; in the ratchet 
 screw-driver there is the law imposed by the mind of the inventor, which law
 
 § 768 MACHINE 705 
 
 is that, when the handle is rotated in one direction the bit is compelled, by 
 the ratchet mechanism, to rotate with the handle, and when the handle 
 is rotated in the other direction, the law is that the bit shall remain at rest. 
 It will be seen that no one, nor all, of the following definitions distinctly 
 classifies these two devices — the one as an article of manufacture and the 
 other as a machine. 
 
 On the other hand, passing from matters of sharp distinction to those of 
 broad construction, the law has never clearly distinguished between a machine 
 and an aggregation or a so-called " system." Perhaps the nearest approaches 
 have been in Dunbar v. Eastern, 81 Fed. 201 (§48) and Western v. Rochester, 
 145 Fed. 41 (§ 698). It is evident that the definition of a machine must bo 
 redrawn to mark the distinction between those true combinations patentable 
 under the statute and the ever-increasing number of constructions which 
 are the product of engineering skill, but which, however useful and however 
 skillfully devised, are nevertheless aggregations and systems, and clearly 
 non-patentable. 
 
 The term " machine " includes every mechanical device or combination of 
 mechanical powers and devices to perform some function and produce a 
 certain effect or result. But when the effect or result is produced by chemical 
 action by the operation or apphcation of some element or power of nature, 
 or of one substance to another, such modes, methods or operations are called 
 processes. — Corning v. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 A machine is a concrete thing, consisting of parts, or of certain devices. 
 The principle of a machine is properly defined to be " its mode of operation " 
 or the pecuhar combination of devices which distinguishes it from other 
 machines. A machine is not a principle or an idea. The use of ill defined 
 abstract phraseology is the frequent source of error. — Burr v. Duryee, 68 
 U. S. 531 ; 17 L. Ed. 750. 
 
 The doctrine which is applicable to a machine patent is of a kindred 
 character with that applied in this country and in England to a patent for 
 a process. — Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 McCormick v. Talcott, 61 U. S. 402; Chicago v. Sayles, 97 U. S. 554; Clough v. 
 Barker, 106 U. S. 166; Duff v. Sterling, 107 U. S. 636; Consolidated v. Crosby, 113 
 U. S. 157. 
 
 And comparing, Tilghman v. Proctor, 102 U. S. 707; Nelson v. Hartford, 1 
 Web P C 295; O'Reilly w. Morse, 56 U. S. 62,115; Curtis v. Piatt (note) L. R. 
 3 Ch biv 134; Badische v. Levinstein, L. R. 24 Ch. Div. 156, 171; Jupe v. 
 Pratt 1 Web P. C. 146; Househill?;. Nelson, 1 Web. P. C. 685; Proctor v. Bennis, 
 L. R.'se Ch. Div. 740; Clark v. Adie, L. R. 2 App. Cas. 315, 320. 
 
 The argument that a machine must be automatic in order to be patentable 
 is not sound. A piano is not automatic, nor is any tool or implement intended 
 for use by hand. But improvements in any such tool used in an art or 
 industry are patentable. — Weatherhead v. Coupe, 147 U. S. 322; 37 L. 
 Ed. 188; 13 S. Ct. 312. 
 
 A machine or structure may embody several different inventions. There 
 may be subcombinations in a machine which are new and useful, and operate 
 conjointly to perform some subordinate function. Such a sub-combination, if 
 not patented by a claim, might be appropriated by another without infringing 
 a patent for a machine. Being for a different invention, it is the proper 
 subject for a distinct patent. — Thompson-Houston v. Elmira, 71 Fed. 396; 
 18 C. C. A. 145.
 
 706 THE FIXED LAW OF PATENTS H 76&-770 
 
 § 769. Right to Use. 
 
 When the patented machine passes rightfully to the hands of the purchaser 
 from the patentee, or from any other person bj- him authorized to convey it, 
 the machine is no longer within the limits of the monopoly. By a vahd sale 
 the machine becomes the private uidi\-idual property of the purchaser, and 
 is no longer protected by the laws of the U. S. but by the laws of the state in 
 which it is situated- — Qiaffee v. Boston, 63 U. S. 217; 16 L. Ed. 240. 
 
 The lawful purchase of a patented machine carries with it the right to use 
 the machine, regardless of renewals or exteasioris of the patent, imtil it is 
 worn out. — Bloomer r. Millinger, 68 U. S. 340; 17 L. Ed. 581. 
 
 Wilaon v. Rousseau, 4 How. 640: Bloomer r. McQueewan, 14 How. 549: Chaffee 
 r. Boston, 22 How. 223; Crane r. Price, Web. P. C. 41-3. 
 
 A license to use and operate during the life of the patent carries the right 
 to repair and right to continue use after extension, — llitchell v. Haw ley, 
 83 U. S. 544; 21 L, Ed, 322, 
 
 Bloomer r. MiUinger, 1 WaU. 3.50. 
 
 The lawful purchase of a machine carries with it the right to use the 
 patented device embodied- — Adams v. Burks, 84 U. S, 453 ; 21 L, Ed, 700, 
 
 Right to patented machine carries with it the right to use and sell the 
 product of that machine. — Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 500; 
 14 S. Ct. 627. 
 
 MACHINE XSD PROCESS. 
 
 General Rules | 770 | See — Machine | 768 
 
 § 770. General Rules. 
 
 A machine may be new, and the product or manufacture proceeding from 
 it may be old. In that case the former would be patentable and the latter not. 
 The machine may be substantially old and the product new. In that event, 
 the latter and not the former, would be patentable. In the former case both 
 would be patentable ; in the latter, neither. The same remarks apply to pro- 
 cesses and their results. Patentability may exist as to either, neither or both, 
 according to the fact of novelty, or the opposite. The patentability or the 
 issuing of a patent as to one, in no wise affects the rights of the inventor or 
 discoverer in respect to the other. They are wholly di.sconnected and inde- 
 pendent facts. Such Is the sound and necessar\' construction of the statute. 
 — Rubber Co, v. Goodj-ear, 76 U, S, 788; 19 L. Ed, 566. 
 
 Undoubtedly a patentee may claim and obtain a patent for an entire 
 combination or process, and also for such parts of the combination or prr>cess 
 as are new and useful or he may claim and ohitain a patent for both. — 
 Ptaih-oad v. Dubois, 79 U, S. 47; 20 L. Ed. 26.5. 
 
 The driven well patent is for a process and not a machine, as the process is 
 used whenever water is drawn, — Andrews r, Hovey, 124 U. S. 694; 31 L. 
 Ed. ->r,7: 8 S. Ct. 676. 
 
 McClurg T. Kingsland, 1 How. 202; Beedle r. Bennett, 122 U, S. 71. 
 
 It is upon its face " for an improved process of manufacture," 
 and mechanism is shown and described simply for the purpose of ex-
 
 S 771 MACHINE AND PRODUCT 707 
 
 hibiting its operation, wliich is described in detail. The result is a more 
 perfect article, but it vras not because the patentoe had discovered anything 
 new in the result produced, but because the mechanism was better a<iapted 
 to produce that result than an>"thing that had been known. As deAices of 
 that description had beeJi produced before, doubtless, with great care in 
 manufacture of them, one as j'^erfect as plaimitT's might have been made. 
 So that all that he invented in fact was a madiine for the more perfect 
 manufacture of such dcAices. The operation or function of such a machine 
 however, is not patentable a* a process. — Risdon r. Medart, 15S U. S. 6S; 
 39 L. Ed. S99; 15 S. Ct. 74o. 
 
 Neilson r. Harford, 1 Web, P. C. S31; O'Reilly r. Morse, 56 U, S. 62.115; House- 
 hill r. Neilson, 1 Web. P. 0. 673: Tilghm.<in r.'proctor, 102 U. S. 70S; Mowry r. 
 Wliitney, SI U. S. 620; C-oc.lir.-uie r. Deener, 94 U. S. 7S0; Xew Process 7-. MVus, 
 122 r. S. 413; Telephone Cases. 126 U. S. 1; Bell Tel. r. Dolbor. 15 Feii. 4SS: 
 Weyeth v. Stone, 1 Ston*, 273; Coming r. Burden. 56 I', S, 252; McKay r. 
 Jackm.^ui, 12 Fed. 615; 'Brainaixi r. Cramnie. 12 Fed. 621; Ga£:e v. Kellosg, 
 
 23 Fed. S91; Hat<'h r. Moffit, 15 Fed. 253; SicJdes r. Falls, 4 Blafchf. 51S; Ex- 
 celsior r. Um<Hi, 32 Fed. 221. 
 
 Can it be said that a process and an apparatus are incAitably so inde- 
 pendent as never to be ** connected in their design and operation? " They 
 may be completely indejx^ndent. But they may be related. They may 
 approach each other so nearly that it will be difficult to distinguish the process 
 from the function of the apparatus. In such casse* the app.aratus woxild be 
 the dominant thing. But the dominance may lx> reversed and the process 
 carry an exclusive right, no matter what apparatus may lx"> devised to per- 
 form it. — U. S. ex rel. Steinmetz r. Allen, 192 U. S. c>4o; 4S L. Ed. 555; 
 
 24 S. Ct. 416. 
 
 Cochrane r. Deener, 94 U, S. 7S0; Telephone Case*, 126 U. S. 1. 
 
 Whether such a process patent might have been valid for the steps in pill- 
 dipping i^Kiinted out in the complainant's s}.x^cifications, we need not discuss, 
 because the complainant, :i5 a condition of getting the patent in suit, expressly 
 abandoned and withdrew an application for just such a process patent, and he 
 is thereby estoppe<i from contending for any construction of his present 
 patent which would, in effect, secure him the same thing. — Stearns r. 
 Russell, S5 Fed, 21S; 29 C. C. A. 121. 
 
 Sutter r. Robinson, 119 U. S. 530; Shepard r. Carrigan, 116 U. S. 593; Leg^tt 
 i\ Averv, 101 U. S. 256. 
 
 MACHINE AND PRODUCT. 
 General Rxile^ § 771 
 
 § 771. General Rules. 
 
 Patents for a machine will not lx> sustained if the claim is for a result, the 
 established rule Ixnng that the invention, if any, within the meaning of the 
 Patent .\ct, consists in the means or apparatus by which the result is obtained, 
 and not merely in the mode of operation, inde^vudent of the mechanical 
 de\ice5 employed; nor will a patent be held valid for a principle or for an 
 idea or any other mere abstraction. — Fuller r. Yentzer, 94 U. S. 2SS; 24 
 L. Ed. 103. 
 
 Dissenting; Strong, Waite. Miller, Bradley. 
 
 Burr r. Durj-ee, 1 W;ill. 531. 
 
 A patent upon a macliine may also cover a manufaeture. — Miller «. 
 Eagle, 151 U. S. 1S6; 3S L. Ed. 121; 14 S. a. 310.
 
 708 THE FIXED LAW OF PATENTS §§772-774 
 
 Where right to use patented machine is acquired right to use and sell 
 product goes with it. — Morgan v. Albany, 152 U. S. 425; 38 L. Ed. 500; 
 14 S. Ct. 627. 
 
 We do not think that an article manufactured in a machine in the manner 
 and for the purposes contemplated when the machine itself was made, can be 
 held to be a part of the machine which so produces it. — American v. Streat, 
 83 Fed. 700; 28 C. C. A. 18. 
 
 Morgan v. Albany, 152 U. S. 425. 
 
 MANUFACTURE. 
 
 Statute and General Statement § 772 
 Manufacture and Product § 773 {see 
 § 771) 
 
 Novelty § 774 
 Patentability § 775 
 
 See — Aggregation § 46; Art § 146; 
 Composition of Matter § 264; Machine 
 and Product § 771 ; Process §§ 820-1; 
 Product § 823 
 
 § 772. Statute and General Statement. 
 
 Manufactures constitute the third class of patentable inventions under 
 sec. 4886. The Supreme Court has held that a manufacture may mean either 
 the process or the product. Merrill v. Yeomans, 94 U. S. 568. Shall we then 
 say that the art of making carborundum by electrolytic decomposition and 
 synthesis belongs in the same class with the invention of a new and useful 
 tool? It is at once clear that, as in the case of an art (§ 147), the classifica- 
 tion of patentable inventions as made by the statute and as made by the 
 courts do not agree in terminology. 
 
 § 773. Manufacture and Product. 
 
 After a patent is granted for an article described as made by causing it to 
 pass through a certain method of operation to produce it, the inventor 
 cannot afterwards, on an independent application, secure a patent for the 
 method or process covered by the previous patent, which article was described 
 in that patent as produced by the method or process sought to be covered 
 by taking out the second patent. — Mosler v. Mosler, 127 U. S. 354; 32 L. 
 Ed. 182; 8 S. Ct. 1148. 
 
 Where a patent upon an article of manufacture does not claim the com- 
 position of matter, though it describes it, such omission is public dedication 
 of the said composition. — Underwood v. Gerber, 149 U. S. 224; 37 L. Ed. 
 710; 13 S. Ct. 854. 
 
 § 774. Novelty. 
 
 But whether, within the meaning of the patent law, a device should be 
 deemed to be a manufacture or a machine, in order to be patentable, it must 
 be novel; and by the decided cases the test of novelty would seem to be 
 essentiallv the same in the one instance as in the other. — Campbell v. 
 Bayley, 63 Fed. 463; 11 C. C. A. 284. 
 
 Glue Co. V. Upton, 4 Cliff. 237 F. C. 9,607; Collar Co. v. Vandeusen, 23 Wall. 
 530; Wood Paper Pat. 23 Wall. 566; Cochrane v. Badische, 111 U. S. 293; Reck- 
 endorfer v. Faber, 92 U. S. 347. 
 
 This is for the consti'ucted article and not for the art of constructing it. 
 (That is, the claim.) All suggestions, therefore, about the economy of con- 
 structing the blanks by cutting them off widthwise from a strip of a plate of
 
 § 775 MANUFACTURE 
 
 709 
 
 metal, so that the wide and narrow ends of the plate shall a tern ate and thus 
 utilize the whole of the metal are irrelevant. — Strom v. Weir, 83 Fed. 1/0, 
 27 C. C. A. 502. 
 
 § 775. Patentability. 
 
 For general rules as to limitation of patentability of a manufacture, see 
 Rubber Tip v. Howard, 87 U. S. 498; 22 L. Ed. 410. 
 
 Nothing short of invention or discovery will support a patent for a manu- 
 facture any more than for an art, machine or composition of matter.— 
 Union V. Vandeusen, 90 U. S. 530; 23 L. Ed. 128. 
 
 Hotchkiss V. Greenwood, 11 How. 265; JhiUips ^ Page 24 How. 167; Jones v. 
 Morehead, 1 Wall. 162; Simpson v. Woodman, 10 ^\ all. 121. 
 
 Articles of manufacture may be new in the commercial sense when they are 
 not new in the sense of the patent law. - Umon v. Vandeusen, 90 U. S. 530, 
 23 L. Ed. 128. 
 
 Glue Co. V. Upton, 6 O. G. 840. 
 
 The Patent Office fully comprehends the rule that new articles of commerce 
 are not patentable as new manufactures, unless it appears in the given case 
 that the production of the new articles involved the exercise of invention or 
 ^scover/ beyond what was necessary to construct the apparatus for its 
 manufacture or production. - Milligan v. Upton, 97 U. S. 3, 24 L. Ed. J85. 
 Ek parte Ackerson. C. D. 1869, 75; Ex parte Chatillon, 2 0. G. llo. Bates t- 
 £.xpaiie^^ c Jerome 3 G.64; Ex parte Adams, 3 O. G. 150, 
 
 2 O G 470; E.X parte Beach, 3 O. G. 607; Draper ..Hudson, 3 O. G. 354; Saw- 
 yer 'ij. Bixby, 1 O. G. 165; Merrill v. Yeomans, 5 O. G. 2b/. 
 
 A distinction must be observed between a new article of commerce and a 
 new article which, as such, is patentable. Any change m form from a previous 
 CO Son may render the article new in commerce; as powdered sugar is 
 a diffe ^ntSle in commerce from loaf sugar, and ground coffej is a different 
 art cle in commerce from coffee in the berry. But to render the article new 
 h ihe sense™f the patent law, it must be more or less efficacious, or possess 
 i^lw properties by I combination with other ingredients; not from a mere 
 Sie oHorm produced by a mechanical division. It is only where one of 
 the e results follows that the product of the compound can be treated as 
 he result of invention or discovery and be -ga^^ed^as a new and useful 
 article — Milligan v. Upton, 97 U. S. 3; 24 L. Ed. 98o. 
 
 Approving, Hotchkiss v. Greenwood, 11 How. 265, Phillips ^^ Paige 24 How 
 167;^Jones t?Morehead, 1 Wall. 162; Simpson ^- Woodman lOWaU. 121 K^^^^^^^ 
 ,, P R Comn (Tanev C C ) 109; Bean v. Smallwood, 2 Story, 411, V\ mans v 
 R R 2 StoV 4T6THicks V. Kelsey, 18 Wall. 670; Un on .. Vandeusen 10 
 iiatdif 119; Sngdon .. DeGroot, 1 Paine, 204; LeRoy .. Tatham, 14 How. 175. 
 
 Where certain properties are known to belong generally to classes of 
 articles there can be no invention in putting a new species of the class n a 
 Tondk on for the development of its properties similar to that m w^ich other 
 Secies of the same class have been placed for similar development; nor can 
 the Aanged form of the article from its condition in bulk to small particles, 
 Ty bieaMng or crushing or slicing or rasping or filing or grinding or sifting 
 o^othex similar mechai^cal means, make it a new a^,.cle m the sense of the 
 patent law. - Milligan v. Upton, 97 U. S. 3; 24 L. Ed. 985.
 
 710 THE FIXED LAW OF PATENTS § 776 
 
 Where a manufacture is claimed without claiming the composition of 
 matter in view of the art the patent was held void. — Brigham v. Coffin, 
 149 U.S. 557; 37 L. Ed. 845; 13 S. Ct. 939. 
 
 Underwood v. Gerber, 149 U. S. 224. 
 
 A claim which does not describe an article differing at all in its completed 
 state from prior articles is clearly invalid. — Risdon v. Medart, 158 U. S. 
 68; 39L. Ed. 899; 15 S. Ct. 745. 
 
 The patent in suit is for a manufacture, and therefore entitled to a more 
 liberal construction or treatment in respect to the question of aggregation of 
 parts than if the invention were a machine. This distinction is stated by- 
 Robinson on Patents, sec. 185, n., but the definition can hardly be deemed 
 clear enough for practical application. — Campbell v. Bay ley, 63 Fed. 463; 
 11 C. C. A. 284. 
 
 An article of manufacture must be patentable, if patentable at all, apart 
 from the mechanical means employed in its production. — Andrews v. 
 Thum, 67 Fed. 911; 15 C. C. A. 67. 
 
 It is only when a new process introduces new characteristics into the 
 manufactured article by which it can be identified and distinguished from all 
 preceding manufactures that the article itself becomes patentably new. — 
 National v. New England, 151 Fed. 19; 80 C. C. A. 485. 
 
 If a lace front stocking is claimed as a patentable product, when made 
 on a seamless machine with a single thread, in a continuous operation, 
 every other well known form of stocking can be considered a patentable 
 product when so made., which would amount to a practically indefinite 
 extension of the monopoly originally granted by the patent for the seamless 
 stocking. It must be admitted that it is somewhat difficult to^ properly 
 define in general terms what is or is not a patentable " manufacture," and dis- 
 tinguish it from the mere effect or result of a process or machine. The difficulty 
 possibly arises from what Robinson calls the want of technical language 
 that will clearly express all that the words " new and useful manufacture " 
 in the patent law connotes. But however this may be, the difficulty is best 
 met, as in the interpretation of all statutes, by a close adherence to the 
 ordinary and common sense meaning and usage of the words employed to 
 express the legislative will. A new and useful product or manufacture must 
 be differentiated from all other articles, by something that is fundamental 
 and radical. In a machine-made, seamless, lace front stocking, we do not 
 find this radical differentiation from the subject-matter of the patent in 
 suit. — Kilborn v. Liveright, 165 Fed. 902; C. C. A. 
 
 Collar Co. v. Vandeusen, 23 WaU. 530; McCloskey v. Du Bois, 8 Fed. 710; 
 Weierman v. Shaw, 157 Fed. 928. 
 
 MARKING " PATENTED." 
 
 The Statute § 776 | Rulings Under the Statute § 777 
 
 § 776. The Statute. 
 
 It shall be the duty of all patentees, and their assigns and legal repre- 
 sentatives, and of all persons making or vending any patented article 
 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
 
 5 777 MARKING " PATENTED " 711 
 
 more of them is enclosed, a label containing the Uke 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 infringement, and continued, after such notice, to make, use, 
 or vend the article so patented. R. S. 4900. 
 
 § 777. Rulings under the Statute. 
 
 In view of the fact that all letters patent are recorded, with their specifi- 
 cations, in the Patent Office, a record which is notice to all the world, it is 
 not an unreasonable requirement that the defendant, who relies upon a want 
 of knowledge upon his part of the actual existence of the patent, should 
 aver the same in his answer, that the defendant may be duly advised of the 
 defense. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 12 S. Ct. 799. 
 
 Providence v. Goodyear, 79 U. S. 788; Allen v. Deacon, 10 Sawy. 210. 
 
 Failure to mark article " patented " or to give notice is a bar to the re- 
 covery of more than nominal damages; and where the question of notice is 
 in dispute it should be left to the jury. — Coupe v. Royer, 155 U. S. 565; 
 39 L. Ed. 263; 15 S. Ct. 199. 
 
 Providence v. Goodyear, 76 U. S. 801; Sessions v. Romadka, 145 U. S. 50; 
 Dunlap V. Schofield, 152 U. S. 247. 
 
 The contention of the appellants that there is no proof that complainant 
 gave public notice of his patent by marking his machines relates only to the 
 question of damages. — Inman v. Beach, 71 Fed. 420; 18 C. C. A, 165. 
 
 The question is not whether the rules of pleading required the allegation of 
 notice in a bill in equity which asked for damages and profits (that question 
 is settled in Dunlap v. Schofield, supra) ; but it is whether the neglect to take 
 notice of the omission, either by answer or by any other form, until after the 
 final decree, was not a waiver of the want of notice. It was so held in Rubber 
 Co. V. Goodyear, 9 Wall. 811, where the point of want of notice did not appear 
 until the hearing before the master, and the court held that the triable issue 
 must be confined to the pleadings. This was affirmed in Sessions v. 
 Romadka, 145 U. S. 29. In Dunlap v. Schofield, supra, (a bill in equity to 
 recover damages), the bill and answer made the proper averments and 
 denials, but no proof was given, and the court held that the burden 
 of proof rested upon the complainant. In Coupe v. Royer, 155 U. S. 583, 
 the pleadings were silent; but the question was actually litigated upon the 
 trial by contradictory evidence, and the court thought that it should have 
 been submitted to the jury. In this case the pleadings were silent. The 
 question never became one actually in issue, and was never raised in the 
 circuit court. 
 
 It is too late to raise for the first time in an appellate court technical 
 questions of pleading or proof which are not jurisdictional in their character, 
 and which were not raised either in the pleadings or before the trial courts, 
 where defects might have been remedied, and which must therefore, be 
 considered to have been waived. It is therefore not necessary to consider 
 whether the provisions of section 4900 are applicable only to cases in law or 
 in equity, in which damages, as distinguished from profits, are the subject 
 of investigation. — Tuttle v. Claflin, 76 Fed. 227; 22 C. C. A. 138. 
 
 The defendants seem to place stress upon the fact that the complainant's 
 boxes had been marked with the dates of other patents beside that of the 
 patent in suit. This solitary fact is of no importance if the patents are of no 
 importance. — National v. Elsas, 86 Fed. 917; 30 C. C. A. 487.
 
 712 THE FIXED LAW OF PATENTS § 778 
 
 That the failure to mark the articles or packages with the word " patented," 
 in order to be employed as a bar against recovery, the fact must be dis- 
 tinctly pleaded, see — Hart v. Anchor, 92 Fed. 657; 34 C. C. A. 606. 
 
 Sessions v. Romadka, 145 U. S. 29. 
 
 As a result of a neglect to mark, or to notify the defendants in the absence 
 of it, damages are denied by the statute; the infringement being otherwise 
 presumptively innocent. An issue being made by the answer, a compliance 
 with the statute is required to be affirmatively shown in order to lay ground 
 for an account. It is immaterial that in the present instance the complainants 
 neither Ucense nor sell their machines, reserving the benefit of the patent 
 for the advantage of their own business. The fact still remains that without 
 notice, either direct or constructive, the defendants are entitled to be re- 
 garded as acting innocently, and so not liable to damages, by the express 
 provision of the statute. — American v. Mills, 162 Fed. 147; 89 C. C. A. 171. 
 
 Dunlap V. Schofield, 152 U. S. 244; U. S. Mitis v. Midvale, 135 Fed. 103. 
 
 Note: This decision is distinctly a step in the right direction. It only 
 remains to make " notice, either direct or constructive," positively sufficient 
 to meet the demands of the statute. 
 
 There is no evidence in the record which shows or tends to show any actual 
 or constructive notice to the defendant of the patent in suit prior to the filing 
 of the bill of complaint. Under circumstances like these, however, an ac- 
 counting of profits and damages subsequent to the date of the filing of the bill 
 was allowed by this court in American v. Mills, 162 Fed. 147. The mandate in 
 that case, by implication at least, clearly permitted such an accounting, and 
 we have not been referred to any controlling .authority to the contrary. Turn- 
 ing to the statute upon this point (R. S. 4900), this goes no further than to pro- 
 hibit the recovery of damages without proof of notice. It prescribes no par- 
 ticular form of notice or any particular time for the accounting. To permit 
 an accounting, ther.efore, after notice is given by the filing of the bill, if the 
 complainant shall establish his right thereto, does not contravene the statute, 
 since, notwithstanding such notice, the complainant can recover no damages 
 unless it affirmatively shows infringement after notice. 
 
 As the proofs now stand, the complainant can recover no damages; but 
 if he shall be able to show infringement after the bill was filed, we see no rea- 
 son why it should not be permitted to do so, and recover the amount so shown, 
 and in this suit. If the complainant's proofs, when taken, shall not affirma- 
 tively disclose infringement subsequent to the filing of the bill, it will be 
 mulcted with costs, and the defendant will not have been injured. — Maimen 
 V. Union, 165 Fed. 440; C. C. A. 
 
 MORTGAGE. 
 
 General Statement and Rulings § 778 | See — ■ Assignment § 149 
 
 § 778. General Statement and Rulings. 
 
 A mortgage interest is an assignable and recordable interest under Sec. 
 4898. It is a curious fact that all of the appellate law bearing directly upon 
 this subject centers about the Waterman Cases. 
 
 The right conferred by letters patent for an invention is limited to a term 
 of years; and a large part of its value consists in the profits derived from 
 royalties and license fees. In analogy to the rules governing mortgages to 
 lands and chattels, and even with stronger reason, the assignee of a patent by 
 a mortgage duly recorded, whose security is constantly wasting by the lapse 
 of time, must be held, (unless otherwise provided in the mortgage) entitled
 
 1 778 MORTGAGE 713 
 
 to grant licenses to receive fees and royalties, and to have an account of 
 profits or an award of damages against infringers. There can be no doubt 
 that he is " the party interested either as patentee, assignee or grantee," 
 and as such entitled to maintain an action at law to recover damages for an 
 infringement; and it cannot have been the intention of Congress that a 
 suit in equity against an infringer to obtain an injunction and an account of 
 Drofits, in which the court is authorized to award damages, when necessary 
 to fully compensate the plaintiff, and has the same powers to treble the 
 damages as in an action at law, should not be brought by the same person, — 
 Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 Root V. Railway, 105 U. S. 189; U. S. R. S. sec. 4919. 
 
 A patent right is incorporeal property, not susceptible of actual deh very and 
 possession, and the recording of a mortgage thereof in the Patent Office, in ac- 
 cordance with the Act of Congress is equivalent to a delivery of possession, and 
 makes the title of the mortgagee complete towards all other persons, as well as 
 against the mortgagor. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. 
 Ed. 923; 11 S. Ct. 334. 
 
 This instrument being a conveyance made to secure the payment of a debt, 
 upon condition that it should be avoided by the subsequent payment of that 
 debt at a time fixed, was a mortgage, in apt terms and in legal effect. — 
 Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 Conard v. Atlantic, 26 U. S. 386,446. 
 
 Whether the court at the suggestion of mortgagor or mortgagee will join 
 the mortgagor to prevent multiplicity of suits or the miscarriage of justice, 
 quaere. — Waterman v. Mackenzie, 138 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 
 334. 
 
 After the mortgagee has taken possession the mortgagor had no power to 
 lease ; and the mortgagor is entitled to have and is bound to account for the 
 accruing rents and profits, and damages. — Waterman v. Mackenzie, 138 
 U. S. 252; 34 L. Ed. 923; 11 S. Ct. 334. 
 
 Keech v. Hall, 1 Doug. 21; Turner v. Cameron's, 5 Exch. 932; Dawson v. 
 Johnson, 1 Fost. & F. 656; Fairclough v. Marshall, L. R. 4 Exch. Div. 37; Sniggs 
 V. Memphis, 108 U. S. 368; Teal v. Walker, 111 U. S. 242; Hutchings v. King, 
 68 U. S. 53; Gove v. Jennes, 19 Me. 53; Bagnall v. Villar, L. R. 12 Ch. Div. 812; 
 Stelle V. Carroll, 37 U. S. 201; Van Ness v. Hyatt, 38 U. S. 294; Brobet v. 
 Brock, 77 U. S. 519. 
 
 The mortgage was subject to the license which had previously been granted 
 to the complainant, and could in no manner operate to restrict or curtail the 
 exclusive right of the complainant to make and sell the patented improve- 
 ments, so long as the hcense should remain unrevoked. The recital in the 
 mortgage of the existence of this license was notice of all its terms and con- 
 ditions, — Waterman v. Shipman, 55 Fed. 982; 5 C. C. A. 371, 
 
 It is entirely clear upon the authority of Waterman v. Mackenzie, 138 U. S. 
 252, that by virtue of the mortgage, the whole title to the patents at the time 
 of the execution of the instrument became vested in the mortgagees, subject 
 only to be defeated by performance of the condition or by redemption 
 within a reasonable time, and that the right of possession of the in- 
 corporeal property was in legal effect delivered to the mortgagees at 
 the time of the recording of the mortgage in the Patent Office, — Waterman 
 V. Shipman, 55 Fed. 982; 5 C. C. A. 371.
 
 714 THE FIXED LAW OF PATENTS §§ 779-780 
 
 OATH. 
 
 Statutory Requirements and General See — Amendment § 52; Defenses 
 Rule § 779 § ^06 
 
 Supplemental Oath § 780 
 
 § 779. Statutory Requirements and General Rule. 
 
 The applicant shall make oath that he does verily believe himself to be the 
 original and first inventor or discoverer of the art, machine, manufacture, 
 composition or improvement for which he solicits a patent ; and that he does 
 not know and does not believe that the same was ever before known or used, 
 and shall state of what country he is a citizen. Such oath may be made 
 before any person within the United States authorized by law to administer 
 oaths, or, when the applicant resides in a foreign country, before any minister, 
 charge d'affaires, consul, or commercial agent holding commission under the 
 Government of the United States, or before any notary public, fudge, or 
 magistrate having an official seal and authorized to administer oaths in the 
 foreign country in which the applicant may be, whose authority shall be proved 
 by certificate of a diplomatic or consular officer of the United States. — R.S.4892, 
 as amended Mar. 3, 1903. 
 
 By the Act 3 Mar. 1903, the clause in italics was substituted for the original 
 clause which read: " of the foreign country in which the applicant may be." 
 
 Section 4895 provides for the granting of patents to assignees, and specifi- 
 cally provides that the application must be made and the oath sworn to by 
 the inventor. It also provides that in cases of reissue the appUcation must 
 be made and the oath made by the inventor, if living. 
 
 Section 4896 provides for the making of oath by the representative of a 
 deceased inventor or of an insane inventor. 
 
 The patent law makes it essential to the validity of a patent that it shall 
 be granted on the application, supported by the oath of the original and first 
 inventor (or of his executor or administrator) whether the patent is issued 
 to him or to his assignee. A patent which is not supported by the oath of the 
 inventor, but applied for by one who is not the inventor, is unauthorized by 
 law, and void, and whether taken out in the name of the applicant or of any 
 assignee of his, confers no rights against the public. — Kennedy v. Hazelton, 
 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. 
 
 U. S. R. S. 4886, 4888, 4892, 4895, 4896, 4920. 
 
 The recitals upon the face of the patent, in the absence of fraud, are con- 
 clusive evidence that the necessary oaths were taken by the applicants 
 before the letters patent were granted. — Seymour v. Osborne, 78 U. S. 516; 
 20 L. Ed. 33. 
 
 That Warren believed himself to be the discoverer of his composition is 
 presumed from his oath to that effect, and that presumption must stand 
 until overthrown by very clear evidence. — Warren v. City, 166 Fed. 309; 
 C. C. A. 
 
 Smith V. Goodyear, 93 U. S. 486; Elizabeth v. Pavement Co. 97 U. S. 126. 
 
 § 780. Supplemental Oath. 
 
 If the application as amended were to be construed as embodying such an 
 invention as is now claimed, it was another and different invention from that 
 for which the patent was originally sought, and, if an amendment having 
 the consequence was permissible, it should have been verified by the oath of 
 the inventor. — American v. Steward, 155 Fed. 731 ; 84 C. C. A. 157.
 
 S§ 781-782 OPERATIVENESS 715 
 
 Ry. Co. V. Sayles, 97 U. S. 554; Eagleton v. West, 111 U. S. 490; Kennedy v. 
 Hazelton, 128 U. S. 667; Mich. v. Consolidated, 67 Fed. 121; Cleveland v. De- 
 troit, 131 Fed. 853. 
 
 Note: A dangerous decision. See 128 Fed. 599. 
 
 OPERATIVENESS. 
 
 General Statement § 781 
 
 Decisions § 782 
 
 See — Anticipatioti § 87; Defenses 
 
 § 314; Reduction to Practice § 860; 
 Reissue § 884 
 
 § 781. General Statement. 
 
 Operativeness relates directly to utility; and while it is true that an 
 inoperative device is lacking in patentable utility, the reverse does not 
 necessarily follow. A device may be operative and still lack patentable 
 utility. Furthermore, operativeness relates to the matter of proper dis- 
 closure of the invention in the patent. One may have, for example, a machine 
 which possesses both utility and operativeness, but if the patent fails to show 
 an operative machine — fails to show that which would enable one skilled 
 in the art to which it appertains or is most nearly related to make and use 
 the same — the invention viewed within the four corners of the grant is 
 inoperative. The authorities under Invention — Evidence of — Utility and 
 Invention — Utility should be examined in cormection with this subject. 
 
 § 782. Decisions. 
 
 The very fact that a machine is patented is some evidence of its operative- 
 ness, as well as of its utility. — Dashiell v. Grosvenor, 162 U. S. 425; 40 
 L. Ed. 1025; 16 S. Ct. 805. 
 
 When a model is constructed after a design showni in a patent, which is 
 not perfectly operative, the inference is that there was an error in working out 
 the drawings, and not that the patentee deliberately took out a patent for a!i 
 inoperative device. — Dashiell v. Grosvenor, 162 U. S. 425; 40 L. Ed. 1025; 
 16 S. Ct. 805. 
 
 We are even further from an ability to determine that a mechanic of 
 ordinary skill in the art could not make the patented machine in issue, and, 
 with the aid of the specification, overcome the minor difficulty to which the 
 appellant refers. The law does not require more than this. Persons pos- 
 sessed of the most brilliant conceptions are sometimes the poorest mechanics. 
 — Packard v. Lacing, 70 Fed. 66; 16 C. C. A. 639. 
 
 Pickering v. McCuUough, 104 U. S. 310; Telephone Cases, 126 U. S. 1; Rob. 
 Pat. sec. 128-129. 
 
 That so long as operative means are disclosed, commercial efficiency is not 
 required, especially in a pioneer invention, see — Von Schmidt v. Bowers, 80 
 Fed. 121; 25 C. C. A. 323. 
 
 Mergenthaler v. Publishing Co. 57 Fed. 502. 
 
 But it is erroneous to suppose that because the element, or the combina- 
 tion of elements, in a claim, do not of themselves constitute an operative 
 thing, or one capable of any use, the claim is therefore void. — Cauda v. 
 Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 It is asserted that the Bradley process is not operative. Having found that 
 the defendant is using the process and it appearing that the annual output
 
 716 
 
 THE FIXED LAW OF PATENTS 
 
 783-784 
 
 of its works is now over 7,000,000 pounds, it seems unnecessary to enter 
 upon an extended discussion of this proposition. — Electric v. Pittsburg, 
 125 Fed. 926; 60 C. C. A. 636. 
 
 It is frequently a characteristic of generic inventions that their first 
 embodiments work imperfectly, and where the imperfections may be rem- 
 edied, as in this case, by what amounts to a mere readjustment of relative 
 sizes, such change does not affect the character of the underlying creative 
 conception. — Scott v. Fisher, 145 Fed. 915; 76 C. C. A. 447. 
 
 PATENT OFFICE. 
 
 The Statutes '§ 783 ' See — Adjudication § 30; Claims 
 
 Arbitrary Conduct § 784 §§ 207-10; Commissioner of Patents 
 
 Decisions of § 785 § 258; Injunction § 575; Interferences 
 
 Rules § 786 § 580; Invention § 630; Res Judicata 
 
 Miscellaneous § 787 § 895 
 
 § 783. The Statutes. 
 
 The Secretary of the Interior is charged with the supervision of business 
 relating to the following subjects: 
 
 *********** 
 
 Fifth. Patents for invention. — R. S. 441. 
 
 There shall be in the Department of the Interior an office known as the 
 Patent Office, where all records, books, models, drawings, specifications, 
 and other papers and things pertaining to patents shall be safely kept and 
 preserved. — R. S. 475. 
 
 _ There shall be in the Patent Office a Commissioner of Patents, one As- 
 sistant Commissioner, and three examiners-in-chief, who shall be appointed 
 by the President, by and with the advice and consent of the Senate. All 
 other officers, clerks, and employees authorized by law for the Office shall be 
 appointed by the Secretary of the Interior, upon the nomination of the Com- 
 missioner of Patents. — R. S. 476. 
 
 Section 440 specifies the salaries of these officers. Sec. 478 provides a 
 seal. Sec. 486 creates the scientific library. Sees. 489 and 496 relate to print- 
 ing and disbursements. While there are numerous other provisions for the 
 conduct of the Office, they need not be quoted here. 
 
 No writer on the subject of patents would do his full duty who did not 
 raise his voice in solemn protest against the present inefficient provision made 
 by Congress for the needs of the Office. 
 
 § 784. Arbitrary Conduct. 
 
 The statute gives the right to join inventions in one application in cases 
 where the inventions are related, and it cannot be denied by a hard and fixed 
 rule which prevents such joinder in all cases. Such a rule is not the exercise 
 of discretion ; it is a determination not to hear. The unity of the inventions 
 claimed is not denied. It is manifest that if an appeal cannot be compelled 
 from the decision of the primary examiner, an applicant is entirely without 
 remedy. It was the duty of the primary examiner to accord a hearing or, 
 refusing to do so, to grant an appeal. — Steinmetz v. Allen, 192 U. S. 543: 
 48L. Ed. 555; 24 S. Ct. 416.
 
 §§ 785-787 PATENT OFFICE 717 
 
 § 785. Decisions of. 
 
 Controlling in subsequent suit between same parties in absence of other 
 thoroughly convincing testimony. — Morgan v. Daniels, 153 U. S. 120; 38 
 L. Ed. 657; 14 S. Ct. 772. 
 
 That office employs the best experts in mechanics which it can secure in 
 this and other countries. Its examinations are, indeed, ex parte in form, but 
 they are nevertheless conducted under hot and skilled contestation in every 
 case of importance; and its decisions, though not conclusive, are entitled to 
 great respect. That ruling takes rank here as the testimony of experts of 
 the highest experience, skill and knowledge in mechanics. — Boyden v. 
 Westinghouse, 70 Fed. 816; 17 C. C. A. 430. 
 
 § 786. Rules. 
 
 If there is a divergence of views between the courts and the Patent Office 
 and the divergence proceeds from a different interpretation of the statute, 
 the view of the courts ought to prevail. — Steinmetz v. Allen, 192 U. S. 543- 
 48L. Ed. 555; 24 S. Ct. 416. 
 
 The Patent Office has not been consistent in its views in regard to the 
 division of inventions. At times convenience of administration has seemed to 
 be of greatest concern ; at other times more anxiety has been shown for the 
 rights of inventors. The policy of the office has been denominated that of 
 " battledore and shuttlecock " and rule 41 as it now exists was enacted to 
 give simplicity and uniformity to the practice of the office. Its enactment was 
 attempted to be justified by the assumption that the patent laws gave the 
 office a discretion to permit or deny a joinder of inventions. But, as we have 
 already said, to establish a rule applicable to all cases is not to exercise dis- 
 cretion. Such a -rule ignores the differences which invoke discretion, and 
 which can alone justify its exercise, and we are of opinion therefore that rule 
 41 is an invahd regulation. — Steinmetz v. Allen, 192 U. S. 543; 48 L. Ed. 
 555; 24S. Ct. 416. 
 
 If there is inconsistency between the (Patent Office) rules and Statute, the 
 latter must prevail. — Steinmetz v. Allen, 192 U. S. 543; 48 L. Ed. 555* 
 24 S. Ct. 416. 
 
 § 787. Miscellaneous. 
 
 The judgment of the patent office, the tribunal established by Congress to 
 determine such questions, was adverse to the contention of the government, 
 and such judgment cannot be reviewed in this suit. — United States v. Am. 
 Bell, 167 U. S. 224; 42 L. Ed. 144; 17 S. Ct. 809. 
 
 The six months within which the final fee for a patent must be paid as 
 prescribed by R. S. sec. 4897 means six calendar months. — Economy v. 
 Lamprey, 65 Fed. 1000; 13 C. C. A. 271. 
 
 Guaranty v. Green, 139 U. S. 137; Seemingly overruling Walk. Pat. sec. 125; 
 Rob. Pat. sec. 585; 2 Bouv. Law. sec. 7. 
 
 Unless the Patent Office itself is satisfied of the patent's validity, the public 
 should not be burdened with a monopoly, with the expectation that the 
 courts will invalidate it. — Weissenthanner v. Dodge, 161 Fed. 915: 88 
 C. C. A. 388.
 
 718 
 
 THE FIXED LAW OF PATENTS 
 
 788-789 
 
 PLEADING AND PRACTICE. 
 
 General Statement § 788 
 
 Amendment § 789 
 
 Bill of Review § 790 
 
 Demurrer § 791 
 
 Infringement § 792 (see § 445) 
 
 Laches § 793 
 
 Multifariousness § 794 {see § 804) 
 
 Notice § 795 
 
 Parties 
 
 Complainant § 796 
 
 Defendant § 797 
 
 Joinder § 798 
 Patentability § 799 
 Pleas § 800 (see § 21) 
 Profert § 801 
 Replication § 802 
 Sufficiency § 803 
 
 Suit on Plurality of Patents § 804 
 (see § 794) 
 
 Supplemental Bills § 805 
 Title § 806 (see § 925) 
 Miscellaneous Rules of Practice and 
 Pleading § 807 
 
 See — Abatement § 21; Actions § 24; 
 Adjudication § 28; Appeals § 109; 
 Arbitration § 145; Comity § 250; 
 Cos^s § 272; Damages § 278; Decrees 
 § 301; Defenses § 306; Demurrer 
 § 323; Equity § 370; Estoppel § 381; 
 Fraud § 425; Infringement §§ 483-4, 
 516; Injunction § 533; Interferences 
 §§ 582-3; Interfering Patents § 586; 
 Jurisdiction § 713; Laches § 726; 
 Law Actions § 733; Marking " Pa- 
 tented " § 776; Profits § 825; Rehear- 
 ings § 868; Reopening Case § 890; 
 Res Judicata § 893 
 
 § 788. General Statement. 
 
 This work deals with the subjects of pleading and practice only so far as 
 the appellate courts have ruled on those subjects in patent causes. The fol- 
 lowing sections, therefore, cover only a small portion of the law applicable 
 to such actions, and should not be relied upon by the practitioner as being 
 in any sense complete. 
 
 § 789. Amendment. 
 
 A motion to amend, or file an answer after default, is generally addressed 
 to the discretion of the court. — Dean v. Mason, 61 U. S. 198; 15 L. Ed. 876. 
 
 Defendants admitted making the patented device and justified under the 
 plea of title. Becoming satisfied that their title was bad they moved to 
 amend by denying validity of the patent and also denying infringement. 
 
 Held: that amendment denying vaUdity could be made but that the 
 admission of infringement must stand. — Jones v. Morehead, 68 U. S. 155; 
 17 L. Ed. 662. 
 
 It would be subversive of all sound practice, and tend largely to defeat 
 the ends of justice, if the court should refuse to accept a fact as settled 
 which is distinctly alleged in the bill and admitted in the answer. — Jones 
 V. Morehead, 68 U. S. 155; 17 L. Ed. 662. 
 
 Crockett v. Lee, 7 Wheat. 523. 
 
 Issues not raised by the pleadings cannot be brought in when the case is 
 before a master. — Rubber v. Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 The bill did not set up specifically the second reissue, but the case was tried 
 on the theory that such reissue had been pleaded. Amendment setting forth 
 such reissue was allowed after decree on the ground that the defendant was 
 not injured and such pleading conformed to the proofs. — Tremain v. 
 Hitchcock, 90 U. S. 518; 23 L. Ed. 97. 
 
 It is competent to allow an amendment to answer nunc pro tunc giving 
 notice of prior use. — Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. 
 Teese v. Huntington, 23 How. 2.
 
 § 790 PLEADING AND PRACTICE 719 
 
 We have already found that, as the record stands, it contains no proof 
 to sustain an allegation of this character. Therefore an amendment of this 
 nature would require the opening of the record below for further proofs. It 
 is not at all a case where a complainant has proved his case, but his allega- 
 tions are found by the appellate court to be inapt. To grant this motion 
 would, under the circumstances, violate all rules requiring diligence from 
 parties complainant. — American v. U. S., 68 Fed. 542; 15 C. C. A. 569. 
 
 We think the distinction must be kept closely in view between amendments 
 allowable before an appeal and those for which a case is to be kept along 
 thereafter. This case comes within the closing remarks of our opinion in 
 Am. Bell Tel. Co. v. U. S. 68 Fed. 542, 570, as follows : We have already found 
 that, as the record stands, it contains no proof to sustain an allegation 
 of this character. Therefore an amendment of this nature would require 
 the opening of the record below for further proofs. It is not at all a case where 
 a complainant has proved his case, but his allegations are found by the ap- 
 pellate court to be inapt. To grant this motion would, under the circum- 
 stances, violate all the rules requiring diligence from parties complainant. 
 — Martin v. Martin, 71 Fed. 519; 18 C. C. A. 234. 
 
 The appellee now moves for leave to amend his brief in this court by 
 introducing a prior patent, which he maintains, shows the improvement 
 which the claims in issue would cover on the construction of them, which 
 the appellant contends for. The appellee does not offer this as " proof," 
 in the proper sense of the word, and, of course, if so offered, it could not be 
 received in the court, unless by consent of both parties. — Parsons v. Seelye, 
 100 Fed. 452; 40 C. C. A. 484. 
 
 U. S. V. Hopewell, 51 Fed. 798; Nashua v. Boston, 61 Fed. 237. 
 
 The granting leave to file an amended and supplemental bill is within the 
 discretion of the court. Railroad v. Newman, 77 Fed. 791. The granting 
 or refusing leave to file an amended bill or plea is a matter within the dis- 
 cretion of the trial court, and will not be reviewed in an appellate court 
 unless there has been gross abuse of this discretion. Chapman v. Barney, 
 129 U. S. 677; Gormley v. Bunyan, 138 U. S. 623; Marco v. Hicklin, 56 
 Fed. 549. As a general rule matters resting in the discretion of the court 
 below cannot be re-examined in the appellate court. Cheang-Kee v. U. S. 
 3 Wall. 320. In the case at bar the court exercised its discretion after careful 
 examination. A petition was filed asking leave to file the amended and sup- 
 plemental bill. Notice was given. A day was fixed for the hearing, and full 
 discussion was had. We see no abuse of discretion in the court. — Berliner v. 
 Seaman, 113 Fed. 756; 51 C. C. A. 440. 
 
 Bates, Fed. Eq. Pr. sec. 637. 
 
 § 790. Bill of Review. 
 
 New e\ddence, discovered after the hearing before the master is closed, 
 may, in proper cases, be ground for bill of review, on which issue may be 
 joined and evidence adduced by both parties in the usual way. — Thompson 
 V. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 The subject matter of a litigation having been disposed of on appeal in 
 another suit, after appeal in this suit, a supplemental bill in the form of 
 a bill of review will be ordered. — Ballard v. Searles, 130 U. S. 50; 32 
 L. Ed. 846; 9 S. Ct. 418.
 
 720 THE FIXED LAW OF PATENTS § 790 
 
 The case being affirmed on an issue not raised, but raised by the court, a 
 special mandate will be made to allow a bill of review. — Woodward v. 
 Boston, 63 Fed. 609; 11 C. C. A. 353. 
 
 The question has been made whether, ordinarily, equity requires that a bill 
 of review should be permitted to be filed on a new issue which might have 
 been presented in the principal cause, but was not. On general principles, 
 it would seem that there would be no equity in this behalf, unless in very 
 exceptional cases. Nevertheless later authorities do not permit a formulated 
 rule of this character, and as no fixed formula can ever be laid down, limiting 
 equity as to relief against error, fraud, or misfortune, all that can be said 
 in this behalf is that, under the circumstances, the fact that the petitioner 
 for the review was originally contented to rest his case on certain issues 
 ought to bar him from calling on equity to aid him to present new issues 
 after he has been defeated as the result of protracted litigation in the prin- 
 cipal causes. — Boston v. Bemis, 98 Fed. 121; 38 C. C. A. 661. 
 
 The new matter should be such as if known, " might probably have pro- 
 duced a different determination; " and that there would be " a reasonable 
 probabihty that the proofs if they sustained the allegations of the petition, 
 would require reconsideration from us if the case should come here again." 
 — Boston V. Bemis, 98 Fed. 121 ; 38 C. C. A. 661. 
 
 Story Eq. PI. 10th ed. sec. 413; Daniell Chan. Prac. 6 ed. 1577; Re Gamewell, 
 73 Fed. 908. 
 
 With reference to the nature and degree of diligence which must be shown 
 in a petition of this character. Lord Bacon's rule requires that the new proof 
 " could not possibly have been used at the time when the decree was passed." 
 Story says that it must be such as the party, by the use of reasonable dili- 
 gence, could not have known. The necessity for enforcing this rule strictly, 
 with reference to anticipatory matter, was stated in re Gamewell, 73 Fed. 
 908 ; and the new defence now sought to be raised is of the same family. — 
 Boston V. Bemis, 98 Fed. 121 ; 38 C. C. A. 661. 
 
 Purcell V. UUner, 4 Wall. 519; Story Eq. PI. 10 ed. sec. 414; Young v. Keighly, 
 16 Ves. 348. 
 
 The record shows that not until after the patent had been long contested 
 did the real defendant, the Brill Company, make any effort to discover 
 prior use where it would be most likely to be found. When defendant did 
 go to the residence of the inventor at the time he obtained his patent, it 
 only required a single day to at once discover substantially all of the material 
 evidence presented on the petition. It was held that in view of this fact, 
 and in view of the fact that defendant was dealing with the railroad com- 
 panies, constantly, by whom such prior use would have been had, presented 
 a case where due diligence was palpably wanting. — Boston v. Bemis, 98 
 Fed. 121; 38 C. C. A. 661. 
 
 The question of laches is ordinarily for the court below. In the case at 
 bar, however, we have a form of petition, setting out all the facts neces- 
 sary to dispose of the question of laches, while, as already said, the affidavits 
 are. so contradictory that the court cannot properly dispose of that of ma- 
 teriality, although ordinarily it is for the appellate tribunal. — Boston v. 
 Bemis, 98 Fed. 121 ; 38 C. C. A. 661. 
 
 The patent in suit, it was averred by the petitioner, expired pending appeal 
 by reason of the expiration of a foreign patent. The petitioner did not inform 
 the court of such fact at the time of argument on appeal; and the court held
 
 §§ 791-792 PLEADING AND PRACTICE 721 
 
 that such conduct constituted sufficient laches to prevent the granting of 
 the petition to lift the injunction or limit the accounting. — Westinghouse v. 
 Stanley, 138 Fed. 823; 71 C. C. A. 189. 
 
 In re Gamewell, 73 Fed. 908; Boston v. Bemis, 98 Fed. 121; Mossberg v. 
 Nutter, 124 Fed. 966; Kisinger-Ison v, Bradford, 123 Fed. 91: Ricker v. Powell, 
 100 U. S. 104; Story, Eq. PI. sec. 406. 
 
 §791. Demurrer. 
 
 If it be suggested that the claim of the patent is for the boot described, 
 and that the bill merely alleges that the defendant has made, used and sold 
 boots containing and embracing the invention covered by the patent, in- 
 stead of alleging that the defendant had made, used and sold the invention 
 on the patented boot, we are of opinion that there is no force in the objection. 
 The bill is entirely sufficient to put the defendant upon his answer. — McCoy 
 V. Nelson, 121 U. S. 484; 30 L. Ed. 1017; 7 S. Ct. 1000. 
 
 Where demurrer was had to a bill on the ground that the invention was not 
 patentable, we think that the demurrer should have been overruled, and 
 that the defendants should have been put to answer the bill. Whether 
 or not the design is new is a question of fact, which, whatever our impressions 
 may be, we do not think it proper to determine by taking judicial notice 
 of the various designs which may have come under our observation. It is a 
 question which may and should be raised by answer and settled by proper 
 proofs. — New York v. New Jersey, 137 U. S. 445; 34 L. Ed. 741 ; 11 S. Ct. 
 193. 
 
 § 792, Infringement. 
 
 The circuit court held that the bill could not be maintained for several 
 infringements by portions of the respondents because they are described 
 as a copartnership. Nevertheless it sets out that they infringed " jointly 
 and severally," so that the reference to them as copartners is merely de- 
 scriptio personarum, which cannot override a positive allegation. — Hobbs 
 V. Gooding, 111 Fed. 403; 49 C. C. A. 414. 
 
 Simonds v. Hathorn, 93 Fed. 958. 
 
 The averment of the bill charged the defendant with infringement " within 
 the said Eastern District of Michigan, and since the first day of January, 
 1893." It is not fairly open to the construction that the infringement 
 charged began on the 1st day of January, 1893, and has continued ever 
 since. The natural and reasonable construction is that the infringement 
 charged occurred after or subsequent to January 1, 1893, without specifying 
 precisely when. — U.S. Mitts v. Detroit, 122 Fed. 863; 59 C. C. A. 589. 
 
 Kaolatype v. Hoke, 30 Fed. 444; Wycoff v. Wagner, 88 Fed. 515. 
 
 In some rare instances where the cases seem to have been exceptional, the 
 plaintiff in an infringement suit has been required to specify in limine the 
 claims relied on, but there is no such precedent in this circuit for such an 
 order. Applications therefor were denied by the Circuit Court in Johnson v. 
 Columbia and Johnson v. National, 106 Fed. 319. — Morton v. American, 
 129 Fed. 916; 64 C. C. A. 367. 
 
 The argument rests upon the omission to aver in the bill that infringe- 
 ment occurred "at New York City in the Southern District of New York and 
 elsewhere " — • the words " and elsewhere " being omitted. But the de- 
 fendants denied that they had infringed at New York City or elsewhere, and 
 the case was tried in all respects as if the question were properly presented
 
 722 THE FIXED LAW OF PATENTS §§ 793-795 
 
 by the pleadings. It would be a hardship to all concerned to subject them 
 to the expense and annoyance of a new action when the addition of the two 
 words " and elsewhere " will make the bill criticism proof. — O'Rourke v. 
 McMuUen, 160 Fed. 933; 88 C. C. A. 115. 
 
 § 793. Laches. 
 
 The defense of laches need not even be set up in the pleadings when it is 
 apparent that the court may upon its own motion refuse relief on that ground. 
 
 — Sullivan v. Railroad, 94 U. S. 806; 24 L. Ed. 324. 
 
 Laches is a defense which may be made by demurrer, or by plea, or by 
 answer, or presented by argument, either upon a prehminary or final hearing. 
 
 — Woodmansee v. Williams, 68 Fed. 489; 15 C. C. A. 520. 
 
 Keyes v. Eureka, 158 U. S. 150; McLaughlin v. Railway, 21 Fed. 574; Lane v. 
 Locke, 150 U. S. 193; Maxwell v, Kennedy, 8 How. 222; Walker, 597; Curtis, 
 440. 
 
 § 794. Multifariousness. 
 
 We do not regard a bill multifarious which seeks to enjoin an unauthorized 
 person from using a patented article, and also from using the generic name 
 of that article. — Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. 
 
 Animarium v. Neiman, 98 Fed. 14; Javos v. Fleece, 60 Fed. 622; Weir v. Gas 
 Co. 91 Fed. 940; Dennison v. Thomas, 94 Fed. 651; Harper v. Holman, 84 Fed. 
 222; U. S. V. American, 128 U. S. 315; Oliver v. Piatt, 3 How. 333. 
 
 § 795. Notice. 
 
 Defendants undertook to prove specific prior use by witness without 
 statutory notice. Held: Inadmissible. — Railroad v. Stimpson, 14 Pet. 
 448; 10 L. Ed. 535. 
 
 The defendant gave notice of a prior publication by reference merely to 
 a book of some 1300 pages, giving neither page nor topic. Rejected as in- 
 sufficient. — Silsby V. Foote, 14 How. 218; 14 L. Ed. 394. 
 
 The notice merely gave the name and place of residence of the person 
 alleged to have had prior knowledge and use; Held: that the notice should 
 also have stated where the use was had. — Silsby v. Foote, 14 How. 
 218; 14 L. Ed. 394. 
 
 Prior invention cannot be set up and proved, unless properly pleaded 
 under the statute of notice. — O'Reilly v. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 A court order is not required either for the original or an amended notice 
 under the statute. — Teese v. Huntington, 23 How. 2 ; 16 L. Ed. 479. 
 
 It is not necessary to state the time, in addition to the person and place, 
 in the statutory notice, or if stated by the defendant, restricted in proof to 
 the time specified. — Phillips v. Page, 65 U. S. 164; 16 L. Ed. 636. 
 
 When, in addition to the particular town or city, the name and residence 
 of the witness by whom that use is to be proved is also given there is suffi- 
 cient precision and certainty in the notice. — Wise v. Allis, 76 U. S. 737; 
 19 L. Ed. 784. 
 
 Phillips V. Page, 24 How. 164.
 
 i 795 PLEADING AND PRACTICE 723 
 
 Nor do we think that a party giving notice is bound to be so specific as 
 to relieve the other from all inquiry or effort to investigate the facts. — Wise 
 V. AUis, 76 U. S. 737; 19 L. Ed. 784. 
 
 The purpose of the statutory notice is to apprise plaintiff fairly of what 
 he may expect to meet. — Wise v. Allis, 76 U. S. 737; 19 L. Ed. 784. 
 Teese v. Huntington, 23 How. 10. 
 
 The defense of want of novelty can be raised only upon the statutory 
 notice. — Blanchard v. Putnam, 75 U. S. 420; 19 L. Ed. 433. 
 
 Coming v. Burden, 15 How. 271; Teese v. Huntington, 23 How. 10; Agawam 
 V. Jordan, 7 Wall. 583; R. R. v. Stimpson, 14 Pet. 459; Silsby v. Foote, 14 How. 
 222; Phillips v. Page, 24 How. 168. 
 
 The defendant must comply with the requirements of the statute to raise 
 the defense of anticipation. — Agawam v. Jordan, 74 U. S. 583; 19 L. Ed. 
 177. 
 
 Wilton V. R. R. 1 Wall. Jr. 195; Teese v. Huntington, 23 How. 10. 
 
 It is an abuse of the privilege of giving such notice without some reason to 
 suppose some defense can be successfully made and the proofs obtained, as it 
 exposes the complainant to unnecessary expense and trouble in preparing for 
 trial. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Parties defendant, such as infringers, are not allowed in an action at law 
 to set up the defense of a previous invention, knowledge or use of the thing 
 patented unless they have given notice of such a defense 30 days before the 
 time, and have stated in the notice " the names and places of residence of 
 those whom they intend to prove to have possessed a prior knowledge 
 of the thing and where the same had been used; " and the settled practice 
 in equity is to require the respondent, as a condition precedent to such a 
 defense, to give the complainant substantially the same information in his 
 answer. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Agawam v. Jordan, 7 Wall. 596; Teese v. Huntington, 23 How. 10. 
 
 In the absence of notice on pleading in equity, evidence to assail novelty 
 cannot be considered. — Eureka v. Bailey, 78 U. S. 488; 20 L. Ed. 209. 
 
 The statute requiring notice was not intended to apply to cases involving 
 matters of common knowledge. The court can take judicial notice of it and 
 give it the same effect as if it had been set up as a defense in the answer 
 and the proof were plenary. — Brown v. Piper, 91 U. S. 37; 23 L. Ed. 200. 
 
 Glue Co. V. Upton, 6 O. G. 843; Needham v. Washburn, 7. O. G. 651. 
 
 Parties defendant sued as infringers are not allowed, in an action at law, 
 to set up the defense of a prior invention, knowledge or use of the thing pa- 
 tented unless they have given the statutory notice. — Roemer v. Simon, 
 95 U. S. 214; 24 L. Ed. 384. 
 
 R S sec. 4920; Seymour v. Osborne, 11 Wall. 516; Blanchard v. Putnam, 8 
 Wall. 420. 
 
 It is well settled law that the failure to interpose objection before the 
 final hearing is a waiver of the required notice in an equity suit. — Roemer 
 V. Simon, 95 U. S. 214; 24 L. Ed. 384. 
 
 Brown v. Hall. 6 Blatchf. 405.
 
 724 THE FIXED LAW OF PATENTS § 79G 
 
 The requirement as to names and residences of persons having prior knowl- 
 edge etc does not include names of witnesses called by the defense to make 
 such proof. — Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. 
 
 Teese v. Huntington, 23 How. 2. 
 
 Persons sued as infringers in a suit in equity, if they give the required 
 notice in their answer, may prove at the final hearing the same matters ni 
 defense to the charge of infringement as those w^hich the defendant, in an 
 action at law, may set up under like conditions. — Bates v. Coe, 98 U. S. 31 ; 
 23 L. Ed. 68. 
 
 Section 4920 R. S. declares that the proofs of previous invention, knowl- 
 edge or use of the thing patented, may be given upon notice, in the answer of 
 the defendant, stating 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. The statute does not declare that 
 the names of the witnesses who may be called to testify to such prior in- 
 vention or use shall be stated in the answer. It is only the names and resi- 
 dences of the persons alleged to have invented or to have had prior knowledge 
 of the thing patented that are required. — Woodbury v. Keith, 101 U. S. 
 479; 25 L. Ed. 939. 
 
 Wilton 1) R. R. 1 Wall. Jr. 195; Many v. Jagger, 1 Blatchf. 376; Roemer v. 
 Simon, 95 U. S. 218. 
 
 When the answer admitted and the proofs showed defendant had made 
 and sold the device of the patent in suit five years, four years of said time 
 being prior to the date of the patent, it was held such answer was sufficient 
 as to notice and the proofs as to prior use. — Anderson v. Miller, 129 U. S. 
 70; 32 L. Ed. 635; 9 S. Ct. 224. 
 
 These two patents were not set up in the answer, and cannot, therefore, 
 be availed of as an anticipation to invalidate the claim upon the ground 
 of want of novelty. Grier v. Wilt, 120 U. S. 429. But they are admissible 
 in evidence as showing the state of the prior art; and when the court, ad- 
 vised as to the prior art, reaches the conclusion that the improvement on 
 such prior art described in the patent sued on did not embody or require 
 invention, and was not patentable, it is the duty of the court to dismiss the 
 cause on that ground. " The question whether the invention which is the 
 subject-matter in controversy is patentable, or not, is always open to the 
 consideration of the court, whether the point is raised by answer or not." 
 — Jones V. Cyphers, 126 Fed. 753; 62 C. C. A. 21. 
 
 Slawson v. Grand, 107 U. S. 652; Mahn v. Harwood, 112 U. S. 358; Hendy v. 
 Miners', 127 U. S. 375. 
 
 The law is well settled that the defendant to a suit for infringement must 
 give notice in his answer of any defense by way of prior patents, publications, 
 or public use, if he desires to prove any of such defenses to show want of 
 novelty or invention in the patent sued on. Otherwise such defenses are 
 receivable in evidence only to show the state of the art, and to aid in the 
 proper construction of the patent. — Morton v. Llewellyn, 164 Fed. 693 ; 
 C. C. A. 
 
 Grier v. Wilt, 120 U. S. 412; Vance v. Campbell, 1 Black, 427; Railroad v. 
 Dubois, 12 Wall. 47; Brown v. Piper, 91 U. S. 37; Eachus v. Broomall, 115 
 U. S. 429. 
 
 § 796. Parties — Complainant. 
 
 Grants as well as assignments must be in writing, and they must carry 
 the exclusive right under the patent, to make, use and vend to others to be
 
 § 796 PLEADING AND PRACTICE 
 
 725 
 
 used the thing patented, within and throughout some specified district or 
 portion of the U. S. and such right must be exclusive of the grantee as weU 
 as of all others except the grantee. Suits for infringement in such districts 
 if committed subsequent to the grant, can only be brought m the name of 
 the grantee, as it is clear that no one can maintain such an action until ms 
 rights have been invaded, nor until he is interested in_the damages to be 
 re'covered. — Moore v. Marsh, 74 U. S. 515; 19 L. Ed. 3/. 
 
 Assignee of territorial right, for a particular district could not bring an 
 action on the patent in his own name; but the Act of Congress haAang made 
 him a party interested in the patent, it is now equally well settled that he 
 may sue in his own name for invasion of the patent in that territorial dis- 
 trict, as no one else is injured by any such infringement. - Moore v. Marsh, 
 74 li. S. 515; 19 L. Ed. 37. 
 
 Tyler t'. Tuel, 6 Cranch, 324; Gaylor v. Wilder, 10 How. 477; Curt. Pat. 346. 
 
 When the patentee has assigned his whole interest, either before or after 
 the patent has issued, the action must be brought m the name of the as- 
 signee because he alone was interested in the patent at the time the infringe- 
 ment took place; but when the assignment is of an undivided part of the 
 patent the action should be brought for every infringement committed 
 subsequent to the assignment in the joint names of the patentee and as- 
 signee, as representing the entire interest. - Moore v. Marsh, /4 U. b. 515, 
 
 t r\ T XT 1 Q7 
 
 Herbert,'^. Adams. 4 Mas. 15; Curt. Pat. 347; Gayler ^-Wilder 10 How. 477; 
 Whittemore v. Cutter, 1 GaU. 430; Woodworth v. ^^ ilson, 4 Ho^ . 712. 
 
 Correct interpretation of the words " person or persons interested " is 
 that the words mean the person or persons mterested in the Patent at 
 the time when the infringement was committed which ;« the cause of act on 
 for which the damages may be recovered. — Moore v. Marsh, 74 U. b. 515, 
 19 L. Ed. 37. 
 
 Dean v. Mason, 20 How. 198. 
 
 Licensees must enforce their rights through the name of the patentee 
 (or assignee). - Paper Bag Cases, 105 U. S. 766; 26 L. Ed. 959. 
 Littlefield v. Perry, 88 U. S. 223. 
 
 A licensee of a patent cannot bring a suit in his own name at law or m 
 eauitv for its infringement by a stranger; an action at law for the benefit of 
 Se icensee must he brought in the name of the patentee alone; a siut in 
 equi y may be brought by the patentee and the Ucensee together. - Bird- 
 sail /Shaiiol, 112 U. S. 485; 28 L. Ed. 768; 5 S. Ct. 244 
 
 Gayler v. Wilder, 10 How. 477; Littlefield v. Perry, 21 Wall. 20o; Paper Bag 
 Cases, 105 U. S. 766. 
 
 The obiection that the plaintiff is not entitled to maintain this suit be- 
 cause it do s not itself manufacture is without force Its nght to sue for 
 the protection of its licensees is unquestionable. - Adams v. Tannage, 81 
 Fed. 178; 26 C. C. A. 326. 
 
 That the granting of a license carries with it the ^ghtfor the licensee to 
 join the Hcensor as co-complainant, see- Excelsior v. Allen, 104 Fed. 553, 
 44 C. C. A. 30. 
 
 Nor is a court of equity divested of its power to decree appropriate and 
 final rehef from the fact, if it be a fact, that the patentee has conspired with
 
 726 THE FIXED LAW OF PATENTS §§ 797-798 
 
 the defendant to infringe the rights of the hcensee. The former practice 
 of courts of Chancery which required the dismissal of a bill ni case of the 
 joinder of complainants whose interests were antagonistic, has given place to 
 a more equitable procedure, which recognizes the power of the court to so ar- 
 range the parties to the suit as their interests demand, to make a complauiant 
 a defendant, and to decree relief to all parties before it, whether they appear 
 as complainants or defendants so long as they are all the necessary parties 
 to the controversy. — Excelsior v. Allen, 104 Fed. 553; 44 C. C. A. 30. 
 
 Bouehton v Allen, 11 Page 321; Osgood v. Franklin, 2 John. Ch. 1; Bowen v. 
 Ibley 1 Edw Ch 148; LeFort v. Delafield, 3 Edw. Ch. 22; Parkman's Admr. v. 
 Aicardi, 34 Ala. 393; Snydam v. Dequidre, Har. Rep. 347; U. S. v. Union, 98 
 U. S. 569. 
 
 § 797. Parties — Defendant. 
 
 The suit was brought against the company and three individual defend- 
 ants The court below Hmited its decree in favor of the complainant to the 
 joint infringement of all the defendants. We see no sufficient reason, under 
 the present bill, why the defendant Hathorn should not account for his 
 several or individual infringements. We understand this to be the general 
 rule. — Simonds v. Hathorn, 93 Fed. 958; 36 C. C. A. 24. 
 
 Herring v. Gage, Fed. Cas. 6,422; Tatham v. Lowber, Fed. Cas. 13,765; New 
 York V. American, 42 Fed. 455. 
 
 Maxwell was properly enjoined as an infringer by reason of his connection 
 with the two corporations. — National v. Polk, 121 Fed. 742; 58 C. C. A. 24. 
 
 Rob. Pat. sec. 897; Trent v. Risdon, 102 Fed. 635; Toppan v. Tiffany, 39 
 Fed. 420. 
 
 An injunction against the corporation restrains all its officers, agents 
 and servants and there is Uttle justification for making these persons de- 
 fendants except in rare instances where it is shown that they have infringed 
 the patent as individuals or have personally directed infringement. The 
 courts of this circuit have frequently had occasion to criticise this practice 
 and have, in some instances, imposed costs upon the complainant as a pen- 
 alty for thus subjecting innocent parties, to the expense and annoyance 
 of defending themselves against an unwarrantable accusation. (Costs 
 were imposed in this case.) — Hutter v. De Q. Bottle, 128 Fed. 283 ; 62 C. C. A. 
 652. 
 
 Farmers' v Spruks, 119 Fed. 594; Consolidated v. Columbian, 79 Fed. 795; 
 Bowers v Atlantic, 104 Fed. 887; King v. Anderson, 90 Fed. 500; Greene v. 
 Buckley, 120 Fed. 955; Rowbotham v. Iron, 71 Fed. 759; Linotype v. Ridder, 
 65 Fed. 853; Howard v. Plow, 35 Fed. 743. 
 
 The facts recited in the statement of the case satisfy us that the company 
 is simply an incorporation of Duncan. Therefore the corporation should 
 be enjoined, just cts its officers, directors, and stockholders would be, if, 
 as individuals and without resorting to the corporate form, they were aiding 
 and abetting Duncan in the infringement. — Siemens-Halske v. Duncan, 142 
 Fed. 157; 73 C. C. A. 375. 
 
 Telegraph v. Himmer, 19 Fed. 322; Parker v. McKee, 24 Fed. 808; Burr v. 
 Kimbark, 28 Fed 574; Burdsall v. Curran, 31 Fed. 918; Woodward v. Boston, 
 60 Fed. 283; National v. Connecticut, 73 Fed. 491; Daniel v. Miller, 81 Fed. 
 1000; Alvin v. Scharling, 100 Fed. 87. 
 
 § 798. Parties — Joinder. 
 
 One holding the exclusive right to a specific territory may be joined as 
 party plaintiff in a suit for infringement within his territory in an action
 
 § 798 PLEADING AND PRACTICE 727 
 
 by the holder of the superior title. --- Woodworth v. Wilson. 4 How. 712- 
 11 L. Ed. 1171. 
 
 It is the rule that none should be made parties plaintiff or defendant in 
 equity who have no interest in the controversy or who cannot be affected 
 by the decree. In cases where the want of interest applies it is equally fatal 
 when apphcable to plaintiffs or defendants. In the former case it is fatal 
 to the whole suit; in the latter it is fatal, if taken in due time, only against 
 the defendant improperly joined. Objection ought to be taken by demurrer, 
 for if not so taken, and the court proceeds to a hearing on the merits it 
 will be disregarded, at least if it does not materially affect the propriety 
 of the decree. In the case before us the objection of misjoinder appears 
 nowhere upon the pleadings, and is urged for the first time after final decree. 
 As to this objection, therefore, it comes too late. — Livingston v. Wood- 
 worth, 15 How. 546; 14 L. Ed. 809. 
 
 Story Eq. ch. 4, sec. 231; Raffity v. King, VI L. J. 93; Morley v. Hawkes. 
 Y. & J. 520; Alywin v. Bray, Y. & J. 518. 
 
 In an equity suit by the patentee, the court may order the joinder of a 
 hcensee. — Birdsall v. Shaliol, 112 U. S. 485; 28 L. Ed. 768; 5 S. Ct. 244. 
 Hammond v. Hart, 4 Ban. & A. 111. 
 
 The 0. S. Co. brought this action against defendant S. P. Co. for infringe- 
 ment in transporting cars made by Whittier, Fuller & Co. which were alleged 
 to infringe complainant's patent. Preliminary injunction issued on SoOOO 
 bond filed by complainant. Defendant answered setting up fact of owner- 
 ship of the cars in Whittier, F. & Co. and the fact that defendant as a common 
 carrier was obliged to transport the cars. Thereupon Whittier, Fuller & Co. 
 petitioned to intervene and defend. Petition was granted and complainant 
 ordered to file a new bond for S20,000. Held: We find no difficulty, under the 
 circumstances, in determining that Whittier, Fuller & Co. were properly 
 admitted as defendants in the action, and that the court had authority, 
 under its equitable jurisdiction, to require a new bond of the complainant, 
 to meet the new conditions of the case. — Standard v. Southern, 54 Fed. 
 521; 4 C. C. A. 491. 
 
 The patent was assigned conveying the entire right, title and interest 
 of the assignor, but with a hcense fee provision, and conditions subsequent 
 by which the title might revert to the assignor. The assignor was made a 
 party to the action. On demurrer it was held: That the so-called license 
 was an absolute grant, and that the assignor was not a necessary party to 
 the action. — Sichler v. Deere, 113 Fed. 285; 51 C. C. A. 242. 
 
 It is true that a licensee cannot prosecute a suit in equity in his own name 
 against a third party for infringement, but must at least join the patentee 
 as co-complainant, who may be so joined whether willing or unwilling. — 
 Excelsior v. City of Seattle, 117 Fed. 140; 55 C. C. A. 156. 
 
 Birdsall v. Shaliol, 112 U. S. 485; Littlefield v. Perry, 21 Wall. 205; Paper Bag 
 Cases, 105 U. S. 766; Brush v. California, 52 Fed. 945. 
 
 This is a petition presented after this cause was reached on the regular 
 call of the calendar and is ready for argument, asking that the petitioner 
 be permitted to intervene, and that the cause be remanded to the circuit 
 court to take testimony on the question of complainant's laches. The 
 petitioner was fully informed of the pendency of this action, and declined 
 an opportunity to intervene when the case was pending in the circuit court. 
 The proof is wholly insufficient to warrant the extraordinary reUef asked for
 
 728 THE FIXED LAW OF PATENTS §§ 799-801 
 
 by the petitioner, assuming the power of the court to grant such rehef. — 
 Thomson-Houston v. Western, 158 Fed. 813; 86 C. C. A. 73. 
 
 § 799. Patentability. 
 
 The patentability of the device in suit can be attacked without setting 
 it up in an answer. — Hendy v. Golden, 127 U. S. 370; 32 L. Ed. 207; 8 
 S. Ct. 1275. 
 
 Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 107 U. S. 649; Mahn v. 
 Harwood, 112 U. S. 354. 
 
 Want of patentability is a defense, though not set up in an answer or plea. 
 — May V. Juneau, 137 U. S. 408; 34 L. Ed. 729; 11 S. Ct. 102. 
 
 Brown v Piper, 91 U. S. 37; Dunbar v. Myers, 94 U. S. 187; Slawson v. Grand, 
 107 U. S. 649; Hendy v. Golden, 127 U. S. 370. 
 
 § 8oo. Pleas. 
 
 As the case was decided on the sufficiency of the plea, its allegations must 
 be taken as true. — Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767. 
 
 The only issue upon the plea and replication was as to the sufficiency 
 of the testimony to support the plea as pleaded; and as the plea was not 
 supported by the testimony, it should be overruled, and the defendant 
 ordered to answer the bill. — Dalzell v. Dueber, 149 U. S. 315 ; 37 L. Ed. 749; 
 13 S. Ct. 886. 
 
 Stead V. Course, 8 U. S. 403; Farley v. Kittson, 120 U. S. 303; Equity rule, 34. 
 
 The hearing was upon the plea, a general replication, and the evidence 
 taken in support of the plea. Such a plea is a special answer to the bill, 
 and nothing is put in issue, so far as the plea extends, but the truth of the 
 matter pleaded. — Hartz v. Cleveland, 95 Fed. 681 ; 37 C. C. A. 227. 
 
 Farley v. Kittson, 120 U. S. 303; Dalzell v. Mfg. Co. 149 U. S. 315. 
 
 By setting the pleas down for argument the complainant has admitted 
 the facts but not the conclusions pleaded therein. — General v. New Eng- 
 land, 128 Fed. 738; 63 C. C. A. 448. 
 
 Farley v. Kittson, 120 U. S. 303; Burrell v. Hackley, 35 Fed. 833. 
 
 The establishment of a license was all that was required to constitute 
 a defense, and there was no necessity for pleading more than that. — Barber 
 V. National, 129 Fed. 370; 64 C. C. A. 40. 
 
 That the defense that the patent was illegally issued may be raised by 
 plea, see — Western v. North, 135 Fed. 79; 67 C. C. A. 553. 
 
 That the defense of noninfringement cannot be raised by plea, see — Western 
 V. North, 135 Fed. 79; 67 C. C. A. 553. 
 
 § 8oi. Profert. 
 
 " The weight of authority is that the profert of any recorded instrument 
 is equivalent to annexing a copy. And if a party avers that he holds title 
 to anything bj^ a certain instrument which he annexes, and that that in- 
 strument both grants the title and describes the full extent of the rights 
 conferred, it is equivalent to an averment that he has title to all the rights
 
 § § 802-804 PLEADING AND PRACTICE 729 
 
 specifically described in such instrument." — Germain v. Wilgus, 67 Fed. 
 597; 14 C. C. A. 561. 
 
 Quoting American v. Southern, 34 Fed. 803. 
 
 Bogart V. Hinds, 25 Fed. 484; Post v. Hardware, 26 Fed. 618. 
 
 If it were so, such profert were unnecessary to be made, as none of the 
 assignments of the patent referred to are required to be under seal. If 
 profert is made of any document, of which it is not necessary, it will be treated 
 as mere surplusage, and will not entitle the defendant to oyer. Walk. Pat. 
 sec. 433. The complainant was entitled to stand upon its prima facie case 
 as to title, and the failure to set out the assignments referred to could not, 
 under the circumstances, be taken advantage of by demurrer. — Atherton 
 V. Atwood-Morrison, 102 Fed. 949; 43 C. C. A. 72. 
 
 § 8o2. Replication. 
 
 Where replication was not filed, but proofs were taken and the case treated 
 as at issue the court on appeal will not seriously consider such omission. — 
 Tilghman v. Procter, 102 U. S. 707; 26 L. Ed. 279. 
 
 The replication cannot perform the function of exceptions. A replication 
 recognizes the sufficiency of the answer and takes issue on the facts charged. 
 — Robinson v. American, 135 Fed. 693; 68 C. C. A. 331. 
 
 § 803. Sufficiency. 
 
 No objection was made to the sufficiency of the pleading when the final 
 decree was stipulated in evidence. We are well satisfied that thereby the 
 appellant waived the defective nature of the pleading, if the plea is to be taken 
 as a plea of res adjudicata. — Bradley Mfg. Co. v. Eagle Mfg. Co. 58 Fed. 
 721 ; 7 C. C. A. 442. 
 
 Parties are no longer turned out of court because their i's are not dotted 
 or their t's crossed, and courts are diligent rather to search for the sub- 
 stantial justice of a case, than to insist upon strict conformity to pleading. 
 And, while the rule remains, courts at the present day are not inclined to 
 permit parties, for the first time upon appeal, to assert the objection that 
 the testimony, which has been taken without objection in the court below, 
 supports an issue not comprehended within the allegations of the pleading. — 
 Bradley Mfg. Co. v. Eagle Mfg. Co. 58 Fed. 721; 7 C. C. A. 442. 
 
 Wasatch v. Crescent, 148 U. S. 293. 
 
 The bill states the number of the patent, and the answer denies that the 
 complainant was the original and first inventor of the improvement specified 
 in the letters patent so numbered; thus making certain the invention spoken 
 to. It is a sufficient denial of the novelty of the alleged invention. — Robin- 
 son V. American, 135 Fed. 693; 68 C. C. A. 331. 
 
 § 804. Suit on Plurality of Patents. 
 
 Several patents may be joined and sued on together when they are con- 
 jointly related. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 More than one patent may be included in one suit. — Bates v. Coe, 98 
 U. S. 31; 25 L. Ed. 68. 
 Gill V. Wells, 22 WaU. 27.
 
 730 THE FIXED LAW OF PATENTS § 805 
 
 In an action to annul two patents, the Government may join them in one 
 suit where they relate to the same subject matter and where the defendants 
 and their interests are the same. — United States v. Am. Bell, 128 U. S. 
 315; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 The bill assails two patents, issued nearly a year apart, but they were issued 
 to the same party and relate to the same subject, the latter patent being 
 supposed to be for an improvement upon the earlier one. Both are held by 
 the same defendant, and are used by it in the same operations. The principle 
 of multifariousness is very largely in evidence, and is more often applied 
 where two parties are attempted to be brought together by a bill in chancery 
 who have no common interest in the litigation, whereby one party is com- 
 pelled to join in the expense and trouble of a suit in which he and his co- 
 defendants have no common interest, or in which one party is joined as 
 complainant with another party with whom in like manner he either has no 
 interest at all, or no such interest as requires the defendant to litigate it in 
 the same action. 
 
 In the present case there is no such difficulty. The Company and Mr. Bell 
 are the only parties defendant, and their interest in sustaining the patents is 
 the same. So also there is no such diversity of the subject matter embraced 
 in the assault on the two patents that they cannot be conveniently considered 
 together, and although it may be possible that one patent may be sustained 
 and the other may not, yet it is competent for the court to make a decree 
 in conformity with such finding. It seems "to us in every way appropriate 
 that the question of the validity of the two patents should be considered 
 together. — United States v. Am. Bell, 128 U. S. 315; 32 L. Ed. 450; 9 
 S. Ct. 90. 
 
 Oliver v. Piatt, 44 U. S. 333; Walker v. Powers, 104 U. S. 245. 
 
 A failure of the complainant either to establish its title to one of the 
 patents, or show an infringement of one or more of the patents, would not 
 affect its right to an injunction and an accounting with respect to the other 
 patents. — Kansas City v. Devol, 81 Fed. 726; 26 C. C. A. 578. Reversed, 
 84 Fed. 463. 
 
 Nourse v. Allen, Fed. Cas. 459; Gillespie v. Cummings, Fed. Cas. 5,434; Her- 
 man V. Brooklyn, Fed. Cas. 6703; Seymour v. Osborne, 11 Wall. 516; Hayes v. 
 Dayton, 8 Fed. 702. 
 
 § 805. Supplemental Bills. 
 
 An application maybe entertained by the appellate court, after judgement 
 and the issue of mandate and after the close of the term, subject to certain 
 limitations arising out of laches. —In re Gamewell, 73 Fed. 908; 20 C. 
 C. A. 111. 
 
 Ricker v. Powell, 100 U. S. 109. 
 
 That after decision and decree on appeal the Appellate Court may, upon 
 motion, pass down an order for the Circuit Court to allow a party to file a 
 supplemental bill, see — Bliss v. Reed, 106 Fed. 314; 45 C. C. A. 304. 
 
 Steel Co. V. Vermilya, 90 Fed. 493. 
 
 We deem this the better practice (to allow a supplemental bill rather than 
 supplemental proof of infringement of other types before the master) because, 
 if an accounting before the master is extended to devices that have not been 
 adjudged by the court to be infringements, a very great and unnecessary 
 consumption of time and burden of costs may be imposed upon the parties. — 
 Murray v. Orr, 153 Fed. 369; 82 C. C. A. 445.
 
 5§ 806-807 PLEADING AND PRACTICE 731 
 
 § 806. Title. 
 
 An averment of title in the complainant must necessarily be made, and is 
 the necessary foundation for all rights asserted or litigated by the com- 
 plainant. It is an averment without which complainant has no proper 
 standing in court. It matters not whether the title be that of the patentee, 
 derived directly from the grant made by the government, or that of an 
 assignee of the patentee or the assignee of an assignee. In either case it is 
 the statement of a prima facie qualification, to institute the suit, and such 
 title, whether direct to the patentee, or derivative from him by assignment 
 or assignments, is the creature of the patent law, and not of the common 
 law; and, whether admitted or attacked by the opposing party, the questions 
 raised are raised under the patent laws, and are, therefore, within the meaning 
 of the Revised Statutes of the United States, justiceable in the circuit courts. 
 — Atherton v. Atwood-Morrison, 102 Fed. 949; 43 C. C. A. 72. 
 
 § 807. Miscellaneous Rules of Practice and Pleading. 
 
 The principles involved having been decided upon their merits in a previous 
 case, this court will not review the subject upon mere technical points of 
 pleading. — Smith v. Ely, 15 How. 137; 12 L. Ed. 634. 
 
 An action for infringement may be tried before" a referee by consent. — 
 Hecker v. Fowler, 69 U. S. 123; 17 L. Ed. 259. 
 
 Yates V. Russell, 17 Johns. 468; Hall v. Mister, Salk. 84; Bank v. Widner, 11 
 Paige Ch. 533; Green v. Pathen, 13 Wend. 295; Caldwell, Arb. 359; Felter v. 
 Heath, 11 Wend. 482; Graves v. Fisher, 5 Me. 70; Miller v. Miller, 2 Pick. 570; 
 Com. V. Props. 7 Mass. 417. 
 
 Proofs without the requisite allegations are as unavailing as such allega- 
 tions would be without the proofs requisite to support them. — Rubber v, 
 Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 Foster v. Goddard, 1 Black, 518; Tripp v. Vincent, 3 Barb. Ch. 613; Boone 
 V. Chiles, 10 Pet. 178; Harrison v. Nixon, 9 Pet. 483. 
 
 Persons owning reissued letters patent, and seeking redress from those who 
 have invaded their exclusive rights, are not obliged to introduce in 
 evidence the surrendered patent, and if the old patent is not introduced by 
 the party sued, he cannot have the benefit of such defense. — Seymour v. 
 Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 It is possible that this objection to the evidence would have been available 
 if it had been taken in season, (that the prior invention set up in the answer 
 did not comply with the statute). But we are not referred to anything to 
 show that it was taken in the court below or before the examiner when the 
 witnesses were examined. In Roemer v. Simon, 95 U. S. 220, we held that 
 the failure to interpose such objection before the final hearing is a waiver of 
 the required notice in an equity suit. — Loom Co. v. Higgins, 10^ U. S. 580; 
 26 L. Ed. 1177. 
 
 Practice under our rules defined and distinguished from the English rule. 
 — Thompson v. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 It was not necessary to show a recovery at law to warrant jurisdiction in 
 equity, for an injunction and account. — McCoy v. Nelson, 121 U. S. 484; 
 SOL. Ed. 1017; 7 S. Ct. 1000. 
 
 Root V. Railway, 105 U. S. 189.
 
 732 THE FIXED LAW OF PATENTS § 807 
 
 It is a mistake to suppose that in stating the facts which constitute a 
 fraud, where reUef is sought in a bill in equity, all the evidence which may- 
 be adduced to prove the fraud must be recited in the bill. It is sufficient if 
 the main facts or incidents which constitute the fraud against which relief 
 is desired shall be fully stated, so as to put the defendant upon his guard 
 and apprise him of what answer may be required of him. — United States 
 V. Am. Bell, 128 U. S. 31-5; 32 L. Ed. 450; 9 S. Ct. 90. 
 
 Story Eq. PI. sec. 252; Harding v. Handy, 24 U. S. 103; St. Louis v. Knapp. 
 104 U. S. 658. 
 
 It is doubtless necessary, when special pleading is required, that a former 
 recovery should be pleaded in bar. But if the record be properly before us 
 in evidence^ although not well pleaded, we are not only at liberty to con- 
 sider it, but are bound to give full effect to it. — Bradley v. Eagle, 57 Fed. 
 980; 6 C. C. A. 661. 
 
 The matter charged is merely additional evidence in support of the issue 
 presented and determined in the former suit. It was competent evidence in 
 that suit without any statement of it in the pleading, if the objection of the 
 statute was not timely urged. The proposed evidence comes too late to be 
 availing. The decree of a court is not the less conclusive because a party has 
 failed to produce all the evidence at command, or because of newly-discovered 
 e\idence. — Bradley v. Eagle, 57 Fed. 980; 6 C. C. A. 661. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Zane v. Soffe, 110 U. S. 200. 
 
 It is said, and is apparently true, that the parties did not wish to raise 
 this question (estoppel). But that, if successful, would, in effect, result in 
 submitting to the court a moot patent cause, which, on account of the public 
 interests involved, the court is ordinarily disinclined to permit. As a general 
 rule, the court, before passing on the question of patentability, is entitled to 
 require that it should be properly presented by parties legally competent 
 and interested to do it. — Woodward v. Boston, 63 Fed. 609; 11 C. C. A. 
 353. 
 
 A settlement made after final decree should be brought before the court 
 in supplemental proceedings in order to be a bar to a filial decree. — Harden 
 V. Campbell, 79 Fed. 653 ; 25 C. C. A. 142. 
 
 See, Gamewell v. Municipal, 77 Fed. 490. 
 
 The complainant has not pleaded the estoppel he claims, and defendant 
 was without the notice in the pleadings to which he was entitled. Notwith- 
 standing the 45th equity rule, the complainant was at liberty, and should 
 have availed himself thereof, to plead by way of anticipation the estoppel to 
 the defense of non-validity of the patent. — Newark v. Ryan, 102 Fed. 693 • 
 42 C. C. A. 594. 
 
 It, however, took another course that was clearly open to it to take, and 
 that was to state the defense of this pretended assignment by way of anticipa- 
 tion in the bill, in order that it might make special answer'thereto, and thus 
 avoid the disadvantageous position in which it would be placed by the 
 forty-fifth equity rule, by which special replications are prohibited. If the 
 bill sets forth a case within the jurisdiction of the court, the jurisfliction 
 cannot be ousted by the anticipation and denial of possible defenses that may 
 or may not be made. Even if the title of complainant, as set forth in the 
 bill, were put in issue by plea or answer, the question would still be one 
 ansmg under the patent laws of the United States. Such an issue would be 
 incidental and collateral to the main purpose of the suit. In this case the
 
 §807 PRIORITY 733 
 
 patentee and original assignor is not a party to the suit, and the suit could 
 not, therefore, be said to be upon the contract with him. This is not a suit 
 to enforce a contract or to avoid one, but is a claim of ownership under the 
 laws of the United States, which is properly justiceable in the federal circuit 
 courts. — Atherton v. Atwood-Morrison, 102 Fed. 949; 43 C. C. A. 72. 
 
 If, on the hearing of the motion, or after its decision, the plaintiff had 
 made timely offer to amend the petition by alleging that the acts of infringe- 
 ment complained of were committed in the district in which the suit was 
 brought, the court should have allowed the amendment. — Shaw v. American, 
 108 Fed. 842; 48 C. C. A. 68. 
 
 The discovery feature of the bill will be disregarded; first, because an 
 answer under oath is expressly waived in the bill; second because the bill 
 propounds no interrogatories. — Excelsior v. City of Seattle, 117 Fed. 140; 
 55 C. C. A. 156. 
 
 Huntington v. Saunders, 120 U. S. 78; 6 Enc. PI. & Prac. 732. 
 
 That the requirement of Sec. 4921 and amendment of Mar, 3, 1897, does 
 not require that the complainant in equity or the plaintiff at law shall 
 specially allege that the infringement charged took place during the six 
 years immediately preceding, see — Peters v. Hanger, 134 Fed. 586 ; 67 C. 
 C. A. 386. 
 
 We hold that where, in a suit in equity as in this case, testimony as to 
 facts, upon which an estoppel is contended for, is introduced, not only with- 
 out objection but contentious testimony disputing such facts is produced on 
 the other side, the contention for an estoppel may be made at the hearing 
 without having been pleaded. — Standard v. Arrott, 135 Fed. 750; 68 C. 
 C. A. 388. 
 
 The fact that an invention was not in public use or on sale in this country 
 for more than two years prior to the application for the patent is an indis- 
 pensable condition to its validity, and an averment of that fact is essential 
 to the statement of a good cause of action for its infringement. — Hayes- 
 Young V. St. Louis, 137 Fed. 80; 70 C. C. A. 1. 
 
 R.S. sec. 4886; Walker on Pat. sec. 425; Krick u. Jansen, 52 Fed. 823; Nathan 
 V. Craig, 47 Fed. 522; Blessing v. Copper, 34 Fed. 753. 
 
 We dismiss without notice other partial defenses which are not estabhshed 
 by the evidence, or which if sustained by any proof, were not pleaded. 
 Rubber Co. v. Goodyear, 9 Wall. 788. — Indiana v. Case, 154 Fed. 365; 
 83 C. C. A. 343. 
 
 Assuming that the defendant, having alleged and attempted to establish 
 the invalidity of the patent, is in a position to claim a license under it, we 
 find no evidence which convinces us that, as to the digesters in controversy, 
 such a hcense was given. — American v. DeGrasse, 157 Fed. 660; 87 C. C. 
 A. 260. 
 
 PRIORITY. 
 
 General Statement § 808 
 
 Evidence § 809 (see § 288) 
 
 Interference § 810 {see § 580) 
 
 Reduction to Practice § 811 ^see 
 
 § 860) 
 
 Miscellaneous Holdings § 812 
 
 See — Anticipation § 58; Divisional 
 
 Patenting § 348; Double Patenting 
 § 356; Evidence §§ 389-93; Experi- 
 ment § 412; Foreign Patent § 423; 
 Improvement § 439; Interferences 
 § 580; Interfering Patents § 586; In- 
 vention § 613; Reduction to Practice 
 I 860
 
 734 THE FIXED LAW OF PATENTS §§ 808-810 
 
 § 808. General Statement. 
 
 Priority is a question arising between two pending applications, a pending 
 application and an issued patent, or between two issued patents. The first 
 two conditions are subjects for interference proceedings; the third is a con- 
 dition which may be met either by an action under 4918 R. S. (see Interfering 
 Patents, § 587), or it may be met and settled in an action for infringement. 
 The subject of interference has been considered under §§ 582-585. 
 
 § 809. Evidence. 
 
 An invention relating to machinery may be exliibited in a drawing or in 
 a model, so as to lay the foundation of the claim to priority, if it be suffi- 
 ciently plain to enable those skilled in the art to understand it. — Loom Co. 
 V. Higgins, 105 U. S. 580; 26 L. Ed. 1177. 
 
 After defendant had introduced in evidence earlier patents, it was proper 
 for plaintiff to show that prior to the date of any of them he had reduced his 
 invention to a working form. — St. Paul i;. Starling, 140 U. S. 184; 35 L. 
 Ed. 404; 11 S. Ct. 803. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Webster v. Higgins, 105 U. S. 580. 
 
 Where a patent is introduced in suit showing with certainty the date of 
 its pubUcation and prior to the date of the patent in suit, it is incumbent 
 upon complainant to show, if not with equal certainty, yet to the satisfaction 
 of the court that the invention of the patent in suit preceded that date. — 
 Clark V. WiUimantic, 140 U. S. 481 ; 35 L. Ed. 521; 11 S. Ct. 846. 
 
 St. Paul V. Starling, 140 U. S. 184. 
 
 The defendant's patent having been issued before that of the complainant, 
 upon an application filed in advance of the latter's application, the burden 
 of proof is upon complainant to establish a prior use of the machine by a 
 preponderance of testimony over that of defendant to the contrary. — 
 Ashton V. Coale, 52 Fed. 314; 3 C. C. A. 98. 
 
 If the evidence in its favor were fortified by the presumption of validity 
 afforded by the patent in ordinary cases, we might think it right that that 
 should turn the scale, and that this claim in the patent should be held valid. 
 But the presumption does not apply in such circumstances, and the burden of 
 proof is on the other side. — Michigan v. Consohdated, 67 Fed. 121 ; 14 
 C. C. A. 232. 
 
 Eagleton v. West, 2 Fed. 774; Eagleton v. West, 111 U. S. 490. 
 
 § 810. Interference. 
 
 Is controlling in a subsequent suit between same parties in absence of 
 other thoroughly convincing testimony. — Morgan v. Daniels, 153 U. S, 
 120; 38 L. Ed. 657; 14 S. Ct. 772. 
 
 The complainant withdrew from the interference proceeding, permitted the 
 contestant to make his case, and took a license from the contestant. We 
 regard it as an admission of the contestant's priority and his consequent 
 right to a patent. — Shoemaker v. Merrow, 61 Fed. 945; 10 C. C. A. 181. 
 
 It may be observed, too, that the features of the later patents are all 
 described and illustrated in the patent to Barter, a copy of which is made an 
 exhibit in the bill. If, therefore, they were not included in the interference 
 (with Barter) and did not so become the established property of Smith under
 
 § 811 PRIORITY 735 
 
 the three patents mentioned (the prior patent in interference) then they 
 belong to Barter, if mcluded in his claims, and if not to him, then to the 
 public, because of his failure to claim them. — Russell v. Kern, 69 l^ed. 94; 
 16 C. C. A. 154. 
 
 § 8ii. Reduction to Practice. 
 
 It is impossible to examine them, and look at the process and the ma- 
 chinery and the results of each, so far as the facts are before us, without 
 nerceiving at once the substantial and essential difference between them and 
 the decided superiority of the one invented by Morse (This was a comparison 
 of the alleged foreign devices with those of Morse; and the line of reasoning 
 here pursued is substantially the same as that in the Telephone Cases, 126 
 U. SI, in comparing Bell and Reis.) — O'ReiUy v. Morse, 15 How. 62; 
 14 L. Ed. 601. 
 
 He is the first inventor and entitled to the patent, who, being an original 
 discoverer has first perfected and adapted the invention to actual use. — 
 Whiteley v. Swayne, 74 U. S. 685; 19 L. Ed. 199. 
 
 Curt. Pat. 43 notes. 
 
 He is the first inventor in the sense of the patent law, and entitled to 
 a patent for his invention, who first perfected and adapted the same t<) use, 
 and it is well settled that until the invention is sope/fected and adapted to 
 use it is not patentable. — Seymour v. Osborne, 78 U. b. 516; 20 L. l^d. 66. 
 
 Washburn v. Gould, 3 Story, 122; Cahoon v. Ring, 1 Cliff. 612. 
 
 We do not doubt that Drawbaugh may have conceived the idea that speech 
 could be transmitted to a distance by electricity and that he was experi- 
 menting upon the subject; but to hold that he had discovered the art of 
 doing it before Bell did would be to construe testimony without regard to 
 " the ordinary laws that govern human conduct." — Telephone Cases, 
 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Atlantic v. Brady. 107 U. S. 192. 
 
 In the law of patents it is the last step that counts. — Washburn v. Beat 
 Em All, 143 U. S. 275; 36 L. Ed. 154; 12 S. Ct. 443. 
 
 Loom Co. V. Higgins, 105 U. S. 580; Safety Valve Co. z;. Crosby, 113 U. S. 157; 
 Smith V. Goodyear, 93 U. S. 486; Magowan v. N. Y. 141 U. S. 332. 
 
 It is obvious that the man who first reduces an invention to practice, is 
 prima facie the first and true inventor, but that the man who first conceives, 
 and, in a mental sense, first invents a machine, art or composition of matter, 
 may date his patentable invention back to the time of its conception, if he 
 connects the conception with its reduction to practice by reasonable dili- 
 gence on his part, so that they are substantially one continuous act. ihe 
 burden is on the second reducer to practice to show the prior conception, and 
 to establish the connection between that conception and his reduction to 
 practice by due diligence. It has sometimes been held in the decisions in 
 the patent office, that the necessity for diligence on the part ot the hrst 
 conceiver does not arise until the date of the second conception; but this, we 
 think, cannot be supported on principle. — Christie v. Seybold, 55 l^ed. 69; 
 5 C C. A. 33. 
 
 Rob Pat.' sec. 384-386; Millward v. Banes, 11 O. G. 1060; Christie v Seybold. 
 54 O G 957- Bedford v. Hunt, 1 Mason, 302; Agawam v. Jordan, 7 Wall. 58 J; 
 Whiteley v. Swayne, 7 Wall. 685; Reed v. Cutter, 1 Story, 590; White v. Allen, 
 2 Cliff. 224; Wright v. Postal, 44 Fed. 352.
 
 736 THE FIXED LAW OF PATENTS § 812 
 
 Having thus abandoned any attempt to make his idea practically available 
 and to develop his theory, in fact, the subsequent inventor conceived the idea, 
 embodied it in means by which it could be carried out, proceeded to make 
 articles, and thereby first perfected it, and is entitled to be recognized as the 
 real inventor. — Ecaubert v. Appleton, 67 Fed. 917 ; 15 C. C. A. 73. 
 
 Woolen V. Jordan, 7 Wall. 583; Whiteley v. SwajTie, 7 Wall. 687; Reed v. 
 Cutter, 1 Story, 590; Howe v. Underwood, 1 Fish. P. C. 166. 
 
 If the inventor conceived the improvements, and actually gave such sub- 
 stantial expression to the invention as that, without further exercise of the 
 inventive faculty, one familiar with the construction and operation of the 
 old machine could construct a new machine embodying the novel features, 
 and made a full disclosure of the same to a subsequent inventor, the latter 
 is not entitled to the attitude of one whose conception is later, but who first 
 constructed an organized machine, and first applied for a patent. — Standard 
 V. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 It was said by this court in Christie v. Seybold, heretofore cited: 
 
 " That the man who first reduces an invention to practice is prima facie 
 the first and true inventor, but that the man who first conceives, and in a 
 mental sense, first invents, a machine, art, or composition of matter, may 
 date his patentable invention back to the time of its conception, if he connects 
 the conception with its reduction to practice by reasonable diligence on his 
 part, so that they are substantially one continuous act. The burden is on 
 the second reducer to practice to show the prior conception, and to establish 
 the connection between that conception and his reduction to practice by 
 proof of due diligence." 
 
 That burden may be met by the exhibition of drawings, and by oral ex- 
 planations of his conception antedating the first reduction to practice by 
 another. — Standard v. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 Railroad v. Stimpson, 14 Pet. 448; Reed v. Cutter, Fed. Cas. 11,645; McCormick v. 
 Minn. 42 Fed. 152. 
 
 If ineffectual efforts were made to give the idea form, through drawings, 
 models, or machines, but were abandoned before reaching such a stage of 
 completion as to require only ordinary mechanical skill to carry the concep- 
 tion to success, the claim of priority of invention could not be sustained 
 against a later independent conception, carried into practical form at an 
 earlier date. — Standard v. Peters, 77 Fed. 630; 23 C. C. A. 367. 
 
 Reed v. Cutter, Fed. Cas. No. 11,645. 
 
 The failure of an inventor to push his invention to completion at an earlier 
 date or file an application for a patent does not avail a subsequent reducer 
 to practice and applicant for a patent who derived his knowledge of the 
 invention from the prior inventor. — Standard v. Peters, 77 Fed. 630 ; 23 
 C. C. A 367. 
 
 For a full, complete and detailed statement of the law upon this subject, 
 see the quotation under §860 from Automatic v. Pneumatic, 166 Fed. 288; 
 C. C. A. 
 
 § 8i2. Miscellaneous Holdings. 
 
 When defendant claimed to have invented the device in suit, not having 
 
 made an application for a patent, the right of the complainant to his patent 
 
 is not disturbed even by priority of invention by the defendant unless he 
 
 . could show more than two years public use prior to plaintiff's application. — 
 
 Loom Co. V. Higgins, 105 U. S. 580; 26 L. Ed. 1177.
 
 § 813 PROCESS 737 
 
 The date of application is controlling over two applications made by the same 
 inventor, and date of application and not date of patent determines legal 
 effect of the two patents. — Washburn v. Beat Em All, 143 U. S. 275- 36 L 
 Ed. 154; 12S. Ct. 443. 
 
 The fact that a subsequent inventor devised the same thing without 
 knowledge of the former invention avails nothing in view of R. S. sec. 4884- 
 4886. — United States v. Berdan, 156 U. S. 552: 39 L. Ed. 530; 15 S. Ct. 
 420. 
 
 Rob. on Pat. sec. 58. 
 
 Faure's French patent was dated Oct. 20, 1880, and, inasmuch as he was 
 a citizen of France, he is not permitted to claim his invention before that 
 date, as against a citizen of the United States, who, being also an original 
 inventor, subsequently received a patent for his own invention in this 
 country. — Elec. v. Brush, 52 Fed. 130; 2 C. C. A. 682. 
 
 Brown's disclaimer, in taking his patent, of itself, is a sufficient answer 
 to the claim now made in his favor. — Brown v. Stonemetz, 58 Fed. 571 : 
 7 C. C. A. 374. 
 
 If it is permissible, as contended, to maintain his patent upon evidence, 
 dehors the proceedings in the patent office, that he had made the invention 
 at an earlier date than is to be presumed from his application and patent, so 
 as to carry it back to antedate the public use, the proof should be clear and 
 unequivocal that he was the original inventor. — Michigan v. ConsoUdated, 
 67 Fed. 121; 14 C. C. A. 232. 
 
 Eagleton v. West, 2 Fed. 774; Eagleton v. West, 111 U. S. 490; Robinson, 
 1026 n. 14. 
 
 Where a disclaimer was filed with special reference to a pending applica- 
 tion in favor of such application, such disclaimer establishes priority of 
 invention of the matter disclaimed in favor of the application referred to, 
 see North Jersey v. Brill, 134 Fed. 580; 67 C. C. A. 380. 
 
 PROCESS. 
 
 General Statement § 813 
 Claims § 814 {see § 184) 
 Definitions § 815 
 Equivalents § 816 {see § 373) 
 Mechanical § 817 
 Old Elements, New Result § 818 
 Patentability § 819 
 Process and Product 
 
 Claims for § 820 {see § 184) 
 
 Patentability § 821 
 
 Miscellaneous Rulings § 822 
 See — Anticipation §§ 100-2; Art 
 § 146; Claims § 243; Composition of 
 Matter § 264; Equivalents § 373; 
 Infringement §§ 518-20; Invention 
 §§ 676-7, 685-8; Machine and Pro- 
 cess § 770; Manufacture § 772; 
 Secret Process or Machine § 897; 
 Specification § 914 
 
 § 813. General Statement. 
 
 There never has been any question as to the patentability of a process. 
 While the statute does not employ the term, undoubtedly the terms " art " 
 and " manufacture," as used in Sec. 4886, are sufficient. The definitions 
 found under § 815 will be found unsatisfactory. Probably those found in 
 Cochrane v. Deener and in Tilghman v. Proctor are the most satisfactory. 
 Since the decision of Expanded v. Bradford (see § 817), mechanical processes 
 are patentable, provided that the process is independent of any particular 
 mechanism for carrying it out; otherwise the rule of Westinghouse v. Boydea
 
 738 THE FIXED LAW OF PATENTS §§ 814-815 
 
 (see § 686) is controlling, and a purely mechanical method is patentable only 
 as a mechanical combination. .„ , , , , r , • 
 
 Rulings bearing on this subject will be found under Infringement — 
 Process, and Invention — Process. 
 
 § 814. Claims. 
 
 Where the patent is for a specific process, not being generic, it must be 
 shown that the defendants used all the different steps of that process, or there 
 could be no infringement. — Roy er v. Coupe, 146 U. S. 524; 36 L. Ed. 
 1073; 13 S. Ct. 166. 
 
 Merely to describe the use of heated acid, without any information what- 
 ever as to the extent of the required dilution of the acid, was to add nothing 
 to the stock of common knowledge. Mitchell's invention, it will be observed, 
 rested upon an original discovery, and he was bound to disclose fully to the 
 public, in and by his patents, his modus operandi. Upon this the provisions 
 of section 4888 of the Revised Statutes are imperative. — Chemical v. 
 Raymond, 71 Fed. 179; 18 C. C. A. 31. 
 
 Wood V Underhill, 5 How. 1; Tyler v. Boston, 7 Wall. 327; Electric v. Mc- 
 Keesport, 73 O. G. 1289. 
 
 § 815. Definitions. 
 
 The invention related to the casting of cylinders. By constructing a 
 tangential hole or gate a centrifugal action was produced, carrying the heavy 
 iron to the periphery and the dross to the center. This was clearly a process 
 as all of the devices employed were old. — McClurg v. Kingsland, 1 How. 
 202; 11 L. Ed. 102. 
 
 A new process is usually the result of discovery ; a machine of invention. — 
 Corning v. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 An art may require one or more processes on machines in order to produce 
 a certain result or manufacture. The term " machine " includes every 
 mechanical device or combination of mechanical powers and devices to per- 
 form some function and produce a certain effect or result. But where the 
 effect or result is produced by chemical action, by the operation or applica- 
 tion of some element or power of nature, or of one substance to another, such 
 modes, methods or operations are called processes. — Corning v. Burden, 15 
 How. 252; 14 L. Ed. 683. 
 
 The Whitney process for annealing car wheels, though consisting of several 
 parts, is a process, and not a mere combination. — Mowry v. Whitney, 81 
 U. S. 620; 20 L. Ed. 860. 
 
 That a process may be patentable, irrespective of the particular form of 
 the instrumentality used, cannot be disputed. If one of the steps of a process 
 be that a certain substance is to be reduced to a powder, it may not be at 
 all material what instrument or machinery is used to effect that object, 
 whether a hammer, a pestle and mortar, or a mill. Either may be pointed 
 out; but if the patent is not confined to that particular tool or machine, the 
 use of the others would be an infringement, the general process being the 
 same. A process is a mode of treatment of certain materials to produce a 
 given result. It is an act or a series of acts, performed upon the subject 
 matter to be transformed and reduced to a different state or thing. If new 
 and useful it is just as patentable as is a piece of machinery. In the language 
 of the patent law, it is an art. The machinery pointed out as suitable to
 
 § 816 PROCESS 739 
 
 perform the process may or may not be new or patentable; whilst the 
 process itself may be altogether new; and produce an entirely new result. 
 The process requires that certain things should be done with certain sub- 
 stances, and in a certain order ; but the tools to be used in doing this may be 
 of secondary consequence. — Cochrane v. Deener, 94 U. S. 780; 24 L. Ed.. 
 139. 
 
 That a patent can be granted for a process, there can be no doubt. The 
 patent law is not confined to new machines and new compositions of matter, 
 but extends to any new and useful art or manufacture. A manufacturing 
 process is clearly an art, within the meaning of the law. Goodyear 's patent 
 was for a process, namely, the process of vulcanizing India rubber by sub- 
 jecting it to a high degree of heat when mixed with sulphur and a mineral 
 salt. The apparatus for performing the process was not patented, and was 
 not material. The patent pointed out how the process could be effected, 
 and that was deemed sufficient. Nelson's patent was for the process of 
 applying the hot blast to furnaces by forcing a blast through a vessel or 
 receptacle situated between the blowing apparatus and the furnace, and 
 heated to a red heat; the form of the heated vessel being stated by the 
 patent to be immaterial. These patents were sustained after the strictest 
 scrutiny and against the strongest opposition. — Tilghman v. Proctor, 102 
 U.S. 707; 26 L. Ed. 279. 
 
 Corning v. Burden, 56 U. S. 267; Nelson v. Thompson, AVeb. P. C. 275, 371; 
 Househill v. Nelson, Web. P. C. 715; O'Reilly v. Morse, 56 U. S. 62. 
 
 A patent for a process and a patent for an implement or a machine are very 
 different things. Where a new process produces a new substance, the inveri- 
 tion of the process is the same as the invention of the substance, and a 
 patent for the one may be reissued so as to include both, as was done in the 
 case of Goodyear's vulcanized rubber patent. But a process and a machine 
 for applying the process are not necessarily one and the same invention. 
 They are generally distinct and different. — James v. Campbell, 104 U. S. 
 356; 26 L. Ed. 786. 
 
 Powder v. Powder, 98 U. S. 126. 
 
 The doctrine which is applicable to a machine patent is of a kindred 
 character with that applied in this country and in England to a patent for 
 a process. — Morley v. Lancaster, 129 U. S. 263; 32 L. Ed. 715; 9 S. Ct. 299. 
 
 McCormick v. Talcott, 61 U. S. 402; Chicago v. Savles, 97 U. S. 554; Clough v. 
 Barker, 106 U. S. 166; Duff v. Sterling, 107 U. S. 636; Consolidated v. Crosby, 
 113 U. S. 157. 
 
 And comparing, 
 
 Tilghman v. Proctor, 102 U. S. 707; Nelson v. Hartford, 1 Web. P. C. 295; 
 O'Reillv V. Morse, 56 U. S. 62, 125; Curtis v. Piatt, (note) L. R. 3 Ch. Div. 
 134; Badische v. Levinstein, L. R. 24 Ch. Div. 156.171; Jupe i'. Pratt, 1 
 W^eb. P. C. 146; Househill v. Nelson, 1 Web. P. C. 685; Proctor v. Bennis, 
 L. R. 36 Ch. Div. 740; Clark v. Adie, L. R. 2 App. Cas. 315,320. 
 
 § 8i6. Equivalents. 
 
 When substitution is not infringement, see Seabury v. Am Ende, 152 
 U. S. 561; 38 L. Ed. 553; 14 S. Ct. 683. 
 
 The patentee of an invention of a process is entitled to the benefit of all 
 which his process will accomplish. — Cowles v. Lowrey, 79 Fed. 331 ; 24 
 C. C. A. 616.
 
 740 THE FIXED LAW OF PATENTS §817 
 
 If a metallic salt of any kind was previously used, the substitution of 
 another metallic salt which produced the same result would be the employ- 
 ment merely of an equivalent. — National v. New England, 153 Fed. 184 ; 
 82 C. C. A. 359. 
 
 § 817. Mechanical. 
 
 That a claim for a mechanical process cannot be maintained, see — West- 
 inghouse V. Boyden, 170 U. S. 537; 42 L. Ed. 1136; 18 S. Ct. 707. 
 
 The utterances of the Supreme Court upon the question of whether or not 
 a mechanical process is patentable are not in clear harmony ; but it would 
 seem that processes, which are to be effected wholly by mechanical means, 
 in order to be patentable must be capable of being distinguished from the 
 method of operation or mere function of the mechanism necessary for their 
 accomplishment. — Appleton v. Star, 60 Fed. 411 ; 9 C. C. A. 42. 
 
 Corning v. Burden, 15 How. 267; O'Reilly v. Morse, 15 How. 62; Tilghman v. 
 Proctor, 102 U. S. 707; Lawther v. Hamilton, 124 U. S. 1; Cochrane v. Deener, 
 94 U. S. 788; Brown v. Piper, 91 U. S. 37. 
 
 The process is purely mechanical. The devices and machinery necessary 
 for its accomplishment are illustrated by drawings and minutely described 
 in the specification. The application for the i^atent was rejected in the 
 first instance on the ground that " the alleged method is, as presented, the 
 necessary function or operation of the mechanism described," and notwith- 
 standing the amendments made we are of opinion that the objection was not 
 obviated, and that the patent should not have been granted. In Appleton 
 V. Star, 60 Fed. 411 where it was necessary to consider the question of the 
 patentability of mechanical processes, we were unable to deduce from 
 decided cases a definite rule; but whatever uncertainty there had been, 
 or lack of harmony in the dicta and decisions of the Supreme Court, on the 
 subject, was removed by the recent opinion of that court in Locomotive v. 
 Medart. — Wells v. Henderson, 67 Fed. 930; 15 C. C. A. 84. 
 
 Corning v. Burden, 15 How. 252. 
 
 The method may be practised by the employment of any means adapted 
 to the purpose, and then known to the art, or which might thereafter become 
 known. To be sure, if the mechanical means employed are the subject of 
 a patent, the party who uses the process may have to secure the right to use 
 the patented method. Assuming for the moment that claim 2 was for a com- 
 bination of generic means, such a claim would cover all known means of the 
 kind enumerated. And it would cover all equivalents which might there- 
 after be discovered by the ordinary skill of the art, and were not the fruit 
 of invention; and it would dominate the latter, if the latter was of an im- 
 provement merely of the means covered by the former invention. But the 
 invention of means hitherto unknown would be an independent invention, 
 not covered by the patent, and, according to the well-settled rule, would of 
 itself be entitled to a patent. — Dayton v. Westinghouse, 118 Fed. 562; 
 55 C. C. A. 390. 
 
 Such a process (the mechanical separation of cotton hulls and lint) may 
 be wholly independent of the particular machinery or appliance used, and 
 is something more than the functions of the machine which is employed. — 
 Johnson v. Foos, 141 Fed. 73; 72 C. C. A. 105. 
 
 American v. Buckskin, 72 Fed. 508. 
 
 The means, method, or process constitutes a patentable process, consist- 
 ing, as it does, of a series of treatments of a peculiarly obstinate material
 
 § 817 PROCESS 741 
 
 (cotton hulls), each treatment having relation to the character of the material 
 acted upon and the condition produced by the precedmg treatment. — John- 
 son V. Foos, 141 Fed. 73; 72 C. C. A. 105. 
 
 Mowry v. Whitney, 1-1 Wall. 620; Cochrane v. Deener, 94 US. 780; Carnegie 
 V. Cambria, 185 U. S. 403; American v. Buckskm, 72 led. 508. 
 
 The first and second claims are for a process. They seem to us to be 
 nothing else than claims for the function of the apparatus described. No 
 doubt it is competent, when the circumstances permit it, for an inventor m 
 describing a machine or apparatus which he has devised, to make a claim tor 
 a process which his patented device is capable of carrying out. But to entitle 
 him to do this the process must be one capable of being carried out by other 
 means than by the operation of his patented machine, and, unless such other 
 means are known or within the reach of ordinary skill and judgement, the 
 Ttentee is bound to point them out; for, unless the public are informed 
 bv what other means the process can be carried out, the process is to them 
 nothing else than the operation of the machine - m other words the exercise 
 of ts functions. In the present case no other means or way of practising the 
 process are suggested by the patentee than the particular device on which 
 his claims for the apparatus rests. And it is impossible for us to see how 
 Z prTess which is the subject of these claims could bV^^^^ed ou by any 
 other means than the particular means described by the apparatus. Cer- 
 ?Ih.Ty it is not explained how else it could be done. Moreover ^ the apparatus 
 is not new its functions are not new. — American v. Stewaid, 155 l^ed. 7^1 , 
 
 ^^Westinghouse ^. Boyden, 170 U. S. 537; Wessel v. United, 139 Fed. 11; Ameri- 
 can V. Sexton, 139 Fed. 564. 
 
 Note: This is refusal to follow same patent decided in 2nd Cir. C. 
 C. A., 128 Fed. 599. 
 
 The natent was for a " method of making expanded sheet metal." It 
 had berifheldTod in the Third Circuit (Bradford .. ExP^^^ed 146 Fed 
 Im Held\ov can we agree to the suggestion that the patent, was for 
 ?he function only of a machine. No doubt the function or principle of a 
 tc re "annot L the subject of a patent. It is -^-^f-^^f • ^ ^^^^^^^^^^^ 
 r.r. ,.r,^r.prtv nf thp luach uc, aud inseparable trom it, ana is aeveiopeu 
 VZZSlf But Gold ng was not here seeking to patent a nmchine 
 
 and unless ne mve J^^ apparatus were mere disjecta membra until 
 
 ^^^ oTL'lEoTdtary Intelligence pointed the way to th^subjec 
 tion of the one to the operation of the other to a useful purpose. We thmk 
 
 SuL"'brttp'«fa„'aSScP)|{:f e^^^^ Jto spirit and purpose. - 
 
 Expanded v. General, 164 Fed. 849; CCA. 
 
 M wr.r ., Whitnev 14 Wall 620; Cochrane v. Deener, 94 U. S. 780; Telephone 
 Ca^es 126 U^S irCarnegt ^^. Cambria, 185 U. S. 403. Distmgmshmg Risdon 
 u. Medart, 158 U. S. 68.
 
 742 THE FIXED LAW OF PATENTS §§818-819 
 
 Note- This opinion and that of Bradford v. Expanded supra, quoted 
 and criticized under § 682, present the two sides of a most difheu t and un- 
 settled problem. The opinion of Judge Gray in Kilboru v. Liveright, Ibo t ed. 
 90'> may be read with interest in connection with these cases. It is my 
 opinion that Judge Gray was right in the stocking case and wrong in con- 
 curring in the decision of Bradford v. Expanded. 
 
 A process patent can only be anticipated by showing an earlier similar 
 process. It is not enough to show that the Enzinger filter might have been 
 operated according to the process of Stockheim, but that his process had 
 been actually used in its practical operation, or that the character of the 
 structure was such as to plainly indicate to one called upon to operate 
 it that its intended mode of operation was similar to that now claimed by 
 Stockheim. — Loew v. German-American, 164 Fed. 855; C. C. A. 
 
 Carnegie v. Cambria, 185 U. S. 421. 
 
 § 8i8. Old Elements, New Result. 
 
 A process to obtain a product from a substance from which it has never 
 been taken may be creative of invention, but the thing itself, when obtained, 
 cannot be called a new manufacture. It may have been in existence and in 
 common use before the new means of obtaining it was invented, and possibly 
 before it was known that it could be extracted from the subject to which the 
 new process is applied. — American v. Fiber Co. 90 U. S. 566; 23 L. Ed. 31. 
 
 The public cannot be deprived of an old process because someone has 
 discovered that it is applicable to a wider range of use and capable of pro- 
 ducing a better result, than w^as before known. — Lovell v. Gary, 147 U. b. 
 623; 37 L. Ed. 307; 13 S. Ct. 472. 
 
 Smith V. Nichols, 88 U. S. 112; Roberts v. Ryer, 91 U. S. 150. 
 
 § 819. Patentability. 
 
 It is when the term " process " is used to represent the means or method 
 of producing a result that it is patentable, and that it will include all methods 
 or means which are effected by mechanism or mechanical combination. — 
 Corning v. Burden, 15 How. 252; 14 L. Ed. 683. 
 
 " Whoever discovers that a certain useful result will be produced in any 
 art by the use of certain means is entitled to a patent for it, provided he 
 specifies the means." But everything turns on the force and meaning of the 
 word " means." It is very certain that the means need not be a machine, 
 or an apparatus, it may, as the court says, be a process. A machine is a 
 thing. A process is an act, or a mode of acting. The one is visible to the eye ; 
 an object of perpetual observation. The other is a conception of the mind, 
 seen only when being executed or performed. Either may be the means of 
 producing a useful result. — Tilghman v. Proctor, 102 U. S. 707; 26 L. 
 Ed. 275. 
 
 Explaining O'Reilly v. Morse, 15 How. 62. 
 
 We think that the method or art covered by the patent is patentable as a 
 process, irrespective of the apparatus or instrumentality for carrying it out. 
 — New Process v. Maus, 122 U. S. 413; 30 L. Ed. 1193; 7 S. Ct. 1304. 
 
 Corning v. Burden, 56 U. S. 252; Cochrane v. Deener, 94 U. S. 780; Tilghman 
 V. Proctor, 102 U. S. 707. 
 
 It is not a patentable process to apply heat within a barrel of wine by old 
 and well known means to produce the same result attained by applying heat
 
 § 819 PROCESS 743 
 
 to the outside of the barrel. — Dreyfus v. Searle, 124 U. S. 60: 31 L. Ed. 
 352; 8 S. Ct. 390. 
 
 And why is not such new method a process? There is no new machinery. 
 The rollers are an old instrument, the mixing machinery is old, the hydraulic 
 press is old ; the only thing that is new is the mode of using and applying these 
 old instrumentalities. And what is that but a new process? This process 
 consists of a series of acts done. It is a mode of treatment. Why should 
 it be doubted that such a discovery is patentable? It is highly useful, and it 
 is shown by the evidence to have been the result of careful and long continued 
 experiments and the application of much ingenuity. — Lawther v. Hamilton, 
 124 U. S. 1; 13 L. Ed. 325; 8 S. Ct. 342. 
 
 For general rule on patentability of an art or an art and process, see 
 Telephone Cases, 126 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Full discussion of in hght of the leading cases which are cited. — Risdon 
 V. Medart, 158 U. S. 68; 39 L. Ed. 899; 15 S. Ct. 745. 
 
 The question now concerns the prima facie validity of the claim. Owing 
 to the natural qualities which distinguish the constituents of a grain of corn, 
 namely, the germ, the starchy portion, and the hull, and the natural qualities 
 of water, the characteristic process of the claim is attained under the con- 
 ditions named therein ; that is, when the apparatus specified, or some equiva- 
 lent apparatus, is supplied. Without the forces inevitably and naturally 
 brought into play by the water and the ingredients of the corn grains, the 
 apparatus would accomplish nothing. The apparatus is functional, towards 
 the result intended, only as supplying conditions under which movements 
 and changes of structure due to the natural quahties of the substance treated 
 take place. If the process be new, if it were first reduced to practice by 
 the apparatus proposed or indicated in the claim when read in the light of the 
 specification, then the claim sets forth a new means. If the operation, 
 namely, the automatic separation of an increasing mass of corn into germs, 
 hulls, and starch by means of starch milk, itself continuously and automat- 
 ically formed in the course of the operation, be new, then the claim would 
 seem to be vaUd and patentable. — Chicago v. Pope, 84 Fed. 977; 28 C. 
 C. A. 594. 
 
 Rob. Pat. 1 256 n.; Coming v. Burden, 15 How. 247; Locomotive v. Medart, 
 158 U. S. 68; Eames v. Andrews, 122 U. S. 41; Coclirane v. Deener, 94 U. S. 780. 
 
 There is, in fact, a difference in the material of the two pavements, and we 
 are inclined to differ from the circuit court, and to regard the Perkins patent 
 as patentable, because it was an application of an old process of intense 
 heating, by means of a movable furnace, to different and dissimilar materials. 
 The two processes were not exactly alike. Crochet treated the surface by 
 vivid heat, removed the damaged part, roughened the remaining surface, 
 and added new material. Perkins heated in the same way, reduced the old 
 material to a soft, pliable state, agitated it with a rake, and mixed it with 
 enough new material to fill up the spot to be repaired. — U. S. Repair v. 
 Standard, 95 Fed. 137; 37 C. C. A. 28. 
 
 As it involves not merely the function of a mechanical device, but certain 
 elemental action, we think it the proper subject of a process patent. It is, in 
 fact, a series of acts performed with molten glass and wire-gauze, by which 
 they are transformed into a separate manufacture, within the definition of a 
 process patent. — Streator v. Wire-glass, 97 Fed. 950; 38 C. C A. 573. 
 
 Cochrane v. Deener, 94 U. S. 780.
 
 744 THE FIXED LAW OF PATENTS §§ 820-821 
 
 That in the process of hydrating Ume, where the only novel feature was 
 supplying the exact amount of water to complete the hydration, all the other 
 steps of the process being old, and knowledge of the fact that such exact 
 amount might be determined, did not involve invention, see — Lauman v. 
 Urschel, 136 Fed. 190; 69 C. C. A. 206. 
 
 The hand and machine methods are essentially the same. The fact that 
 in one case the work is done by a hand tool, and in the other by a machine, 
 does not influence, much less control, the decision of the question. The com- 
 plainant did not discover a new method of chipping glass. It is rather the 
 old method performed by a new tool. It is impossible to demonstrate wherein 
 the claims of this patent set forth anything not methodically pursued in the 
 hand operation. — Penn v. Conroy, 159 Fed. 943; 87 C. C. A. 149. 
 
 We are satisfied that Cameron was the first one to subject a flowing current 
 of sewage to the action of anaerobes and aerobes under conditions which 
 secured their separate and successive action. This certainly involved " the 
 use of one of the agencies of nature for a practical purpose." The process was 
 one which puts a force of nature into a certain specified condition and then 
 uses it in that condition for a practical purpose. — Cameron v. Saratoga, 
 159 Fed. 453; 86 C. C. A. 483. 
 
 Risdon v. Medart, 153 U. S. 77; Bell Telephone, 126 U. S. 1. 
 
 § 820. Process and Product — Claims for. 
 
 The contention that, in the patent, the product inheres in the process, 
 and that, therefore, the claim of the one necessarily includes the other, 
 cannot be sustained on principle or authority. The claim is single and is 
 either for a process or product; otherwise, if the claim is divisible, one part 
 being for a process and the other for a product, it would be a double claim, 
 and as such in danger of being held void for ambiguity. The applicant for 
 a patent may separately claim both a process and a product, but cannot 
 properly claim them in one claim. They are the proper subjects of separate 
 and distinct claims. — Durand v. Schuize, 61 Fed. 819; 10 C. C. A. 97. 
 
 Merrill v. Yeomans, 1 Ban. & A. 55; Goodyear v. Rubber Co. 2 Cliff. 371. 
 
 If the complainant had included in his patent no claims except the product 
 claims, he could not have obtained thereafter another patent for the process, 
 for the reason that the process and the product are substantially one in- 
 vention or discovery. — Downes v. Teter-Heany, 150 Fed. 122; 80 C. C. A. 76. 
 
 Hosier v. Mosler, 127 U. S. 361. 
 
 § 821. Process and Product — Patentability. 
 
 Explaining and distinguishing Goodyear v. Day, 2 Wall. Jr. 283, and 
 Goodyear v. R. R. Co. 2 Wall. Jr. 356. — Powder v. Powder, 98 U. S. 126; 
 25 L. Ed. 77. 
 
 The patent in suit was for a product, viz. a hard rubber plate for artificial 
 teeth, and the product was described and claimed in terms of the process. 
 Held that another product for performing the same function, but produced 
 from different material and by a different process was not infringement. — 
 Goodyear v. Davis, 102 U. S. 122; 26 L. Ed. 149. 
 
 The original patent was for a process; the reissue was for the product. 
 Although there are two patents, one for a process and the other for a 
 product, there is in fact but one invention ; and it may be assumed that the 
 new article of manufacture is a product which results from the use of the
 
 §822 PROCESS ' 745 
 
 process described in the patent, not one which may be produced in any other 
 way. - Plummer v. Sargent, 120 U. S. 442; 30 L. Ed. 737; 7 S. Ct. 640. 
 
 One and the same patent may cover both a process and product, but, if the 
 patentee choose to restrict himself to one by his claim, he cannot include the 
 other also by a reference to other parts of his specification. — Durand v. 
 Schulze, 61 Fed. 819; 10 C. C. A. 97. 
 
 The patent also describes a process for making it which was new, and up 
 to the present time is the only known process by which it can be produced. 
 Since then, there was novelty both in the process and product Minsberg 
 might have had one claim for the process and another claim for the product. 
 — Maurer v. Dickerson, 113 Fed. 870; 51 C. C A. 494. 
 
 Rubber v. Goodyear, 9 Wall. 788; Merrill v. Yeomans, 94 U. S. 568. 
 
 The original specifications and drawings disclose the envelope construction 
 of air-passages surrounding the jet of gas. In these circumstances we 
 conclude that there is no substantial conflict between the statements of the 
 original and amended specifications; that the original specification sutti- 
 ciently disclosed the nature of the invention claimed in the patent, and 
 sufficiently suggested the process involved therein ; and that as the invention 
 or discovery of the process involved the product, and the product was the 
 result of the process, the claims for the process were properlyincluded in the 
 patent in suit. - Kirchberger v. American, 128 Fed. 599; 64 C. C. A. 107. 
 See 215 U. S. 161. .. o ,.o 
 
 Powder V. Powder, 98 U. S. 126; Wing v. Anthony, 106 U. S. 142. 
 
 That there may coexist both a patentable process and Product is plain 
 In such case both the process and the product must be new and useful, bo 
 t may be conceded thLt a process may be old, but the pro^-^ ^^^^^^^^^ 
 product old and the process new. In such case one w,ll be patentable and 
 the other not. In Providence v. Goodyear, 9 Wall. 788 it was said: The 
 patentability, or the issuing of a patent as to one in no ^-^ afff s the^^^^^^^^ 
 of the inventor or discoverer in respect to the other They are whoUy 
 disconnected and independent facts." Nevertheless it does ^^^ foUow \hat 
 a sinele patent may issue for both a process and a product when the latter 
 fs S/rndepende'nt of the other. The Goodyear Pf^t. referred ^^^^^^^^^ 
 originally issued for both a process and a manufacture. /^ was suriento 
 and two patents taken, one for the process and one for the product. 
 Sanitas v. Voigt, 139 Fed. 551 ; 71 C. C. A. 535. 
 
 That the abandonment of an application for a Pf ^f^ upon the P^^^^^^^ 
 of a process does not in any way argue invalidity of the process patent, see 
 — Mica Insulator v. Commercial, 166 Fed. 440; C. C. A. 
 
 § 822. Miscellaneous Rulings. 
 
 In cases of chemical inventions, when the ^^^^f^ure claimed as ^^^^^^^^^^ 
 not a new composition of matter, but an extract obtained by the ^ecompo^i 
 tion or disintegration of material substances, it cannot be of ^niportance 
 from what it has been extracted. - American v. Fiber, 90 U. S. 066, 23 
 L. Ed. 31. 
 
 It is quite obvious that a manufacture or a product of a P^/>f i^' "?^Y/f 
 no novelty while, at the same time, the process or agency by which it s 
 prodS may be both new and useful - a great improvement on any previ-
 
 746 ' THE FIXED LAW OF PATENTS § 822 
 
 ously known process and therefore patentable as such. — American v. Fiber, 
 90U. S. 566; 23 L. Ed. 31. 
 
 If, however, he had in his own mind only a claim for the process of manu- 
 facture by which the article was made, his use of the term is intelligible. — 
 Merrill v. Yeomans, 94 U. S. 568; 24 L. Ed. 235. 
 
 Another person might invent a better apparatus for applying the process 
 than that pointed out by Nelson, and might obtain a patent for such improved 
 apparatus; but he could not use the process without a license from Nelson. 
 His improved apparatus would, in this respect, stand in a relation io the 
 process analogous to that which an improvement on a patented machine 
 bears to the machine itself. — Tilghman v. Proctor, 102 U. S. 707 ; 26 L. 
 Ed. 279. 
 
 It is clear that both patents must stand or fall together. If the patent for 
 the i^rocess is invalid so must be the patent for the product. — Western v. 
 Ansonia, 114 U. S. 447; 29 L. Ed. 210; 5 S. Ct. 447. 
 
 The fact that by careful workmanship the products are indistinguishable 
 by mere inspection does not establish the identity of the processes; and as 
 the patent for the product must be limited to an article made by the par- 
 ticular process, the inquiry must be determined by a comparison between the 
 methods actually employed. — Plummer v. Sargent," 120 U. S. 442; 30 L. 
 Ed. 737; 7 S. Ct. 640. 
 
 After a patent is granted for an article described as made by causing it to 
 pass through a certain method of operation to produce it, the inventor cannot 
 afterwards, on an independent application, secure a patent for the method 
 or "process covered by the previous patent, which article was described in 
 that patent as produced by the method or process sought to be covered by 
 taking out the second patent. — Mosler v. Hosier, 127 U. S. 354 ; 32 L. Ed. 
 182; 8 S. Ct. 1148. 
 
 True, if the process were the mere function of a machine, another machine 
 capable of performing the same function might be an anticipation; but this 
 is not because a process can be anticipated by a mechanism, but because, 
 as we have held in several cases, the mere function of a machine is not patent- 
 able as a process at all. — Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 
 968; 22S.,Ct. 698. 
 
 The description being addressed to those skilled in the art, the statement 
 being made that variation is necessary according to the quality of the 
 element used, it is sufficient if its application in a specific instance be given. — 
 Schwarzwalder v. N. Y. 66 Fed. 152; 13 C C. A. 380. 
 
 It may be that the variance results from some immaterial change in the 
 process from the use of starting material, which is within the fair range of 
 equivalents ; but, having failed to prove identity by the prescribed tests, the 
 burden is on the holder of the patent to show that the variances in process 
 are immaterial, or the starting materials equivalents of those of the patents. 
 — Matheson v. Campbell, 78 Fed. 910; 24 C. C. A. 284. 
 
 Whether the success of the operation under the patent in suit is due to 
 the superiority of its process for economical production or to the changed 
 conditions referred to, or to both combined, is not material, in view of the
 
 § 823 PRODUCT 747 
 
 fact that the product, and not the process, is the claim of discovery. — 
 National v. Swift, 104 Fed. 87; 43 C. C. A. 421. 
 
 It is necessary to read them (product claims) in connection with the proc- 
 ess described in the patent and to limit the scope of the claims to a_^ product 
 which is the result of that process. - Downes v. Teter-Heany, loO Fed. 122, 
 80 C. C. A. 76. 
 
 PRODUCT. 
 
 Patentability § 823 I Infrir^ement §| 521 690^ Madjme 
 
 § 823. Patentability. 
 
 \ machine may be new, and the product or manufacture Proceeding from 
 it may be dd. In that cas^ the former would be patentable and the latter no . 
 Th^ machine may be substantially old and the product new. In that e^^nt 
 the letter, and /ot the former, would be patentable Bo^^^^^^^ 
 both may be old. In the former case both vs^uld be pato^itaUe , in the latter 
 neither. — Rubber v. Goodyear, /6 U. S. /88, 19 L. J^a. odd. 
 
 Where a new process produces a new substance, the invention of the 
 nroIessTs the sLe as the invention of the substance, and a patent for the one 
 SiaTbe reissued so as to include both as was done - f case of Goodyear s 
 vulcanized India rubber patent. - James v. Campbell, 104 U. b. 3ob, -D 
 
 L. Ed. 786. 
 
 While a new process for producing it was patentable, the product itself 
 root CaUng it artificial alizarine did not make it a new composition of 
 a well known substance. - Cochrane v. Badische, 111 U. &. 293, 28 L. i^a. 
 
 433; 4 S. Ct. 455 
 
 Wood Paper Patent, 23 Wall. 566 
 
 ThP fifth claim of the patent is obviously an attempt by the patentee 
 to obLin a mono^o?v of the product of the apparatus described in the patent, 
 
 rrnroducS involved invention, as distinguished from ordinary mechanical 
 skin ntT new only in the sense that it embodies and represents superior 
 torkm4 hip, or is a'n improvement upon a.i old -t-e in degree and^^^^ 
 Tellence, the claim is invalid. - Edison v. American, 114 Fed. 926, 5- U 
 
 ^'t^'/^^" Mnffitt l^Fed 252- Woostert.. Calhoun. 11 Blatchf. 215; Excejsior 
 . Kn 3^??d 221 Smith ;. Nichols, 21 Wall. 112; Locomotive .. Medart, 
 158 U. S. 79.
 
 748 
 
 THE FIXED LAW OF PATENTS 
 
 §824 
 
 superior efficaciousness, or some new properties which they possess, and not 
 in any mere change of form produced by mechanical division of the cooked 
 grain either before or after the last step in cooking. Cooked grain thus pre- 
 pared and having all the characteristics called for by the claim, may con- 
 stitute a new article of commerce. But do they render the article new in a 
 patentable sense? If so, it must be due to some new properties or improved 
 efficacy as a food. — Sanitas v. Voigt, 139 Fed. 551 ; 71 C C. A. 535. 
 
 Glue Co. V. Upton, 97 U. S. 3; Cerealine v. Bates, 101 Fed. 272; Maryland v. 
 Dorr, 46 Fed. 773. 
 
 A mere difference in the proportions of the constituents of an alloy, how- 
 ever useful the result may be, does not entitle the originator to the monopoly 
 of a patent in the absence of other circumstances than those here disclosed. 
 
 — Brady v. Ajax, 160 Fed. 84; 87 C. C. A. 240. 
 
 § 824. Miscellaneous Rules. 
 
 When a new article, a new property in the composition of matter, is thus 
 brought to light for the enrichment of the world's knowledge and uses, the 
 statute intends that the discoverer may be rewarded with exclusive rights 
 to make and sell the article during the moderate term for which the patent is 
 granted. This broad monopoly can be granted for a true discovery only, 
 and not for the mere improvement of a known composition. — National v. 
 Swift, 104 Fed. 87; 43 C. C. A. 421. 
 
 Merrill v. Yeomens, 94 U. S. 568. 
 
 Given, two such propositions as the process 'in the prior patents, like 
 ingredients, with coagulation of the albuminoids and resultant product 
 clearly set forth, there was surely no pioneer discovery in chemistry on the 
 part of Van Ruymbeke to authorize a patent for the identical product, 
 however meritorious his advance may haVe proved in the process to that end. 
 
 — National v. Swift, 104 Fed. 87; 43 C. C. A. 421. 
 
 That claim, in terms, is for the described product, having certain dis- 
 tinguishing characteristics which are set forth in the claim with great fullness. 
 In our judgment it is very clear that the claim is not restricted to the product 
 made by the described process, but covers the chemical individual, how- 
 ever produced. We know of no rule requiring a construction limiting a claim 
 for a chemical product to the described process, because the evidence shows 
 that it cannot be made in any other way than by the process recited. No 
 warrant for such a rule is to be found either in the statute or in the decisions. 
 
 — Maurer v. Dickerson, 113 Fed. 870; 51 C. C. A. 494. 
 
 In general, when the patent is for a product of manufacture, it is not 
 material by what means or by what process it is manufactured. But it is 
 obvious that there must be an exception to this rule to cover cases where the 
 identity or specific character of the thing patented is affected by the means or 
 method of its manufacture. Thus it is easy to understand that a glove made 
 up of knitted material is a different thing from one made from cloth or 
 leather. Its qualities are dependent on the wav in which it is made. — 
 Lamb V. Lamb, 120 Fed. 267; 56 C. C. A. 247. 
 
 PROFITS. 
 
 Statutory Provision § 825 
 General Statennent § 826 
 Accountings § 827 
 Deductions 
 
 General Expenses — Not Proper 
 
 ^ 828 
 
 Losses § 829 
 Manufacturer's Profits § 830
 
 825-826 
 
 PROFITS 
 
 749 
 
 Rules for § 831 
 
 Salaries § 832 
 
 Miscellaneous § 833 
 Definition § 834 
 Interest § 835 
 Master in Chancery § 836 
 Measure of 
 
 Actual Gains § 837 
 
 Entire Profits § 838 
 
 Rules § 839 
 
 Savings by Use § 840 , , „., 
 
 Trustee ex Maleficio Rule § 841 
 
 Miscellaneous Rules § 842 
 
 Segregation 
 
 Burden of Proof § 843 
 
 Failure to Make § 844 
 
 General Rules § 845 
 
 Miscellaneous Rules § 846 
 Miscellaneous Rules Concerning 
 Profits § 847 
 
 See _ Damages § 278; Designs § 328; 
 Jurisdiction § 719; Marking " Pa- 
 tented" § 776; Reissue § 887; 
 Royalties § 897; Statute of Limitations 
 §921 
 
 § 825. Statutory Provision. 
 
 Ti.. «PVPrn1 courts vested with jurisdiction of cases arising under the 
 pal't rs sha^rhiveTower to grLt iniunctions -cording to the cour^ 
 
 thprfshVb^io recovery of profit^s or damages for any infringement com- 
 
 existing causes of action. — R. S. 4921. 
 
 The statute of limitation provision was added by the act of Mar. 3, 1897, 
 and went into effect Jan. 1, 1898. 
 
 5 826. General Statement. 
 
 Much that has been said by way of generalstatement under Damage, 
 nnnhes here Many of the rules under that title apply to profits The 
 
 add the following statement, made under oath, by a lawyer 01 101 g f 
 
 ^^^^i have had the equity docket of the ^-^hern Di^^^^^^^^ 
 examined and have found, as a fair ^^emge that only fo^^^y^l^J^^^ ^^^ 
 patent causes wherein accountings we^^^^^^^^ ^Pg p^^. 
 
 accountings appear of record. (Compi ts. liec, 
 
 '%^e statement of counsel in that case, also made under oath, may be 
 
 "'■atTmy invariable practice founded upon my own «Pf ™\™ P^*^^^ 
 litigation, e^xtending over the past '^■ghteen yea- and upon m^^^^^^^^^^ 
 
 of the expevience of oth«;P»t«"LfXre'ishardW anTchance of recovering 
 
 faraSslrinti^'f^t!^^^^^^^^^^^^
 
 750 THE FIXED LAW OF PATENTS §827 
 
 injunction, and that where injunction cannot be obtained, the patentee is 
 without remedy." 
 
 § 827. Accountings. 
 
 The right to an account of profits is incident to the right to an injunction 
 in copy- and patent-right cases. — Stevens v. Gladding, 58 U. S. 447 : 15 
 L. Ed. 155. 
 
 See Stephens v. Cady, 14 How. 528. 
 
 Profits obtained by infringement after suit is begun can be reached only 
 when such infringement is a continuation of former infringement. — Marsh 
 V. Nichols, 128 U. S. 605; 32 L. Ed. 538; 9 S. Ct. 168. 
 
 Taking into account the fact that defendant did not make due effort to 
 carry out his application (the application for the patent in suit), and that it 
 certainly does not appear that the Morrow device was so much, if at all, 
 better than the licensor's, that due business diligence did not require the 
 company still to push the latter, we are of opinion that on this item it properly 
 was held to account. — Eclipse v. Farrow, 199 U. S. 581; 50 L. Ed. 317; 
 26 S. Ct. 150. 
 
 Upon an accounting (or an infringement commenced before the bill was 
 filed, and continued afterwards, the complainant is entitled to recover profits 
 derived by the defendant from his infringement to the date of the accounting. 
 "The practice saves a multiphcity of suits, time and expense." — Unter- 
 meyer v. Freund, 58 Fed. 205; 7 C. C. A. 183. 
 
 Tatham v. Lowber, 4 Blatchf. 86; Rubber Co. v. Goodyear, 9 Wall. 788; Marsh 
 V. Nichols, 128 U. S. 605; Robinson v. Bland, 2 Burrows, 1086; Holabird v. 
 Burr, 17 Conn. 563. 
 
 In a patent case there can be no right to an accounting unless the infringe- 
 ment be made out; but the infringement may be found and the injunction 
 awarded in favor of a complainant who, upon the proofs, has no right to an 
 accounting. Upon the issue whether or not the complainant is entitled to 
 the accounting, it may not appear that the defendant used or sold the 
 patented device, but merely that he made it; or it may otherwise appear 
 that there were, in fact, no profits, or that an account had already been stated, 
 conditionally or otherwise, by the parties themselves, and that for want of 
 notice, as provided in sec. 4900 of the Revised Statutes of the United States, 
 no damages could be recovered. In such event there could be no award of 
 an accounting in the decree, although the perpetual injunction would be 
 awarded. Wliittemore v. Cutter, Fed. Cas. No. 17,601 ; Elizabeth v. Pave- 
 ment, 97 U. S. 127. In a patent case on the equity side the primary and 
 essential contention relates to the ownership of the patent by complainant, 
 the validity of the claims, and the infringement. The final adjudication in 
 favor of complainant on this contention is a perpetual injunction. — Stand- 
 ard V. Crane, 76 Fed. 767; 22 C. C. A. .549. 
 
 If we could discover any theory upon which a substantial recovery might 
 be had we would not hesitate to "direct a reference, but it is plain that such 
 a proceeding will prove abortive, after subjecting both parties to large 
 additional expense and the defendants to unnecessary annoyance. The 
 master would be involved in an inextricable tangle from which it will be 
 impossible to emerge with a substantial recovery based upon a rational rule 
 of damages. The boards sold by the defendants^ and which they had a right 
 to sell, were intended to be used in connection with a large number of games 
 m the description of some of which the word " Carrom " might, in certain
 
 § 828 PROFITS 751 
 
 «<,nppts be used innocently. An attempt to segregate the profits, if any, 
 reLTtSg from thrrgitinfate use of the word would requu-e an excursion 
 [So the'realms of confecture and speculation without hope of any tangible 
 
 of a trademark involved in the suit, and not the infringement oi the mechan- 
 ical patent. 
 
 That an aDDellate court may correct the assessment of damages or account 
 nf profits (lUendthe^^^^^^^ back to the Circuit Court for further instruction, 
 or ?2) itself proceed tothe assessment of profits by dealing with the master s 
 report as agected by the defendant's exceptions, see-Doten .. City of 
 Boston, 138 Fed. 406; 70 C. C. A. 308. 
 
 Cawood Patent, 94 U. S. 695. 
 
 wmmsmm. 
 
 81 C. C. A. 420. ,. V, ^ AV U t;i r 
 
 Distinguishing Moore v. Marsh, / Wall. 515 
 Adams v. Bellaire, 25 Fed. 270 
 
 TV.O+ ih^ poiirt havin*- decreed infringement of a certain claim it is not 
 
 ganri52 Fed. 178; 81 C. C. A. 420. 
 
 When the order of reference -- -^.'J.'i^l^i.t'.lf.'^^^'^^t^f if^^^^^^^^ 
 
 fringements in a supplemental bi", (rather than to ^staD . 
 
 It was not open to defendant on the q«-«°7/„Stlt'trrhad 
 t^^1t'rot^fde^|V"^^^^^^^^^^ 
 
 369; 82 C. C. A. 445. 
 
 e 828 Deductions - General Expenses - Not Proper.
 
 752 THE FIXED LAW OF PATENTS §§829-830 
 
 was charged with the amount received by him from sales as stated by himself. 
 Besides a credit for the cost of manufacture, as found by the master, and a 
 credit for advertising, the defendant was allowed for freight and cartage, 
 and discounts to purchasers. We think the master was right in disallowing 
 the lumping sum which the defendant claimed for " clerk hire, sellirig ex- 
 penses, rent and insurance." That was a mere estimate unsupported by 
 evidence. We do not see upon what principle the defendant is entitled to 
 an allowance for the sum paid for other patents and the cost of his patterns. 
 They remain his property. These credits were properly disallowed. — Sayre 
 V. Scott, 55 Fed. 971 ; 5 C. C. A. 366. 
 Crosby v. Consolidated, 141 U. S. 441; Elizabeth v. Pavement, 97 U. S. 126. 
 
 This item in the exhibit filed by the defendant's bookkeeper may have been 
 the general cost of carrying on the entire business of the defendant, including 
 its manufacturing departments, or it may be a mere approximation of ex- 
 penses of selling, which would include interest upon the general capital 
 engaged. If this is the fact, this would be wrong. — Kisinger-Ison v. Brad- 
 ford, 123 Fed. 91; 59 C. C. A. 221. 
 
 Rubber v. Goodyear, 9 Wall. 789. 
 
 § 829. Deductions — Losses. 
 
 Losses incurred by the defendant through its wrongful invasion of the patent 
 are not chargeable to the plaintiff, nor can their amount be deducted from 
 the compensation which the plaintiff is entitled to receive. — Consolidated 
 V. Crosby, 141 U. S. 441 ; 35 L. Ed. 809; 12 S. Ct. 49. 
 
 Cawood Pat. 94 U. S. 695; Elizabeth v. Nicholson, 97 U. S. 126; Tilghman v 
 Proctor, 125 U. S. 136. 
 
 The court below also erred in sustaining defendant's claim of a deduction 
 of the losses incurred by said defendant during the third period of the reckon- 
 ing and in deducting these losses from the profits which the complainants 
 were otherwise entitled to recover. Cawood Pat. 94 U. S. 710, and Rubber Co. 
 V. Goodyear, 9 Wall. 788 are cited as authority for the ruling; but these cases 
 only hold that losses occurring concurrently with the gaining of the profits 
 may be taken into account — that is to say, if they are losses directly result- 
 ing from the particular transaction on which the profits are allowed. (The 
 fact here being that the loss period was subsequent to and distinguishable 
 from the profit period.) The meaning and authority of such general state- 
 ments should be limited to the facts of the case in which they were expressed. 
 And it is necessary to impose such limitations in order to make the statements 
 consistent with the law as since declared by the same court. Callaghan v. 
 Myers, 128 U. S. 617; Crosby v. Safety, 141 U. S. 453; Walker on Pat. 
 (4th ed.) sec. 713. — Canda v. Michigan, 152 Fed. 178; 81 C. C. A. 420. 
 
 § 830. Deductions — Manufacturer's Profits. 
 
 The master correctly refused to allow " manufacturer's profits "and interest 
 on the capital stock. The correct rule is the difference between cost and yield. 
 — Rubber Co. v. Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 As no countervailing evidence was put in by the defendants and no 
 specific exception was made to the master's calculations, that he made no 
 allowance for a manufacturer's profit, we think there is no foundation on 
 which to base such a claim now. —Warren v. Keep. 155 U. S. 265; 39 L. 
 Ed. 144; 15 S. Ct. 83.
 
 §§ 831-833 PROFITS 753 
 
 When the complainant's damages are measured by the profits of defend- 
 ants, it is true that credits have been allowed to the latter " as a mere agency 
 for producing a patented article for so-called ' manufacturer s prohts. 
 This rule has generally been applied in cases where the patented invention 
 is a distinct invention and a part only of the entire structure which was made 
 and sold. In a noted case, where the patent was for an entirely new product 
 of a process, which was not separable into parts, and the infringing defendant 
 made and sold the entire article, manufacturer's profits were not allowed 
 upon the ground that the entire profits, which were the difference between the 
 cost and yield, belonged to the owner of the patent. It is true that^the prin- 
 ciple of reduction of the profits of the defendant infringer by the deduction 
 of manufacturer's profits, when the patented improvement was a separable 
 part of the entire structure has been thought applicable m two cases to a 
 reduction of damages based upon loss of the complainant s profits, when the 
 patented improvement was a distinct and separable part of the whole 
 structure which the complainant made. The facts of this case have no 
 resemblance to those cases. There is no apparent reason why the loss which 
 was suffered bv the deliberate act of the defendant, which deprived the 
 complainant of trade in the special articles of "^^^nufacture, every expense 
 of its business going on as before to its full extent, should not be the actual 
 profit which it would have made upon the sale of a number of boxes which 
 it was prevented from seUing. — National v. Elsas, 86 Fed. 91/; 30 C. L. 
 
 A 487 
 
 Warren v. Keep, 155 U. S. 265; Buerk v. Imhauser Fed. Cas. 2,107; Rubber 
 Co. V. Goodyear, 9 WaU. 788; Robertson v. Blake, 94 U. S. 728. 
 
 § 831. Deductions — Rules for. 
 
 The proper rule for determining the profits of defendant upon a patented 
 attachment is to deduct from the full profits arising therefrom a propor- 
 tional amount of the expenses of the busmess. - Tremaine v. Hitchcock, 90 
 U. S. 518; 26 L. Ed. 97. 
 
 Complainant proved from testimony given by defendant in another case 
 theTrofits that defendant had made in his business. Defendant neither 
 provS any deductions therefrom nor in any. way explained t^jt testimony, 
 but on the appeal undertook to show certain deductions. Held. .The de- 
 fendant could have made any explanation of his testimony he desired and 
 had the question been raised before the master the complainan s would have 
 tl an oTportunity to show that the profit was the same during the entire 
 infringing period. — Cimiotti v. Bowsky, 143 Fed. 508 ; 74 C. C. A. 617. ^ 
 
 § 832. Deductions — Salaries. 
 
 The master properly refused to deduct extraordinary salaries which ap- 
 peIr'ed"iftl7bo|ks^eing satisfied they w.re dividends of profit under 
 another name. — Rubber v. Goodyear, 76 U. S. /88, 19 L. Ed. 5b0. 
 
 When and when not to be computed on accounting. - Seabury v. Am 
 Ende 152 U. S. 561 ; 38 L. Ed. 553 ; 14 S. Ct. 683. 
 
 § 8^^. Deductions — Miscellaneous. 
 
 While repairs and wear and tear should be taken into account, value of 
 mSials brought for the P-P-e of tje infringement are not deductible 
 items. — Rubber v. Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 Defendants added a twenty per cent, profit to the cost of lumber used in 
 th?infrlngement, and the court'said: It is only necessary to state the claims
 
 754 THE FIXED LAW OF PATENTS §§ 834-835 
 
 to show its preposterousness. — Elizabeth v. American, 97 U. S. 126; 24 
 L. Ed. 1000. 
 
 The complainant, as territorial assignee, was entitled to a certain propor- 
 tion of the profit. Defendant, in mitigation of damages undertook to limit 
 recovery to such proportion. Held: Not good. — Elizabeth v. American, 
 97 U. S. 126; 24 L. Ed. 1000. 
 
 The defendant will not be allowed to diminish the show of profits by 
 putting in the unconscionable claims for personal services or other inequitable 
 deductions. — Elizabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 Rubber Co. v. Goodyear, 9 Wall. 788. 
 
 Interest on plant when other manufacture conducted. — Seabury v. 
 Am Ende, 152 U. S. 561 ; 38 L. Ed. 553; 14 S. Ct. 683. 
 
 The item of commissions paid on sales was a proper credit. The profits 
 recoverable are only those which were actually made, and the general burden 
 is upon the plaintiff to show what those profits were. The fair and reasonable 
 expenses incident to the sale of the infringing devices should be deducted 
 from the gross profit shown by the evidence. — Kisinger-Ison v. Bradford, 
 123 Fed. 91; 59 C. C. A. 221. 
 
 Tremaine v. Hitchcock, 90 U. S. 518; Tilghman v. Proctor, 125 U. S. 151. 
 
 § 834. Definition. 
 
 " Profits " is the gain made upon any business or investment, when both 
 the receipts and payments are taken into the account. — Rubber v. Good- 
 year, 76 U. S. 788; 19 L. Ed. 566. 
 
 People V. Super. Niag. 4 Hill, 23. 
 
 In patent nomenclature, what the infringer makes is " profits; " what 
 the owner of the patent loses by such infringement is " damages." — Dia- 
 mond V. Brown, 166 Fed. 306; C. C. A. 
 
 § 835. Interest. 
 
 In making up the decree, interest was added from the date of the master's 
 report on the balances found due after the ascertained deductions had been 
 made and this is assigned as error. As a general rule, a patentee is not en- 
 titled to interest on profits made by an infringer. The reason is that profits 
 are regarded in the light of liquidated damages. Parks v. Booth, 102 U. S. 
 106. But in many of the cases it is said that circumstances may arise in which 
 it would be proper to add interest. Mowry v. Whitney, 14 Wall. 653; Little- 
 field V. Perry, 21 Wall. 230. Here, as has been seen, in effect, the original 
 decrees rendered were affirmed to the extent of the present recoveries. The 
 cases were only sent back to ascertain how much should be deducted from 
 those decrees for errors in the accounts as then stated. If the decrees had 
 been entered originally for the present amounts the patentee would have 
 been entitled to interest from the date of the decree. R. R. v. Turrill, 
 101 U. S. 836. Under these circumstances, it seems to us not at all inequitable 
 to allow interest on the corrected amounts from the date of the master's 
 report. — Railroad v. Turrill, 110 U. S. 301; 28 L. Ed. 154; 4 S. Ct. 5. 
 
 Interest is allowed, in the absence of special circumstances from the date 
 of filing the report of the master. — Consolidated v. Crosby, 141 U. S. 441; 
 35L. Ed. 809; 12 S. Ct. 49.
 
 § 836 PROFITS 755 
 
 Silsby V. Foote, 61 U. S. 378; Mowry v. Whitney, 81 U. S. 620; Littlefield v. 
 Perry, 88 U. S. 205; Act July 8, 1870, Ch. 230, sec. 55; Parks v. Booth, 102 
 U. S. 96; Root v. Railway, 105 U. S. 189; Railroad v. Turrill, 110 U. S. 301. 
 
 § 836. Master in Chancery. 
 
 The conclusions of the master have every reasonable presumption in their 
 favor, and are not to be set aside or modified, unless there clearly appears to 
 have been error or mistake on his part. — Tilghman v. Proctor, 125 U. S. 
 136; 31 L. Ed. 664; 8 S. Ct. 894. 
 
 Medsker v. Bonebrake, 108 U. S. 66; DonneU v. Columbia, 2 Sumn. 366; 
 Mason v. Crosby, 3 Woodb. & M. 258; Paddock v. Commercial, 104 Mass 521; 
 Richards v. Todd, 127 Mass. 167. 
 
 The report of a master is merely advisory to the court, which it may accept 
 and act upon in whole or in part, according to its own judgement as to the 
 weight of the evidence. Yet in dealing with exceptions to such reports 
 " the conclusions of the master, depending upon the weighing of conflicting 
 testimony, have every reasonable presumption in their favor and are not to 
 be set aside or modified unless there clearly appears to have been error or 
 mistake on his part." — Boesch v. Graff, 133 U. S. 697; 33 L. Ed. 787; 10 
 S. Ct. 378. . 
 
 Kimberly v. Arms, 129 U. S. 512; Tilghman v. Proctor, 125 U. S. 136. 
 
 Exceptions to master's report raised for the first time in the Supreme 
 Court will not be entertained. — Topliff v. Topliff, 145 U. S. 156; 36 L. Ed. 
 658; 12 s. Ct. 825. 
 
 McMicken v. Perin, 59 U. S. 507. 
 
 The findings of the referee were marked " approved " by counsel for both 
 parties. Held: After all this, we perceive no standing ground for an 
 exception to the admission of evidence embodied in the agreed statement of 
 facts. — Deering v. Kelly, 103 Fed. 261 ; 43 C. C. A. 225. 
 
 If, in the progress of the references, the parties neglect or omit to bring 
 before the master all the facts bearing upon the matters referred, and neces- 
 sary to the correct conclusion by the court, they are in default. And by this 
 default the court is deprived of the aid sought in ordering the reference. If 
 the master omit or neglect to report all the facts produced before him bearing 
 upon the matters referred to, he is in default. The parties are put to a dis- 
 advantage, and the report should be recommitted, unless the parties supply 
 the omission by stipulation. It is true that in some of the circuit courts a 
 loose practice has growai up, and exceptions to a master's report are enter- 
 tained, dealing with facts to which his attention w^as never called. This 
 practice does not commend itself. It frequently operates a surprise, and it 
 shuts the door to any explanation. It gives room for the display of skill 
 and strategy on the part of ingenious counsel. It may secure success at the 
 expense of right. When there exists a rule of practice, inculcated and ap- 
 proved by recognized authority, it should be followed. To prevent mis- 
 apprehension, it is best to state that we do not require the conclusions of the 
 master on matters of law- to be first excepted to before him. This is unneces- 
 sary. — Gay V. Camp, 68 Fed. 67; 15 C. C. A. 226. 
 
 2 Dan. Ch. Pr. 1314, and cases cited. 
 
 Every reasonable presumption is in favor of a master's report based on 
 oral testimony, and it will not be set aside or modified unless there clearly
 
 756 THE FIXED LAW OF PATENTS § 837 
 
 appears to have been error or mistake. — FuUerton v. Anderson-Barngrover, 
 166 Fed. 443; CCA. 
 
 Tikhman v. Proctor, 125 U. S. 136; Callaghan v. Myers, 128 U. S. 666; Camden 
 V. Stuart, 144 U. S. 118; Walk. Pat. § 725. 
 
 The question whether a Ucense fee was estabHshed is one of fact, and as 
 the master has found a yearly license fee, and the Circuit Court has over- 
 ruled defendant's exceptions, we are not disposed to disturb the finding. — 
 Diamond v. Brown, 166 Fed. 306; C C A. 
 
 Warren v. Keep, 155 U. S. 265. 
 
 § 837. Measure of — Actual Gains. 
 
 Under instruction from the circuit court, the master charged the defendant, 
 not only with his actual savings, but with all he might possibly have made, 
 and interest thereon. Held: that the profits in equity must be limited to 
 the actual profits and must not be regarded as liquidated punitive damages. 
 Livingston v. Woodworth, 15 How. 546; 14 L. Ed. 809. 
 
 It is clear that a patentee is entitled to recover the profits that have been 
 actually realized from the use of his invention, although, from other causes, 
 the general business of the defendant, in which the invention is employed, 
 may not have resulted in profits, as where it is shown that the use of his 
 invention produced definite saving in the expense of manufacture. On the 
 contrary, though the defendant's general business be ever so profitable, 
 if the use of the invention has not contributed to the profits, none can be 
 recovered. — Ehzabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 Mowry v. Whitney, 14 Wall. 434; Cawood Pat. 94 U. S. 695. 
 
 The infringer is liable for actual, not for possible gains. The profits, 
 therefore, which he must account for, are not those which he might reason- 
 ably have made, but those which he did make, by the use of plaintiff's inven- 
 tion ; or, in other words, the fruits of the advantage which he derived from 
 the use of that invention, over what he would have had in using other means 
 then open to the public and adequate to enable him to obtain an equally 
 beneficial result. If there was no such advantage in his use of the plaintiff's 
 invention, there can be no decree for profits, and the plaintiff's only remedy 
 is by an action at law for damages. But if the defendant gained an advantage 
 by using the plaintiff's invention, that advantage is the measure of the profits 
 to be accounted for, even if for other causes the business in which the inven- 
 tion was employed did not result in profits. — Tilghman v. Proctor, 125 
 U. S. 136; 31 L. Ed. 664; 8 S. Ct. 894. 
 
 Cawood Pat. 94 U. S. 710; Mevs v. Conover, 11 O. G. 1112; Elizabeth v. 
 Pavement, 97 U. S. 138; Root v. Railway, 105 U. S. 189; Thomson v. Wooster, 
 114 U. S. 104. 
 
 Upon a bill in equity the plaintiff is entitled to recover the amount of 
 gains and profits that the defendants have made by the use of the invention. 
 — Tilghman v. Proctor, 125 U. S. 136 ; 31 L. Ed. 664; 8 S. Ct. 894. 
 
 Livina:ston v. Woodworth, 56 U. S. 546; Dean w. Mason, 61 U. S. 198; Rubber 
 V. Goodyear, 76 U. S. 788; Mowry v. Whitney, 81 U. S. 620; Littlefield v. Perry, 
 88 U. S. 205; Mason v. Graham, 90 U. S. 261; Railroad v. Turrill, 94 U. S. 695; 
 Mevs V. Conover, 11 O. G. 1111; Elizabeth v. Pavement, 97 U. S. 126; Root v. 
 Railway, 105 U. S. 189. 
 
 It appearing that the defendant's valve derived its entire value from the 
 use of the invention covered by the patent in suit, and that the entire value 
 of the defendant's valve, as a marketable article, was properly and legally
 
 § 837 PROFITS 757 
 
 attributable to the invention of plaintiff, he is entitled to recover the entire 
 profit of the manufacture and sale of the valves. — Consolidated v. Crosby, 
 141 U. S. 441; 35 L. Ed. 809; 12 S. Ct. 49. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Root v. Railway, 105 U. S. 189; Garret- 
 eon V. Clark, 111 U. S. 120; Callaghan v. Myers, 128 U. S. 617; Hurlbut v. Schil- 
 linger, 130 U. S. 456. 
 
 In equity the profits which the complainant seeks to recover must be shown 
 to have been actually received by the defendant ; in other words, the fruits 
 of the advantage which he derived from the use of that invention over what 
 he would have had in using other means open to the public and adequate to 
 enable him to obtain an equally beneficial result. — Coupe v. Royer, 155 
 U. S. 565; 39 L. Ed. 263; 15 S. Ct. 199. ^ 
 
 Tilghman v. Proctor, 125 U. S. 137; Keystone v. Adams, 151 U. S. 139. 
 
 In a suit in equity for infringement of a patent, the ground upon which 
 profits are recovered is that they are the benefits which have accrued to the 
 defendants from their wrongful use of the plaintiff's invention, and for v/hich 
 they are liable ex aequo et bono, to like extent as a trustee would be who 
 had used the trust property for his own advantage. The defendants in any 
 such suit are therefore liable to account for such profits only as they have 
 accrued to themselves from the use of the invention, and not for those which 
 have accrued to another, and in which they have no participation. — 
 Belknap v. Schild, 161 U. S. 10; 16 L. Ed. 599; 16 S. Ct. 443. 
 
 Elizabeth v. American, 97 U. S. 126; Root v. Railway, 105 U. S. 189; Tilghman 
 V Proctor, 125 U. S. 136; Keystone v. Adams, 151 U. S. 139; Coupe v. Royer, 
 155 U. S. 565. 
 
 We think the evidence fully warrants the conclusion that the entire value 
 of the infringing machine made and sold by the defendant, was due to the 
 invention covered by the patent in suit, and therefore, the plaintiff was 
 entitled to the whole profits realized. — Sayre v. Scott, 55 Fed. 971 ; 5 C. 
 C. A. 366. 
 
 EUzabeth v. Pavement, 97 U. S. 126; Crosby v. Consolidated, 141 U. S. 441. 
 
 Was there evidence of the defendant's actual profit? There is nothing in 
 the record to show that the master could take account in detail in the ordinary 
 way in which accounts are taken, and so a general estimate was necessary. — 
 Doten V. City of Boston, 138 Fed. 406; 70 C. C. A. 308. 
 
 Suffolk V. Hayden, 3 Wall. 315. 
 
 If every employee invariably worked with perfect memory, accuracy, and 
 good judgment, labor-saving devices would be fewer and less important 
 than they now are. That the value of a labor-saving device is based largely, 
 or even wholly, upon the fact that those who work ^re frail and imperfect 
 human creatures, and not beings of perfect eflSeiency, wisdom and honesty, 
 does not lessen the value of the device or the profit arising therefrom. The 
 cash register and the watchman's time clock, for example, are deemed 
 patentable, yet they are used to protect an employer not only from negli- 
 gence, but from the dishonesty, of his employees. A labor-saving device is 
 deemed patentable if the weakness or carelessness or dishonesty of the 
 employee, against which the patented device is effective, is recognized as a 
 common failing, and an appreciable source of danger to employers in like 
 case. In the Cawood Patent, 94 U. S. 695. the patentee was allowed io re- 
 cover as profits the savinsr in repairing broken rails by the patented device; 
 yet these rails had doubtless been damaged by improper operation as well 
 as by ordinary wear and tear. Probably no sharp line can be drawn between
 
 758 THE FIXED LAW OF PATENTS § 837 
 
 the two cases. Giving the master's report its fair interpretation, his state- 
 ment that the cause of the defendant's damage was based upon carelessness, 
 imperfect operation, and miscalculation, amounts to a statement that it was 
 based upon human frailty. Under the old system the damage was caused 
 by ordinary wear and tear, sometimes the result of negligence or miscal- 
 culation, sometimes the result of wind, current, or tide, setting the ferryboat 
 into an unexpected position or giving it unexpected speed. This damage was 
 frequent and usual, and could be most cheaply prevented by the patent in 
 suit. For these reasons we think that the saving thus made by the defendant 
 was recoverable in this accounting. — Doten v. City of Boston, 138 Fed. 406; 
 70 C. C. A. 308. 
 
 For a most remarkable holding on what is not a sufficient showing that, 
 but for the infringement of a defendant, the complainant would have made 
 the actual gains of the defendant, this opinion is commended. The argu- 
 ments as to " awareness " and that " the field was full of competition selling 
 the drill of other infringers " are supremely unique. Any attempt to excerpt 
 from this opinion of 18 pages would be futile. Attention should be called to 
 the fact that Judge Richards dissents, and also to the opinion of Judge 
 Severens in Brennan v. Dowagiac, 162 Fed. 472. — McSherry v. Dowagiac, 
 160 Fed. 948; 89 CCA. 26. 
 
 Possibly in a case like this, where there have been a number of infringers, 
 in view of the difficulty of proving in a suit against one that the sales made 
 by him were lost to the patentee, if a reasonable royalty is recoverable, the 
 prudent course is to sue for such royalty instead of the profits which would 
 have accrued to the patentee had he made the sales. This course was not 
 taken by the appellee. It staked its case on the right to recover profits lost 
 by it and prepared it along that line. — McSherry v. Dowagiac, 163 Fed. 
 34; 89 C C A. 512. 
 
 Note: This is from opinion by Cochran, D. J., denying petition for re- 
 hearing in McSherry v. Dowagiac, 160 Fed. 948, supra. So far as appears 
 from the report of the case, this opinion is by Judge Cochran sitting alone; 
 and it would therefore seem that this pronouncement of a new rule of profits 
 lacks the weight of an appellate decision. The statement above quoted is 
 startling. How a patentee who has preserved his monopoly, granting no 
 licenses, who has been most wantonly and persistently infringed, could 
 " sue for such royalty instead of the profits," is a proposition quite without 
 the experience of the ordinary practitioner. 
 
 A patentee may withhold the exploiting of his patent in a particular 
 territory, or he may not be able at the time to extend his business therein. 
 But this gives no right to the infringer to invade the territory and anticipate 
 the sales which the patentee might make when Ije should desire and be able 
 to carry his invention there for a profit which is legitimately his own. But 
 this, while it might be an answer to the suggestion made by the master, is 
 not relevant to such a proceeding as this. The fact that the owner of a 
 patent does not exercise his right or cannot at the time do so to the full, 
 gives no license to another, and the latter is liable for infringement, to the 
 same extent as if the owner were exercising his right to the utmost. The 
 owner has the same right as he has to any other property, which he may 
 put to use or not as he chooses; and in such case the rule is always that, 
 if a stranger without right seizes and uses it, he is bound to pay for such use, 
 and it is no answer to him to say that the owner was doing nothing with it. 
 If it be true, as has often been declared, that the exclusive right of a patentee 
 is property, for the protection of which the public faith is pledged, it should 
 have the same immunity from invasion, and its violation should be attended
 
 § 838 PROFITS 759 
 
 with the same consequences as in the case of other species of property. — 
 Brennan v. Dowagiac, 162 Fed. 472; 89 C. C. A. 392. 
 
 It seems to have been contended before the master by the appellant, 
 while engaged in the endeavor to ascertain the profits, that in manufacturing 
 and selling the infringing drills it had employed other patents, which had 
 enhanced the value of the drills and the price at which they were sold, and 
 reference was made to certain patents belonging to the plaintiff. These 
 patents had been set out in the bill and infringement thereof charged. But 
 they had been declared void by the circuit court, by a decree which remains 
 unreversed and not appealed from. They should, therefore, have been 
 regarded as a part of the patented art. There was no proof which could 
 have justified the master in the conclusion that any other invention than 
 that of the Peckham patent was present in the drills which constituted the 
 infringement. Nor did the master find that there was any other patent 
 involved in the infringing drills which was entitled to share in the profits 
 than those belonging to the plaintiff w^hich had been held void. He specified 
 those as laving the foundation for applying the doctrine of Garretson t-. 
 Clark, 111 tj. S. 120, and other like cases. The fact is that the conditions 
 assumed for the statement of the rule in the case referred to did not exist. 
 The present case in its facts is in closer analogy to Elizabeth v. Pavement, 
 97 U. S. 126; Goulds v. Cowing, 105 U. S. 253; Crosby v. Safety Valve, 141 
 U. S. 441 ; Cauda v. Michigan, 152 Fed. 178. — Dowagiac v. Superior, 162 
 Fed. 479; 89 C. C. A. 399. 
 
 Wilson V. Rousseau, 4 How. 646; Grant v. Raymond, 6 Pet. 218; Bement 
 V. National, 186 U. S. 70; Heaton v. Eureka, 77 Fed. 288. 
 
 § 838. Measure of — Entire Profits. 
 
 When the entire profits of a business or undertaking result from the use 
 of the invention, the patentee will be entitled to recover the entire profits, 
 if he elects that remedy. And in such a case the defendant will not be allowed 
 to diminish the show of profits by putting in unconscionable claims for 
 personal services or other inequitable deductions. — Elizabeth v. American, 
 97 U. S. 126; 24 L. Ed. 1000. 
 
 Rubber Co. v. Goodyear, 9 Wall. 788. 
 
 If the profits upon the whole article are clearly due to the patented part, 
 which gives to the article its marketable value, they are the measure of 
 recovery. — Untermeyer v. Freund, 58 Fed. 205; 7 C. C. A. 183. 
 
 Mfg. Co. V. Cowing, 105 U. S. 253. 
 
 Two rules governing the question of profits are laid down by the Supreme 
 Court. The first of these rules (Elizabeth v. Nicholson, 97 U. S. 126) is as 
 follows: Where profits are made by an infringer, by the use of an article 
 patented as an entirety, the infringer is responsible to the patentee for the 
 whole of such profits, unless it can show — and the burden is on the infringer 
 to show it — that a portion of such profits is the result of some other thing 
 used by him. And the second rule (Garretson v. Clark, 111 U. S. 120) is as 
 follows: That where the patent is for an improvement, and not for an 
 entirely new article or product, the burden is on the patentee to show what 
 portion of the infringer's profits is due to the particular patented feature. 
 
 Inasmuch as appellant offered no proof, other than the patent itself, 
 tending to show that the profits made by it upon the ladders sold by it were 
 the result of anything else than the use of the ladder patented as an entirety, 
 and inasmuch as no proof was offered by appellee, other than the patent 
 itself, tending to separate or apportion the profits made by the appellant.
 
 760 THE FIXED LAW OF PATENTS §§ 839-840 
 
 by the use of the patent in question, from such profits as might have been due 
 to other features, neither party has attempted to take these cases out of the 
 rule contended for by his adversary — leaving it as the determinative ques- 
 tion in these cases whether (the patent only being before us) tlie rule laid 
 down in the Nicholson case or the rule laid down in the Garretson case, is 
 applicable to the case before us, as the patent has already been upheld and 
 construed by this court. ,. , . , ,, 
 
 The new thought in the art of ladder buildmg, embodied in the Murray 
 patent, was the utilizing of the man's weight to adjust the center of gravity. 
 It was a unitary thought, to carry out which the elements already named were 
 only agents; and a unitary thought, though thus carried, makes the ladder 
 thus built a new article within the meaning of the Nicholson case. — Orr v. 
 Murray, 163 Fed. 54; 89 C. C. A. 492. 
 
 Note: It is thought that this clear and logical statement should prove 
 a contributing factor in the much-needed settlement of the present status 
 of the rule of profits, or, more properly, the rule of evidence of profits. 
 
 § 839. Measure of — Rules. 
 
 The decree was entered on the report of the master, for the estimated 
 amount of profits which the defendant, with reasonable diligence, might have 
 realized ; not what, in fact he did realize. This instruction was erroneous. 
 The rule in such a case is, the amount of profits received by the unlawful use 
 of the machine, as this in general, is the damage done to the owner of the 
 patent. It takes away the motive of the infringer of patented rights, by re- 
 quiring him to pay the profits of his labor to the owner of the patent. Gen- 
 erally this is sufficient to protect the rights of the owner; but where the 
 wrong has been done, under aggravated circumstances, the court has the 
 power, under the statute, to punish it adequately, by an increase of the 
 damages. — Dean v. Mason, 61 U. S. 198; 15 L. Ed. 876. 
 
 Livingston v. Woodworth, 15 How. 546. 
 
 The circuit court decreed that the defendant was liable " for all the 
 profits made in violation of the rights of the complainants under the patent 
 aforesaid, by respondents, by the manufacture, use or sale of any of the 
 articles named in said bill." This was in accordance with the rule in equity 
 cases established by this court. — Rubber v. Goodyear, 76 U. S. 788; 19 
 L. Ed. 566. 
 
 Livingston v. Woodworth, 15 How. 546; Dean v. Mason, 20 How. 198. 
 
 For history of rule see Root v. Ry ., 105 U. S. 189 ; 26 L. Ed. 975. 
 
 The rule in equity requiring an infringer to account for gains and profits 
 which he has made from the use of a patented invention, instead of limiting 
 the recovery to the amount of royalties paid to the patentee by third persons, 
 has been constantly upheld under the Act of 1870, which expressly affirms 
 the defendant's liability to account for profits, as well as authorizes a court 
 sitting in equity to award and to treble any damages that the plaintiff has 
 sustained in excess of the defendant's profits. — Tilghman v. Proctor, 125 
 U. S. 136; 31 L. Ed. 664; 8 S. Ct. 894. 
 
 R. S. 4921; Birdsall v. Coolidge, 93 U. S. 64; Marsh v. Seymour, 97 U. S. 348; 
 Root V. Railway, 105 U. S. 189; Goulds v. Cowing, 105 U. S. 253; Garretson v. 
 Clark, 111 U. S. 120; Black v. Thorne, 111 U. S. 122; Birdsall v. Shaliol, 112 
 U. S. 485; Thomson v. Wooster, 114 U. S. 104. 
 
 § 840. Measure of — Savings by Use. 
 
 In the ascertainment of profits made by an infringer of a patented inven- 
 tion, the rule is a plain one. The profits are not all he made in the business
 
 §841 PROFITS 761 
 
 in which he used the invention, but they are the worth of the advantage he 
 obtah ed by such use ; or in other words, they are the fruits of that advantage 
 Nor does rfoUow that the unprofitableness of the deendant's business in 
 anydegree lessens that saving,for without it his loss woukl have been so much 
 the more. - Mevs v. Conover, 131 U. S. cxlii, App.; 23 L. Eu. 1008. 
 Mowry v. Whitney, 14 Wall. 651. 
 
 Method of computation stated and approved in U. S. v. Berdan, 156 U. S. 
 552; 29L. Ed. 530; 15 S. Ct. 420. 
 
 In Droving profits, it is necessary to show a saving by the use of the in- 
 fringing rolo'^-er the cost of operating any other tool which defendant wa. 
 free to use. - Hohorst v. Hamburg-American, 91 Fed. 6oo , 34 C C. A. 39. 
 
 § 841. Measure of — Trustee ex Maleficio Rule. 
 
 An infringer is a trustee ex maleficio for the owner of the exclusive rights 
 protected bf he patent; and a trustee who has confused the profits made 
 hv the use of the trust property with those made from his own property, and 
 commingled them s^^^^^^ cannot be segregated, must account for the 
 
 whT On the other hand, such a rule would work unjustly in many cases, - 
 ^ where the patented feature is of an insignificant part of the machine or 
 rrtkle and it s probably because of its manifest inequity m such cases 
 that the c'urts ha?e placJd upon the complainant the burden of proof. - 
 Wales V. Waterbury, 101 Fed. 126 ; 41 C. C. A^ 2o0. 
 
 Lupton V. White, 15 Ves. 432; Hart v. Ten Eyck, 2 Johns. Ch. 108, Central 
 V. Connecticut, 104 U. S. 54. 
 
 In the present case the infringer's conduct has been ^^^^ as to preclude 
 the beUef that it has derived no advantage from the use of the plaintiff s 
 • o^tlnn pTthe master well said. In these circumstances, upon whom is the 
 
 ^ h!L. Ten Ey* 2 Johns. Ch 62 Wales .Waterbu^ lOl^^'f.^f •.J'S 
 "45''¥S:,LSVak.!?rs"niifhtCLIlp,'?56 Fed. 257; ln,ith.. Mot.ey, 
 
 'T.'- ™s is distinct,, and prcperly a canceUation o, the ho.din, of 
 this court in McSherry v. Dowagiac, 160 fed. J4S. 
 
 The infringement was not-cidental. The defendant was aU^^^^^^^ 
 informed of the patent and knew that .f f|^™Xs "iS^^ It toolc 
 
 patent, it would be obhged to account for the profits an^^^^ ^^^^ 
 
 r ^'* "' Tnirtv"' lUs S'c eS ? c e t St instaLd for the appli- 
 
 the innocent party. It is as ciear <i/^^^V^ j previous cases and
 
 762 THE FIXED LAW OF PATENTS § 842 
 
 The defendant put every obstacle in the way of arriving at any measure 
 of profits, failed to produce records and books, and withheld all informa- 
 tion possible on examination. The master made the best computation pos- 
 sible, and made all deductions that the evidence disclosed. The appellate 
 court revised these figures, materially increased the amount of the profits 
 found, decreased the allowances for selling, and held: His failure or refusal 
 to produce the most satisfactory evidence leaves his case exposed to the pre- . 
 sumption that if produced it would tell against him, and compels the court 
 to rely on the less definite and certain evidence which the record may supply. 
 This is a rule by which the courts are governed. If they fail to observe it, 
 the rights of parties may utterly fail of protection. — Yesbera v. Hardesty, 
 166 Fed. 120; C. C. A. 
 
 Rubber Co v Goodyear, 9 Wall. 788; Lupton v. White, 15 Ves. 432; Hart 
 V Ten Eyck 2 Jolins. Ch. 62; Mast v. Superior, 154 Fed. 45; Brennan v. Dowagiac, 
 162 Fed. 472; Dowagiac v. Superior, 162 Fed. 479; Wales v. Waterbury, 101 Fed. 
 126. 
 
 § 842. Measure of — Miscellaneous Rules. 
 
 The profits arising from the infringement of the combination are those of 
 the entire combination, and are not mitigated by the fact of certain elements 
 beiiife old. — EUzabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 It was quite right for the circuit court, when these cases were sent back, 
 to direct the master to ascertain from the old evidence, if possible, and, if 
 not, from new, how much should be deducted from the old decrees on account 
 of the erroneous recoveries. The true way of determining this clearly was 
 to find out what part of the profits for which the original decrees were ren- 
 dered had been made by the use of the non-infringing machines. — Rail- 
 road V. Turrill, 110 U. S. 301 ; 28 L. Ed. 154; 4 S. Ct. 5. 
 
 Payments made for infringement are incompetent proof of a fixed royalty. 
 — Cornley v. Marckwold, 131 U. S. 159; 33 L. Ed. 117; 9 S. Ct. 744. 
 Rude V. Westcott, 130 U. S. 152. 
 
 If a prior patent existed covering substantially the invention in suit and 
 it was held by a third party, whether it could be regarded as open to the in- 
 frino-er the court declined to say. — McCreary v. Pennsylvania, 141 U. S. 
 459; 35 L. Ed. 817; 12 S. Ct. 40. 
 
 Where plaintiff sued on later of two patents covering substantially the 
 same device it was held that the earlier patent must be deemed open to 
 defendant. — McCreary v. Pennsylvania, 141 U. S. 459; 35 L. Ed. 817; 
 12 S Ct. 40. 
 
 In estimating the profits made by an infringer the comparison must be 
 between the patented invention and what was known and open to the pubhc 
 at and before the date of the patent. — McCreary v. Pennsylvania, 147 U. S. 
 459; 35 L. Ed. 817; 12 S. Ct. 40. 
 
 The profits made by the defendant cannot be increased or diminished by 
 any act on the part of the plaintiff ; and the amount of them is not affected 
 by the question whether during the same time the plaintiff did or did not 
 use the patented invention. — Consolidated v. Crosby, 141 U. S. 441 ; 35 
 L.Ed. 809; 12S.Ct.49.
 
 § 843 PROFITS 763 
 
 Profits of other manufacturers cannot be taken as a measure between 
 parties to suit. — Keystone v. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 
 S. Ct. 295. 
 
 No time for payment being named, payment is due for each article as 
 delivered. — U. S. v. Berdan, 156 U. S. 552; 39 L. Ed. 530; 15 S. Ct. 420. 
 Citing and discriminating, Packet Co. v. Sickles, 51 U. S. 440. 
 
 When a contract establishing a license fee has been considered and aban- 
 doned, and a subsequent agreement is made fixing no license fee the former 
 abandoned contract does not determine the terms or conditions of the new 
 contract entered into. — U. S. v. Berdan, 156 U. S. 552; 39 L. Ed. 530; 
 15 S. Ct. 420. 
 
 That evidence to show the difference in cost between a manufacturer 
 using the patent and one not using it, is not competent proof to establish a 
 measure of profits, see — Robbins v. Illinois, 81 Fed. 957; 27 C. C. A. 21. 
 
 Mfg. Co. V. Adams, 151 U. S. 139; Coupe v. Rover, 155 U. S. 565; Belknap v. 
 Schild, 161 U. S. 10. 
 
 The witness was the president of the complainant and the cost estimate 
 was one made by him as the result of his experience in his own factory; 
 and the principal objection now urged is that the estimate of what the cost 
 would be at the complainant's factory is no criterion of the cost in defendant's 
 factory. Perhaps it would not be the best criterion if the actual cost to 
 defendant had been shown ; but the defendant did not offer to prove that, 
 although the proof was under his own control, nor did it offer any evidence 
 to prove that the estimate given by the complainant's witness was incorrect. 
 Under such circumstances we think the proof was admissible. — Mast v. 
 Superior, 154 Fed. 45; 83 C. C. A. 157. 
 
 The total amount of appellant's crop during the years of infringement 
 was definitely sho^\^l by its own books. The market prices during those 
 years were ascertained. Here were definite figures upon which to calculate 
 the profits. The law requires no more than reasonable certainty in such a case. 
 • — Fullerton v. Anderson-Barngrover, 166 Fed. 443 ; C. C. A. 
 
 Suffolk V. Hayden, 3 WaU. 315; Doten v. City, 138 Fed. 406; Bigelow v- 
 Dobson, 10 Fed. 386. 
 
 In order that the royalty found by the master may be accepted as a measure 
 of damages against a defendant who is a stranger to the license proved 
 before the master, the royalty must be paid before the infringement took 
 place. — Diamond v. Brown, 166 Fed. 306; C. C. A. 
 
 Rude V. Westcott, 130 U. S. 152. 
 
 § 843. Segregation — Burden of Proof. 
 
 The master refused to allow the profits due to elements not patented 
 which entered into the composition of the patented articles. There may be 
 cases in which such an allowance would be proper. This is not one of them. 
 The manner in which defendant's books were kept renders such an account 
 impossible. — Rubber v. Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 In disallowing the profits upon the combined buckle and lever, he did so 
 apparently in deference to the rule that, where the articles which have been 
 made and sold by the infringer contain not the patented invention alone, 
 but other inventions and improvements, the profits for which he is to account
 
 764 THE FIXED LAW OF PATENTS § 843 
 
 are not the total profits but those only which are attributable to the presence 
 of the patented invention. This has always been the rule, and it is mani- 
 festly a just one upon principle; but it is often difficult of practical applica- 
 tion, and the courts have sometimes applied it so that it has not produced 
 an equitable result. In many cases, where it is obvious that the patented 
 invention has contributed a great part of the profits realized from selling the 
 infringing article or apparatus embodying unpatented features, it is practi- 
 cally impossible for the complainant to establish affirmatively the propor- 
 tionate part. The present case is an illustration. Yet there is no way by 
 which the complainant can establish the proportion. As the rule has been 
 applied in some of the adjudged cases, there could be no recovery against the 
 infringer to account for the whole profits, even though it could not be proved 
 that the commercial value of the article was wholly due to the patented 
 feature. — Wales v. Waterbury, 101 Fed. 126; 41 C. C. A. 250. 
 
 The respondents urge that these complainants are not entitled to recover 
 the entire profits thus ascertained, because these infringing devices may be 
 said to be not only infringements of complainants' patent but also the Mayo 
 patent, and the burden is on the complainants to separate the profits attrib- 
 utable to respondents' infringements of the patent in suit from those 
 attributable to the use of the Mayo invention. It has been the uniform prac- 
 tice of the courts to refuse to determine such collateral questions in suits 
 where the validity and scope of a third party's patent are not directly put 
 in issue. — Brinton v. Paxton, 134 Fed. 78; 67 C. C. A. 204. 
 
 McCreary v. Pennsylvania, 141 U. S. 459. 
 
 The complainants failed to establish just what portion of the profits 
 were due to the infringing mechanism. — Brinton v. Paxton, 134 Fed. 78; 
 67 C. C. A. 204. 
 
 Garretson v. Clark, 111 U. S. 121. 
 
 How much of the twenty-eight and one-half cents, the difference between 
 the cost and selling price of defendant's new appliance, was due to the 
 improvement covered by claim 1? The record fails to show. This was 
 necessary. — Baker v. Crane, 138 Fed. 60; 70 C. C. A. 486. 
 
 Seymour v. McCormick, 16 How. 480; Garretson v. Clark, 111 U. S. 120; 
 Keystone v. Adams, 151 U. S. 139. 
 
 There is no evidence that the improvements introduced any new function 
 or result, nor any satisfactory proof that the machines were by reason thereof 
 more convenient or practical for the user or more commercially successful. 
 In short, there is no evidence that the patented improvements were a domi- 
 nant feature of the machine, or contributed to its sale, or created a new 
 article, or obviated prior objections in practical operation, or which shows that 
 the sales may not have depended upon advertising, charged accounts, and 
 other mere business methods. Furthermore, there is evidence that other 
 machines, not containing these patented improvements, were on the market, 
 and were salable. In these circumstances, the defendant is only liable for 
 profits realized from the use of that part of the patented invention which is 
 new, and which he has wrongfully appropriated, and the complainant must 
 furnish evidence from which the profits may be thus apportioned, or he can- 
 not recover. — Force v. Sawyer-Boss, 143 Fed. 894; 75 C. C. A. 102. 
 
 Ingels V. Mast, 6 Fish. P. C. 415; McCreary v. Pennsylvania, 141 U. S. 459; 
 Brickill V. Mayor, 112 Fed. 65. 
 
 But before it (the rule of segregation) can be applied, it is incumbent on 
 the defendant to prove that some substantial part of the peculiarities of
 
 §§ 844-845 PROFITS 765 
 
 the former patents (prior art) were embodied in the patented articles sold, 
 and that they were of such a character that they probably contributed to 
 the profits. Elizabeth v. Pavement Co. 97 U. S. 126. On this being shown, 
 the burden of proof is devolved upon the party seeking to recover the prohts 
 to prove what part of the entire profits are due to the use of his own invention. 
 He must make the separation of values and show to the court how much is his 
 rightful proportion. — Canda v. Michigan, 152 Fed. 178; 81 C. C. A. 420. 
 
 That while the burden is upon complainant to prove that the entire profit 
 upon an infringing article is due to the patented improvement, when such 
 proof has been adduced and the burden of rebutting such proof is taken by 
 the defendant, a finding of a master upon such proofs ^^■ilV^o\'^^^i'^^,^™ 
 in the absence of obvious error, see— McSherry v. Dowagiac, 160 led. 948; 
 89 C. C. A. 26. 
 
 § 844. Segregation — Failure to Make. 
 
 The bill was taken pro confesso. Defendants made no proofs. Plaintiff 
 failed to segregate or to eliminate common matters under the ordinary 
 rules. Defendant merely objected to master's report and assigned errors. 
 The court seems to hold that the defendant having had his day in court and 
 having failed to defend his rights he is bound by the proofs of plaintitt it 
 they are within the pleadings and pursuant to the decree and not mani- 
 festly erroneous; and that affidavits to the contrary ^vlll 7* be heai-d in this 
 court. — Thomson v. Wooster, 114 U. S. 104; 29 L. Ed. 105; 5 S. Ct. 788. 
 
 Complainant may showprofits of defendant to prove his damages, but where 
 infringed device was only a part of defendant's machine, m the absence of 
 nroof and segregation, only nominal damages can be assessed. — Keystone 
 V. Adams, 151 U. S. 139; 38 L. Ed. 103; 14 S. Ct. 295. 
 
 Seymour v. McCormick, 57 U. S. 480; Rubber Co. v. Goodyear 76 U. SJ88 
 Mowry i;. Whitney, 81 U. S. 620; Ehzabeth v. Nicholson 97 U. S. 126, Garretson 
 V. Clark, 111 U. S. 120; Tilghman v. Proctor, 125 U. b. lib. 
 
 The complainant claimed as damages the entire profit of defendant and 
 failed and refused to segregate any portion, although he well understood 
 defendant's position. Having taken such position and insisted upon such 
 theory of damages he cannot have the matter referred back to prove his 
 damages under a different theory. — Mosher v. Joyce, 51 Fed. 441 , 2 C. C. 
 A. 322. 
 
 That failure to segregate according to the rule in Garretson v. Clark, 
 is fatal, see-Robbins v. Illinois, 81 Fed. 957; 27 C. C. A. 21. 
 
 § 845. Segregation — General Rules. 
 
 When a patent is for an improvement and not for an entirely new machine 
 or contrivance, the patentee must show in what particular his improvement 
 has added to the usefulness of the machine or contrivance. He must separate 
 itf results distinctly from those of the other parts, so that the benefits derived 
 fromTt may be distinctly seen and appreciated. The rule on this head is 
 aptTy stated by Mr. Justice Blatchford in the court below: the patentee 
 he sayl " must in every case give evidence, tending to separate^or apportion 
 the defendant's profits and the patentee's damages between the patent^ed 
 feature and the Unpatented features, and such evidence must be rehable 
 and tangible, and not conjectural or speculative ; or, he must show, by 
 easily reliable and satisfactory evidence, that the profits and damages 
 a?e to be calculated on the whole machine, for the reason that the entire
 
 766 THE FIXED LAW OF PATENTS §845 
 
 value of the whole machine, as a marketable article, is properly and legally 
 attributable to the patented feature." — Garretson v. Clark, 111 U. b. 120; 
 28L. Ed. 371; 4 S. Ct. 291. 
 
 Where patent covers only a part of an improvement upon a general 
 machine profits must be segregated. — McCreary v. Pennsylvania, 141 U. 
 S. 459; 35 L. Ed. 817; 12 S. Ct. 40. 
 
 Sevmour v McCormick, 57 U. S. 480; Mowry v. Whitney, 81 U. S. 620; Little- 
 field u Perry 88 U. S. 205; Elizabeth v. Nicholson, 97 U. S. 126; Garretson v. 
 Clark, 'ill U.'S. 120. 
 
 The present is a case where the defendant would not, and, as we think, 
 could not, have made any profits from manufacturing the holders if it had 
 not used the patented buckle to command a sale for them ; and upon the facts 
 is within the second branch of the rule stated in Garretson v. Clark, and 
 within other authorities sanctioning a recovery of the total profits derived 
 from the sale of an infringing article embodying unpatented features, when, 
 but for the patented features, it would not have been a marketable article. — 
 Wales V. Waterbury, 101 Fed. 126; 41 C C A. 250. 
 
 Mfg V Cowing, 105 U. S. 255; Hurlbut v. Schillinger, 130 U. S. 456; Crosby v. 
 Consolidated, 141 U. S. 441; Mosher v. Joyce, 51 Fed. 441; Holmes v. Truman, 
 67 Fed. 542. 
 
 The complainants estabhshed that respondents made a certain profit 
 upon the infringing devices of certain amount upon each and every one of 
 them, separate and apart from the mechanism to which it is intended to be 
 attached, and, it appearing that no other picker mechanism upon the market 
 was open to the respondents to use, the master, under the circumstances, was 
 justified from this evidence, together with other facts and circumstances 
 before him, in finding that the total amount of these profits was the amount 
 of complainants' damages. — Brinton v. Paxton, 134 Fed. 78; 67 C. C. A. 
 204. 
 
 Mason v. Graham, 90 U. S. 261; Lattimore v. Hardsocg, 121 Fed. 986; Rob, 
 on Pat. sec. 1062. 
 
 The final rule which renders the recovery of substantial damages or 
 material profits a practical impossibility in the great majority of cases. 
 
 The master found that the profits derived by the defendant from the sale 
 of train equipments in connection with the patented quick-action valve 
 (the device infringed) were the sum of S49,533. He also found that the sale 
 of the defendant diverted an equal number of train equipments from the com- 
 plainants, upon which the complainants would have realized a profit of 
 $193,978, and the complainants were entitled to that amount as damages 
 caused by the infringement. Exceptions were filed, and the case recom- 
 mitted to the master " for the purpose of making a computation of profits 
 and damages based upon the sales by the defendant of the quick-action valves 
 of the patent only, separated from those upon the complete equipments." 
 The master interpreted Judge Wheeler's decision as meaning only that the 
 accounting was to be confined to complainant's profits and damages based 
 upon the sales of the " triple-valve structure dissociated frop the acces- 
 sories necessary to constitute a train equipment." Upon this theory the 
 master found that the profits made by the defendant upon these sales were 
 $36,945, and that the damages sustained by the complainants by loss of 
 profits on diverted sales were $128,737. This report was confirmed by the 
 circuit judge, and on appeal the entire recovery was swept aside, and nominal 
 damages only awarded, with the following statement of the law: 
 
 The proofs show that there was comparatively little demand by railroad
 
 § 845 PROFITS 767 
 
 companies for complete automatic air-brake equipments that were not pro- 
 vided with quick-action triple-valves during the period of the infringement. 
 But it is clear that the quick-action attachment was one of secondary im- 
 portance in automatic brake equipments. It is apparent that the com- 
 plainants could not have sold any of the patented valves if there had not 
 been embodied in them the devices of the quick-action triple-valve of the 
 earlier Westinghouse patent, or equivalent devices such as the defendant 
 and the Boyden Brake Co. employed in their quick-action valves, and which 
 did not infringe the earlier patent. 
 
 The general rule governing recoveries in infringement cases is stated in 
 Garretson v. Clark, 111 U. S. 120, in the following language: 
 
 " The patentee must in every case give evidence tending to separate or 
 apportion the defendant's profits and the patentee's damages between the 
 patented features and the unpatented features, and such evidence must be 
 reliable and tangible, and not conjectural and speculative; or he must show 
 by equally reliable and satisfactory evidence that the profits and damages 
 are to be calculated on the whole machine, for the reason that the entire 
 value of the whole machine as a marketable article is properly and legally 
 attributable to the patented feature." 
 
 Referring to the first branch of this rule, this court said in Wales v. Water- 
 bury, 101 Fed. 126: 
 
 "This has always been the rule, and it is a satisfactory and just one upon 
 principle; but it is often difficult of practical application, and the courts 
 have sometimes applied it so that it has not produced an equitable result. In 
 many cases, where it is obvious that the patented invention has contributed 
 a great part of the profits realized from selling the infringing article or 
 apparatus embodying unpatented features, it is practically impossible for 
 the complainant to establish affirmatively the proportionate part." 
 
 Referring to the theory that an infringer is a trustee ex maleficio, and 
 the rule that a trustee who has confused the profits made by the use of a 
 trust property with those made from his own property, and commingled 
 them so that they cannot be segregated, must account for the whole, this 
 court in that case also said: 
 
 " Such a rule would work unjustly in many cases, as where the patented 
 feature is of an insignificant part of a machine or article ; and it is probably 
 because of its manifest inequity in such cases that the courts placed upon the 
 complainant the burden of proof." 
 
 The adjudications in which the latter branch of the rule in Garretson v. 
 Clark has been applied are cited in Wales v. Waterbury. In all of them, in 
 which the question was as to the basis of profits upon sales, the rule applied 
 was that the profits upon the whole machine or article were allowable only 
 when, but for the patented feature, the machine or article sold by the infringer 
 would not have commanded a market. 
 
 The question whether a machine would or would not have been market- 
 able without the patented part is of course a question of fact, but it is one 
 which depends largely upon opinion evidence. The most satisfactory evi- 
 dence upon the question is that which is afforded by the nature and intrinsic 
 value of the improvement which it introduces into the art or industry in 
 which the machine is employed. . . . 
 
 Inasmuch as the complainants did not attempt to separate or apportion 
 the defendant's profits and their own damages between the patented and 
 the unpatented features of the quick-action triple-valve, it was incumbent 
 upon them to prove that the entire value of the defendant's quick-action 
 valve as a marketable article was properly and legally attributable to the 
 patented features. What they did prove, and all they proved was that pur- 
 chasers of triple- valves generally demanded some form of quick-action valves, 
 and that, except to a very limited extent, purchasers could not be found for
 
 768 THE FIXED LAW OF PATENTS §845 
 
 valves without these features. This falls short of proof that only the patented 
 form could supply the demand, and does not meet the requirements of the 
 second branch of the rule. — Westinghouse v. New York, 140 Fed. 545; 
 
 Note- As above indicated, this decision brings the rule in Garretson v. 
 Clark to its last hmit, and. practically inhibits a substantial recovery for in- 
 frino-ement. In fact, it may now be said that, in most cases, if the com- 
 plainant cannot secure protection by injunction, he has no remedy against 
 piracy. For note the situation in the present case: There were but two 
 successful emergency valves of the type demanded by the railroads — the 
 Westinghouse and the Boyden. The defendant could use neither. Con- 
 sequently and perforce the railroads, when they needed the quick-action 
 triple valve equipment, must buy from either Westinghouse or Boyden — 
 or from this defendant who was an infringer of Westinghouse. The railroads 
 did buy the number of quick-action valves reported by the master ; and the 
 court holds that, because railroads did buy some air-brakes without the 
 quick-action valves, the complainant has not made out a case. It is to be 
 noted that the record in this case was made by one of the greatest patent 
 attorneys in this country; and in these circumstances it is evident that with 
 such a rule, a substantial recovery upon an infringed improvement is next to 
 impossible. 
 
 In Westinghouse v. New York, 140 Fed. 545, Judge Wallace, delivering the 
 opinion of this court, reviewed the authorities on the question of recoveries 
 in infringement cases, and distinguished between those where the patented 
 part was of such paramount importance that it really created the value of the 
 whole article, and those where such part w^as relatively an unimportant 
 factor in the normal value of the whole, or where such value depended chiefly 
 upon the presence of the unpatented parts. There the court recognized the 
 well-settled rule that in cases of the former class the infringer should be held 
 accountable for all profits, as trustee ex maleficio, by reason of having con- 
 fused profits made by the use of a trust property wdth those from his own 
 property, and commingled them so that they could not be separated. The 
 court, however, quoted from the opinion in Wales v. Waterbury, 101 Fed. 
 126 as follows: " Such a rule would work unjustly in many cases -^ as 
 where the patented feature is of an insignificant part of a machine or article; 
 and it is probably because of its manifest inequity in such cases that the courts 
 have placed upon complainant the burden of proof." — Force v. Sawyer- 
 Boss, 143 Fed. 894; 75 C. C. A. 102. 
 
 Garretson v. Clark, 111 U. S. 120. 
 
 We do not by any means impugn the general rules laid down in Garretson 
 V. Clark, HI U. S. 120, and the cases which have followed it, one of which 
 is that, when the infringement consists in making or using articles improved 
 by his own invention, the plaintiff must prove the extent of the enhancement 
 of profits by the use of his own, as distinguished from those due to the article 
 improved. But we are of opinion that the circumstances of this case, first, 
 in that in the patented combination no other invention inheres, and that 
 the combinations are not for improvements merely, but substitutes for 
 essential congeries in a drill, and, secondly that the infringement has been 
 so conducted as to render a distinction of profits impossible, are contrblled 
 by principles quite independent of those involved in Garretson v. Clark, 
 and that the plaintiff was entitled to a decree for the profits for the sales of 
 the infringing drills. — Brennan v. Dowagiac, 162 Fed. 472 ; 89 C. C. A. 392. 
 
 Note: This is a plain and proper reversal of the holding of this court 
 in McSherry v. Dowagiac, 160 Fed. 948.
 
 § 846 PROFITS 769 
 
 Mr. Justice Blatchford * * * formulated the rule laid down in Garretson 
 V. Clark, 111 U. S. 120. — Brennan v. Dowagiac, 162 Fed. 472; 89 C. C. A. 
 392. 
 
 Note: It may be an item of minor interest that this common supposition 
 is not well founded. The rule as stated by Justice Blatchford was copied by 
 him from the report of the master, George J. Sicard, Esq., a law-partner of the 
 late President Cleveland ; and Mr. Sicard previously copied the same, almost 
 verbatim, from a written request to find submitted to him by the late Justice 
 Francis A. Macomber, who was at that time counsel for Clark. 
 
 For a most sane and salutory construction and limitation of the rule of 
 Garretson v. Clark, see Yesbera v. Hardesty, 166 Fed. 120; C. C. A. 
 
 § 846. Segregation — Miscellaneous Rules. 
 
 The true inquiry is, as to the profits which the defendants have realized 
 as the consequence of the improper use of these improvements. Such profits 
 belong to the plaintiff and should be accounted for to him. — Littlefield v. 
 Perry, 88 U. S. 205; 22 L. Ed. 577. 
 
 Where the patent covers only a part of or an improvement upon a general 
 device, profits must be segregated. — McCreary v. Pennsylvania, 141 U. S. 
 459; 35 L. Ed. 817; 12 S. Ct. 40. 
 
 Seymour v. McCormick, 57 U. S. 480; Mowry v. Whitney, 81 U. S. 620; Little- 
 field V. Perry, 88 U. S. 205; Elizabeth v. Nicholson, 97 U. S. 126; Garretson v. 
 Clark, 111 U. S. 120. 
 
 Where defendants did not manufacture and sell the infringing device as 
 a separate article, but manufactured and used it in the manufacture and sale 
 of the article to which it was apphcable, obviously the entire profits upon the 
 article sold would not be a proper measure of damages, since the patented 
 device was only an inconsiderable part of such article, and profits upon the 
 entire article are only allowable where such article is wholly the invention 
 of the patentee, or where its entire value is properly and legally attributable 
 to the patented feature. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 
 609; 12 s. Ct. 799. 
 
 Seymour v. McCormick, 57 U. S. 480; Mowry v. Whitney, 81 U. S. 620; Little- 
 field V. Perry, 88 U. S. 205; Garretson v. Clark, 111 U. S. 120. 
 
 In the absence of proof showing that the defendant's infringing device 
 derived its whole commercial value from the use of the patented improvement, 
 the court could not have made an order directing the master to find the profits 
 on the entire device. — Mosher v. Joyce, 51 Fed. 441 ; 2 C. C. A. 322. 
 
 Littlefield v. Perry, 21 Wall. 205; Dobson v. Dornan, 118 U. S. 15, 
 
 The well settled doctrine of the Supreme Court was and is, that the profits 
 to be assessed under section 4921 R. S. in suits in equity for the infringe- 
 ment of a patent, are those only which are properly attributable to the 
 patented feature, and that the evidence of the patentee must " apportion the 
 defendant's profits and also the patentee's damages between the patented 
 and unpatented feature." — Untermeyer v. Freund, 58 Fed. 205; 7 C. C. A. 
 183. 
 
 Garretson v. Clark, 111 U. S. 120; Dobson v. Carpet Co. 114 U. S. 439, 
 
 It is also immaterial that a spring bearing plate was superadded to the 
 patented features of the buckle of the defendant, as we are satisfied the or- 
 ganized device did not derive its commercial value to any appreciable extent
 
 770 THE FIXED LAW OF PATENTS § 847 
 
 from that addition, and would have sold as readily without it. — Wales v. 
 Waterbury, 101 Fed. 126; 41 C. C. A. 250. 
 
 In such case the infringer is not liable to the patentee for the profit he 
 has made by the use of the entire apparatus. He is hable only for such as 
 has accrued from the use of that part of it which was new, and which he 
 has used without right. — Brickill v. Mayor, 112 Fed. 65; 50 C. C. A. 1. 
 
 McCreary v. Canal, 141 U. S. 462. 
 
 This is not a case where the entire or any considerable value of the article 
 sold is attributable to the patented feature, and profits upon the entire 
 article are only allowable where such article is wholly the invention of the 
 patentee, or where its entire value is properly and legally attributable to 
 the patented feature. — Lattimore v. Hardsocg, 121 Fed. 986 ; 58 C. C. A. 287. 
 
 Sessions v. Romadka, 145 U. S. 29; McCreary v. Penn. 141 U. S. 459; Warren 
 V. Keep, 155 U. S. 265; Garretson v. Clark, 111 U. S. 120; Mowry v. Whitney, 
 14 Wall 620; Seymour v. McCormick, 16 How. 480; Dobson v. Hartford, 114 
 U. S. 439; Littlefield v. Perry, 21 Wall. 205. 
 
 The complainant insists that the strap could not have been sold without 
 the reels (the patented part), and for this reason that it should have been 
 awarded the profits which the defendant made upon the strap sold by him 
 during the period of infringement, together with the damages accruing from 
 loss of complainant's profits upon diverted sales of strap during that period. 
 If the proofs had shown that the strap could not have been sold except 
 with the patented reels, the contention for the appellant would be supported 
 by the authority of cases like Wales v. Waterbury, 101 Fed. 126. But the 
 proofs do not show this, and not only the direct evidence, but also presump- 
 tions deducible from the small utility of the patented invention, authorize 
 and require a contrary conclusion. That the strap was salable independently 
 of the reels is shown by the fact that during the period of infringement and 
 subsequently the defendant sold it in considerable quantities without reels, 
 as well as with reels which did not infringe the patent. — Gary v. De Haven, 
 139 Fed. 262; 71 C. C. A. 388. 
 
 Some of it he treated as the patent directed, and sold the proceeds. Why 
 did he do so? Why did he take the additional trouble to follow the patented 
 process, and risk being prosecuted as an infringer? Why, under those 
 circumstances, he should not account for the profits he made by the patented 
 process we fail to see, and we are referred to no authority which denies such 
 profits to the patentee. — Hemolin v. Harway, 166 Fed. 434; C. C. A. 
 
 § 847. Miscellaneous Rules Concerning Profits. 
 
 The invalidity of the patent does not render the sales of machines illegal, 
 so as to taint with illegality the obligation of the defendants to account for 
 them, as they had acted under a contract. — Kinsman v. Parkhurst, 59 U. S. 
 289; 15 L. Ed. 385. 
 
 The conduct of the defendants has not been such as to commend them to 
 a court of equity. Under the circumstances, every doubt and difficulty should 
 be resolved against them. — Rubber v. Goodyear, 76 U. S. 788 ; 19 L. Ed. 
 566. 
 
 Lupton V. White, 15 Vesey, 432; Copeland v. Crane, 9 Pick. 79; Dexter v. 
 Arnold, 2 Sumn. 109; Miller v. Whittier, 36 Me. 585. 
 
 In the reissue, the applicant stated what his improvement would save. 
 If he was correct in this statement, it is not an unfair presumption that if
 
 §848 PROTESTS 771 
 
 the profit to the patentee was no greater than he claimed it was, it could not 
 have been more when the invention was used by an infringer. — Mowrv v 
 Whitney, SI U. S. 620; 20 L. Ed. 860. 
 
 Where no profits are shown to have accrued, a court of equity cannot give 
 a decree for profits by way of damages, or as a punishment for the infringe- 
 ment. — EUzabeth v. American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 Livingston v. Woodworth, 15 How. 559. 
 
 If an infringer of a patent has realized no profits from the use of the 
 invention, he cannot be called upon to respond for profits; the patentee in 
 such case, is left to his remedy for damages. — Elizabeth v. American 97 
 U.S. 126; 24 L. Ed. 1000. 
 
 The burden of proving the amount of profits that the defendants have made 
 by the use of his invention is upon plaintiff. — Tilghman v. Proctor I'^o 
 U. S. 136; 31 L. Ed. 664; 8 S. Ct. 894. ' " 
 
 Blake v. Robertson, 94 U. S. 728; Elizabeth v. Pavement, 97 U S 126" Dob- 
 son V. Hartford, 114 U. S. 439; Mowry v. Whitney, 81 U. S. 620. 
 
 The bill cannot be maintained for an account of profits received by the 
 defendant from the use of this patent, because a decree for profits can only 
 proceed upon the ground that the plaintiff is at least the equitable owner of 
 the patent, and there can be neither legal nor equitable ownership of a void 
 patent. — Kennedy v. Hazelton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. 
 
 The question is whether there was a contract for the use, and not whether 
 all the conditions of the use were provided for in such contract. This is the 
 ordinary rule in respect to the purchase of property or labor. The fact that 
 there was no agreed price was immaterial. — U. S. v. Berdan, 156 U S 552- 
 39L. Ed. 530; 5S. Ct. 420. ' 
 
 U. S. V. Palmer, 128 U. S. 262; U. S. v. Russell, 80 U. S. 623. 
 
 That the findings by the lower court are conclusive unless from other 
 findings there was apparent error, see — U. S. v. Berdan, 156 U. S 552- 39 
 L. Ed. 530; 15 S. Ct. 420. 
 
 _ The invasion of the complainant's right having been established, and an 
 injunction ordered, it may be presumed that there are some profits or damages 
 to be recovered. — American v. Crosman, 61 Fed. 888; 10 C. C. A. 146. 
 
 The defendants are hable to account for such gains and profits only as 
 accrued to themselves, and not for those which accrued to the manufacturers 
 from whom they bought. — Kisinger-Ison v. Bradford, 123 Fed. 91; 59 
 
 \^, \j. A. ZZY, 
 
 Elizabeths. Pavement, 97 U.S. 126; Root v. Railway, 105 U S 189- Tilghman 
 V Proctor, 125 U. S. 136; Coupe v. Royer, 155 U. S. 565; Belknap v. Schild, 161 
 
 U . b. 11. 
 
 PROTESTS. 
 General Statement § 848 | See — Interferences § 580 
 
 § 848. General Statement. 
 
 The practice of filing protests against the allowance of claims, either by 
 a party then or formerly in interference or by a party having knowledge 
 of the content of certain pending claims, is without direct statutory sanction,
 
 772 THE FIXED LAW OF PATENTS § 849 
 
 and without sanction under the rules of the Patent Office, excepting Rule 
 12, which says: 
 
 No attention will be paid to unverified ex parte statements or protests 
 concerning pending applications to which they are not parties, unless infor- 
 mation of the pendency of such applications shall have been voluntarily 
 communicated by the applicants. 
 
 It is a proceeding which can be entertained only with reference to a pending 
 application. A protest cannot be heard with reference to an issued patent, 
 since the Commissioner, having no power to cancel or repeal a patent (McCor- 
 mick V. Aultman, 169 U. S. 606; § 26), is not at liberty to put a cloud on the 
 grant after having issued the same. Moreover, a person aggrieved by the 
 issuance of a patent containing claims which he considers as interfering with 
 his activities has the following remedies: First, the right to raise an inter- 
 ference, if he is a competing inventor, by the filing of proper claims ; secondly, 
 he has the right under Sec. 4918, if he has a patent which he thinks is inter- 
 fered with, to obtain a judicial determination of the question; thirdly, he 
 has the right to go about his business, and if he is sued for the infringement 
 of such claims, to defeat them, if he is able, in the courts provided for that 
 purpose. 
 
 Protest proceedings appear to relate to questions of non-patentability by 
 reason of prior publication or patent, while a public use proceeding (see § 8.59), 
 though similar in character, relates to prior use of the subject-matter of the 
 claim. While the Patent Office appears to rest authority for this proceeding 
 upon an office rule, it is thought that the power originates in the general 
 provisions of the statute charging the Commissioner with certain duties and 
 with the determination of questions of novelty and utility in addition to the 
 settlement of priorities; and for the obtaining of that knowledge of the state 
 of the art which will enable him to perform his duty toward the public as 
 well as toward the inventor, such proceedings as protests and public use 
 proceedings are not to be discouraged. 
 
 The only instance in which an appellate court has directly considered the 
 subject of protests is the following: 
 
 The protest filed by Hall in the Patent Office against the reissue, and the 
 long contest made by him and his attorneys against it, are in the nature of 
 a confession. — Crown v. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 PUBLIC USE. 
 
 The Statute and General Statement 
 
 §849 
 
 Evidence of § 850 (see § .388) 
 
 Experiment § 851 (see § 412) 
 
 Foreign Use § 852 
 
 General Rules § 853 
 
 Publicity § 854 
 
 Secret Use § 855 
 
 Single Use § 856 
 
 Two Years Use § 857 
 Miscellaneous Rules § 858 
 See — Abandonment § 18; Anticipa- 
 tion §§ 94, 103-4; Defenses § 321; 
 Experiment § 415; Jvdicial Notice § 
 710; Priority § 808; Public Use Pro- 
 ceedings § 859; Reissues § 869; 
 Secret Process or Machine § 898; 
 Unpatented Invention § 930 
 
 § 849. The Statute, and General Statement. 
 
 Section 4886 provides that the invention, in order to be patentable, must 
 not have been in public use or on sale in this country for more than two 
 years prior to the application; and Sec. 4923 provides that a patent shall not 
 be held void by reason of 'it or any part thereof having been known or used in a 
 foreign country, before the domestic invention or discovery thereof, if it had 
 not been patented or described in a printed publication. 
 
 Public use is one of the statutory defenses, which may be made on proper
 
 §§850-851 PUBLIC USE 773 
 
 notice. See Defenses. But it is a defense which, like anticipation resting 
 on parol evidence, must be clear and indubitable. See Evidence. 
 
 § 850. Evidence of. 
 
 No patent shall be held to be invalid on account of sale and public use 
 for more than two years prior to the application, except on proof that the 
 invention was on sale and in public use more than two years before the 
 application thereof was filed in the Patent Office. — Agawam v. Jordan, 74 
 U.S. 583; 19 L. Ed. 177. 
 
 McClurg V. Kingsland, 1 How. 209; Stimson v. R. R. 4 How. 380. 
 
 Evidence to establish prior use must not leave "room for very grave doubt." 
 There must be satisfactory evidence that the article went into public use. — 
 Hanifen v. Godshalk, 84 Fed. 649; 28 C. C. A. 507. 
 
 Cantrell v. WalUck, 117 U. S. 689. 
 
 Proof of public use rests upon the defendant, and every reasonable doubt 
 should be resolved against it. — Penn v. Conroy, 159 Fed. 943 ; 87 C. C. A. 
 149. 
 
 Barbed Wire Pat. 143 U. S. 275. 
 
 § 851. Experiment. 
 
 Whilst the supposed machine is in such experimental use, the public may be 
 incidentally deriving a benefit from it. If it be a grist mill, or a carding 
 machine, customers from the surrounding country may enjoy the use of it 
 by having their grain made into flour, or their wool into rolls, and still it 
 will not be in public use, within the meaning of the statute. — Elizabeth v. 
 American, 97 U. S. 126; 24 L. Ed. 1000. 
 
 WTien the subject of invention is a machine, it may be tested and tried in 
 a building, either with or without closed doors. In either case, such use is 
 not public use, within the meaning of the statute, so long as the inventor 
 is engaged, in good faith, in testing its operation. He may see cause to alter 
 it and improve it or not. His experiments will reveal the fact whether any 
 and what alterations may be necessary. If durability is one of the qualities 
 to be attained, a long period, perhaps years, may be necessary to enable 
 the inventor to discover whether his purpose is accomplished. And though, 
 during all that period, he may not find that any changes are necessary, yet 
 he may be justly said to be using his machine only by way of experiment; 
 and no one would say that such a use, pursued with a bona fide intent of 
 testing the quaUties of the machine, would be a public use within the meaning 
 of the statute. So long as he does not voluntarily allow others to make it 
 and use it, and so long as it is not on sale for general use, he keeps the inven- 
 tion under his own control, and does not lose his title to a patent. — Eliza- 
 beth V. American, 97 U. S. 126 ; 24 L. Ed. 1000. 
 
 A use by the inventor, for the purpose of testing the machine, in order 
 by experiment to devise additional means for perfecting the success of its 
 operation is admissible ; and where, as incident to such use, the product of 
 its operation is disposed of by sale, such profit from its use does not change 
 its character ; but where the use is mainly for the purposes of trade and profit 
 and the experiment is merely incidental to that, the principal and not the 
 incident must give character to the use. The thing implied as excepted out 
 of the prohibition of the statute is a use which may be properly characterized 
 as substantially for the purposes of experiment. Where the additional use 
 is not for that purpose, but is otherwise public, and for more than two years
 
 774 THE FIXED LAW OF PATENTS § 851 
 
 prior to the application, it comes within the prohibition. — Smith v. Sprague, 
 123 U. S. 249; 31 L. Ed. 141; 8 S. Ct. 122. 
 
 The use of the invention by the inventor himself, or by another person 
 under his direction, by way of experiment, and in order to bring the invention 
 to perfection, has never been regarded in this court as such a public use as 
 under the statute defeats his right to a patent. — Smith v. Sprague, 123 
 U. S. 249; 31 L. Ed. 141 ; 8 S. Ct. 122. 
 
 Shaw V. Cooper, 32 U. S. 292; Elizabeth v. Nicholson, 97 U. S. 126; Egbert v. 
 Lippmann, 104 U. S. 333. 
 
 Where the evidence shows use for more than two years prior to apphca- 
 tion for a patent, the proofs that such use were purely experimental should 
 be full, clear, unequivocal and convincing. — Smith v. Sprague, 123 U. S. 249; 
 31 L. Ed. 141; 8 S. Ct. 122. 
 
 Where a machine is in the process of legitimate experiment and reduction 
 to practice it is not public use to sell the product of such machine so long as 
 the product is the incident and not the principal factor. — Smith v. Sprague, 
 123 U. S. 249; 31 L. Ed. 141; 8 S. Ct. 122. 
 
 Putting an invention into general use to test its utility is not within the 
 statute and cases giving right of experiment. — Root v. Third Ave R. 
 146 U. S. 210; 36 L. Ed. 946; 13 S. Ct. 100. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Smith v. Sprague, 23 U. S. 249; Hall v. 
 MacNeale, 107 U. S. 90; Egbert v. Lippmann, 104 U. S. 333. 
 
 But the mere intention of the patentee is not sufficient. Experimental use 
 or sale for experimental purposes is a fact to be proved, and cannot reside 
 in mere intention. If Swain had supplemented his testimony by showing that 
 he at once proceeded, after the Modus machine was installed, to test its 
 efficiency as compared with outward-discharge machines, or inward-discharge 
 machines without his central partition ; if he had made such experiments as 
 he has conducted since this suit was begun, or the best tests he was able to 
 under the circumstances, — the case would be different. But it does not 
 appear that the patentee ever conducted any experiments to determine the 
 comparative efficiency of the patented machine until after the beginning of 
 the present suit. Under all the circumstances, there is total failure of proof 
 that the sale of the Modus machine was for such experimental trial as the 
 law contemplates, and which is sufficient to bring the case outside the 
 statutory prohibition. — Swain v. Holyoke, 109 Fed. 154; 48 C. C A. 265. 
 
 If the machine, under the circumstances presented in this case, contained 
 the invention in its finished form, the inventor cannot relieve himself from 
 the consequences which follow by showing that it was installed by him with 
 imperfect connections. — Swain v. Holyoke, 109 Fed. 154; 48 C. C. A. 265. 
 
 In -an art requiring extensive experiment to determine results, public 
 experimental use for that purpose does not necessarily work dedication. — 
 Westinghouse v. Saranac, 113 Fed. 884; 51 C. C. A. 514. 
 
 It is contended that no public use can be a bar to a patent unless there 
 is an element of profit involved or unless the inventor allows the invention 
 to go out of his control. The object of evidence on these points is to dis- 
 tinguish between a use by the public, as in Elizabeth v. Pavement Co. 97 
 U. S. 126, for the purpose of experiment, and a use by any part of the public, 
 as in Egbert v. Lippmann, 104 U. S. 333, which is not experimental. The
 
 §§852-853 PUBLIC USE 775 
 
 ultimate question is not whether the pubHc used the invention, but whether 
 the use was directed to a development of the invention or test of its practi- 
 cality. For the purpose of proving the ultimate fact, evidence as to whether 
 the inventor derived a profit from the use or retained control may be im- 
 portant, but it is not necessarily conclusive. But where a use known to the 
 pubhc is shown, the proof on the part of the patentee who contends that it 
 is not a bar, " because it was for the purpose of perfecting an incomplete 
 invention by tests and experiments . . . should be full, unequivocal, and 
 convincing." — Thomson-Houston v. Lorain, 117 Fed. 249; 54 C. C. A. 281. 
 Mfg. Co. V. Sprague, 123 U. S. 249. 
 
 That the unrestricted use of a machine which from its first operation is 
 a mechanical and commercial success cannot be declared to be a secret and 
 experimental use, even though certain minor improvements are subsequently 
 made; and that the rule in Elizabeth v. Pavement Co. 97 U. S. 126 does not 
 apply, see — Jenner v. Bowen, 139 Fed. 556; 71 C. C. A. 540. 
 
 Mr. Edison testified that " so far as the process is concerned, it is just 
 the same now, in a broad sense, that it was " in 1888. The patent application 
 was not filed until 1898. Between 1889 and 1898 duplicates to the number of 
 6,000 or 7,000 were made and used commercially. Held: Public use con- 
 tinuing more than nine years in commercial operations must be presumed 
 from the testimony, and such fact is neither controverted nor modified by 
 'other proof, so that it is immaterial whether experimental use occurred at 
 any stage. The statute invalidates the patent if the invention described 
 therein was in public use or on sale earlier than two years before the applica- 
 tion was filed. The use so established was public use, in violation of the 
 statute, and not within the well-defined meaning of experimental use for 
 testing the invention. — National v. Lambert, 142 Fed." 164; 73 C. C. A. 382. 
 
 Worley v. Tobacco, 104 U. S. 340; Smith v. Sprague, 123 U. S. 249; Eastman 
 V. Mayor, 134 Fed. 844. 
 
 There was, no doubt, an earlier machine (one made and used for more than 
 two years prior to application) more or less complete, which was being 
 experimented with. But the use made of it was purely experimental, and 
 does not count. Nor is it affected by the fact that caramels cut on it were 
 sold. The caramels did not have to be thrown away to escape the charge 
 of public use. — American v. Mills, 149 Fed. 743; 79 C. C. A. 449. 
 
 Elizabeth v. Pavement, 97 U. S. 126; Bryce v. Seneca, 140 Fed. 161. 
 
 For a public use which was similar to that in Elizabeth v. Pavement Co, 
 97 U. S. 126, and held not to be abandonment, see Warren v. City, 166 Fed. 
 309; C. C. A. 
 
 § 852. Foreign Use. 
 
 It is clear that prior use in a foreign country will not supersede a patent 
 granted here, unless the alleged invention was patented in some foreign 
 country. — Roemer v. Simon, 95 U. S. 214; 24 L. Ed. 384. 
 
 § 853. General Rules. 
 
 If an inventor should be permitted to hold back from the knowledge of 
 the public the secrets of his invention ; if he should for a long period of years 
 retain the monopolj'', and make and sell his invention publicly, and thus 
 gather the whole profits of it, relying upon his superior skill and knowledge 
 of the structure and then, and then only, when the danger of competition
 
 776 THE FIXED LAW OF PATENTS §§ 853 
 
 should force him to secure the exclusive right he should be allowed to take 
 out a patent, and thus exclude the public from any further use than what 
 would be derived under it during his fourteen years; it would materially 
 retard the progress of science and the useful arts, and give a premium to those 
 who would be least prompt to communicate their discoveries. — Pennock 
 V. Dialogue, 2 Pet. 1 ; 7 L. Ed. 327. 
 
 It is not a public knowledge of his invention that precludes the inventor 
 from obtaining a patent for it, but a public use or sale of it. — Elizabeth 
 V. American, 97 U. S. 126; 27 L. Ed. 1000. 
 
 It is not public knowledge of an invention but public use or sale which 
 precludes an inventor from obtaining a valid patent. — Root v. Third Ave. 
 R. 146 U. S. 210; 36 L. Ed. 946; 13 S. Ct. 100. 
 
 Quoting Elizabeth v. Nicholson, 97 U. S. 126. 
 
 A mechanical invention can be put to use only when embodied in a con- 
 crete machine, and it is as much embodied in one such machine, as in a 
 thousand. Whether, when thus put to use, it is put " in public use," is a 
 fact to be determined not by the number of machines in which it is so em- 
 bodied, nor by the length of time they are run, but by the extent of use to 
 which such inventor allows such embodiment to be put. He may retain his 
 control over the machine which embodied such inventions and reserve to 
 himself the right to select the individuals who shall use it, or secure to him- 
 self right of access to it for the purpose of conducting his experiments; but 
 when he parts with such machine unreservedly, so that thenceforth the right 
 to take, and hold, and use, and sell it is free to the public, that machine, and 
 the invention it embodies, is by him put in public use. And he does so part 
 with it when he sells it under a contract which not only allows the individual 
 purchaser to use it, but leaves him free to transfer machine and use to whom 
 he will. Whether the purchaser chooses to resell it or not, is immaterial ; he has 
 the power to do so, and that is enough. If the inventor wishes to keep control 
 of the machine which embodies his invention, to secure his own access to 
 it for examination, and to keep it in the friendly hands of those who, he 
 intends, shall aid him by practical experiment, he must make such restrictions 
 a part of the contract of sale and the court cannot assume them to exist in 
 the absence of proof. — DeLamater v. Heath, 58 Fed. 414; 7 C. C. A. 279. 
 
 Egbert v. Lippmann, 104 U. S. 333. 
 
 Instead of laying down a fixed rule, it seems to us that in each case the 
 court should direct its attention to the fundamental inquiry: Under what 
 circumstances and for what purpose did the public use or sale take place? 
 And, where it appears that there has been a public use or sale for more than 
 two years before the application, the burden is thrown upon the patentee to 
 establish, by full, clear, and convincing proofs, that such use or sale was 
 principally and primarily for experimental purposes, and that such purposes 
 were not merely incidental or subsidiary. — Swain v. Holyoke, 109 Fed. 154; 
 48 C. C. A. 265., 
 
 Fruit-Jar Co. v. Wright, 94 U. S. 94; Egbert v. Lippmann, 104 U.S. 337; Hall 
 V. Macneale, 107 U. S. 96; Ehzabeth v. Pavement, 97 U. S. 126; Mfg. Co. v. 
 Sprague, 123 U. S. 256. 
 
 A person may obtain his knowledge of an invention direct from the in- 
 ventor and may practise it publicly without his knowledge or consent, and 
 such use will invaUdate a patent unless the application is filed within the 
 statutory period thereafter. In order to relieve the inventor from the con- 
 sequences of such use, assuming that relief is possible, it must appear that
 
 §853 PUBLIC USE 777 
 
 the knowledge was obtained by deception, and that the use was fraudulent 
 or piratical. The meaning of " fraudulent " is too well known to require 
 definition, but it may be wise to refer to the meaning of the other adjectives 
 used by the Supreme Court. " Surreptitious " means, " Fraudulently 
 obtained. Falsely crept in. Obtained by falsehood, fraud or stealth, by 
 suppression or concealment of facts." ' Piratical " means, " Acquired by 
 piracy or robbery." It is entirely clear that when the courts have used these 
 words in patent causes they intended them to apply to acts done mala fide, 
 clandestinely, treacherously and by means of falsehood, fraud or breach of 
 trust. It is equally clear that they have never been used to characterize 
 knowledge obtained openly and in the due course of business or applied to 
 any act which is neither malum prohibitum nor malum in se. 
 
 The question, what constitutes a fraudulent, piratical or wrongful appropri- 
 ation, sale or use of the invention, is left very much as the earlier authori- 
 ties leave it, in obscurity. We have been referred to no case since the clear 
 exposition of the law in Andrews v. Hovey where a plain case of public use 
 earlier than two years before the application for the patent has been held to 
 be ineffectual as a defense because the use was surreptitious. When the 
 question is fairly presented it may be that the courts will hesitate to introduce 
 exceptions to the rule as broadly stated by the Supreme Court, with the 
 confusion and uncertainty incident thereto. — Eastman v. Mayor, 134 Fed. 
 844; 69 C. C. A. 628. 
 
 The patent was applied for and granted in May, 1864. At that time the 
 act of 1839 — explaining, supplementing and superseding the act of 1836 — 
 was in force. The seventh section of that act is as follows : 
 
 " Sec. 7 . . . 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 for a patent, 
 shall be held to possess the right to use, and vend to others to be used, the 
 specific machine, manufacture, or composition of matter so made or pur- 
 chased, 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." 
 
 The last clause of this section, which is particularly applicable to this 
 controversy, has been condensed and tersely stated by Mr. Walker as follows: 
 
 " A patent is void for the invention covered thereby when in public use 
 or on sale earUer than two years before the application for the patent " 
 
 (sec. 93). . , , 1 1 • c 
 
 The entire subject has been thoroughly examined and the conclusion ot 
 the Supreme Court stated in Andrews v. Hovey, 123 U. S. 267, and reaffirmed 
 after a second exhaustive examination in the same case, 124 U. S. 694. The 
 question now at issue was directly involved in that case. The court says, 
 speaking of the numerous defenses: _ . . . , 
 
 " It is necessary to consider only one of them, which, in our \new, is fatal 
 to the vahdity of the patent, and that is, that the invention was used in 
 public at Cortland, in the State of New York, by others than Green (the 
 inventor) more than two years before the application for the patent." 
 The court savs, in construing the section quoted supra: 
 " The evident intention of Congress was to take away the right (which 
 existed under the act of 1836) to obtain a patent after an invention had for 
 a long time been in public use without the consent or allowance of the in- 
 ventor; it limited that period to two yeare, whether the inventor had or 
 had not consented to or allowed the pubUc use."
 
 778 THE FIXED LAW OF PATENTS 5 854 
 
 After an examination of every reported case upon the rehearing the court 
 was confirmed in its opinion that its former decision was correct and closes 
 the elaborate discussion in the following language : 
 
 " The second clause of the seventh section seems to us to clearly intend, 
 that, where the purchase, sale, or prior use referred to in it has been for more 
 than two years prior to the application, the patent shall be held to be invalid, 
 without regard to the consent or allowance of the inventor. Otherwise the 
 statute cannot be given its full effect and meaning." 
 
 Among the authorities thus examined and overruled was Campbell v. 
 Mayor, 9 Fed. 500, which was the original decision holding the patent in 
 this suit valid. — Eastman v. Mayor, 134 Fed. 844; 69 C. C. A. 628. 
 
 Note: This case, perhaps, holds the record for long and laborious conflict. 
 The first device was completed and delivered for use March 28, 1860. The 
 application was not filed until May 13, 1864. This action was commenced 
 Nov. 13, 1877; and the decision herein was filed Jan. 16, 1905. The litigation 
 covered, in round numbers, 28 years; between the filing of the application 
 and the final decree of the Circuit Court of Appeals 41 years; a final decree 
 on an invention put in use 45 years before that decree was reached. 
 
 The patent was governed by the act of Mar. 3, 1839, as to public use. That 
 act provided that " A patent is void if the invention covered thereby was in 
 public use or on sale earlier than two years before the application for the 
 patent." (Walker's paraphrase.) The act was without qualification. The 
 public use was instituted by the inventor on March 28, 1860. Notwithstand- 
 ing the fact that it was a perfect working device on that day, application was 
 not made until four years, two and one-half months had elapsed. The 
 excuses of experimental use and surreptitious use, to my mind, were the most 
 flimsy. That a case like this could remain in the courts for more than a 
 quarter of a century serves to show the utter inadequacy of our patent 
 courts and the laws governing the trial of patent causes. 
 
 § 854. Publicity. 
 
 Whether the use of an invention is public or private, does not necessarily 
 depend upon the number of persons to whom its use is kno\\Ti. If an inventor, 
 having made his device, gives or sells it to another, to be used by the donee 
 or vendee without limitation or restriction, or injunction of secrecy, and it is 
 so used, such use is public, within the meaning of the statute, even though the 
 use and knowledge of the use may be confined to one person. — Egbert v. 
 Lippmann, 104 U. S. 333; 26 L. Ed. 755. 
 
 Some inventions are by their very character only capable of being used 
 where they cannot be seen or observed by the public eye. An invention may 
 consist of a lever or spring, hidden in the running gear of a watch, or of a 
 ratchet, shaft or cog-wheel covered from view in the recesses of a machine 
 for spinning or weaving. Nevertheless, if its inventor sells a machine of 
 which his invention forms a part, and allows it to be used without restriction 
 of any kind, the use is a pubhc one, wathin the meaning of the law. So, on 
 the other hand, a use necessarily open to public view, if made in good faith 
 solely to test the qualities of the invention, and for the purposes of experi- 
 ment is not a public use within the meaning of the patent law. Elizabeth 
 V. Paving Co. 97 U. S. 126; Shaw v. Cooper, 7 Pet. 292. — Egbert v. Lipp- 
 mann, 104 U. S. 333; 26 L. Ed. 755, 
 
 Note: In this case, Justice Woods held that where the inventor had made 
 an improved corset steel and presented it to his ladylove, who used it ; and 
 where said inventor subsequently married the donee and subsequently made 
 her a second corset steel — the two articles combined covering more than 
 tu'o years before patent — such use was public and constituted abandonment. 
 To this Justice Miller wisely dissented.
 
 §§ 855-856 PUBLIC USE 779 
 
 The fact that the improvement was concealed within the safe and could 
 be seen only by the destruction of the safe does not avoid public use. — 
 Hall V. Macneale, 107 U. S. 90; 27 L. Ed. 367; 2 S. Ct. 73. 
 
 Egbert v. Lippmann, 104 U. S. 333. 
 
 The fact that the anticipating device was concealed from view and could 
 not have come to public notice does not constitute a secret device such as 
 would take it outside the law of public use. — Brush v. Condit, 132 U. S. 
 39; 33 L. Ed. 251; 10 S. Ct. 1. 
 
 The process was practised by Pettigrew and Gleason, and those who 
 assisted, and was open to the observation of the employees generally, and of 
 all who passed through the plant. We think there was abundant publicity. 
 — U. S. Mineral v. Manville, 125 Fed. 770; 60 C. C. A. 288. 
 
 Coffin V Ogden, 18 Wall. 120; Brush v. Condit, 132 U. S. 39; Forncrook v. 
 Root, 127 U. S. 180; Peters v. Active, 129 U. S. 530. 
 
 § 855. Secret Use. 
 
 Inventors may, if they can, keep their invention secret; and if they do for 
 any length of time, they do not forfeit their right to apply for a patent, unless 
 another, in the meantime, has made the invention, and secured by patent the 
 exclusive right to make, use and vend the patented improvement. Within 
 that rule and subject to that condition, inventors may delay to apply for a 
 patent. — Bates v. Coe, 98 U. S. 31; 25 L. Ed. 68. 
 
 Inventors may, if they can, keep their inventions secret, but if they do not, 
 and suffer the same to go into pubUc use for a period exceeding what is 
 allowed bv the patent act they forfeit their right to a patent. — Parks v. 
 Booth, 102 U. S. 96; 26 L. Ed. 54. 
 
 The unrestricted use of a device, without injunction to secrecy, con- 
 stitutes pubUc use. — Manning v. Cape Ann, 108 U. S. 462; 27 L. Ed. 793; 
 2 S. Ct. 860. 
 
 Egbert v. Lippmann, 104 U. S. 333. 
 
 The inventor built and set up and licensed to another a machine, without 
 restriction as to secrecy. Later minor improvements were made, but the 
 machine was a successful one from the start. Held: The licensee understood 
 its mechanism and its method of use, and was under no restriction as to the 
 place and manner of operation, and under no obligation of secrecy. \Vhen 
 the object of the use is the perfecting of an invention, the sale of the product, 
 if strictly incidental to an experimental use, is not a public use under sec. 
 4886 R. S., and will not defeat a patent. A use which is impliedly excepted 
 out of the prohibition of the statute is a use which may be properly char- 
 acterized as substantially for the purposes of experiment. " When the sub- 
 stantial use is not for that purpose, but is otherwise public, and for more than 
 two years prior to the apphcation, it comes within the prohibition. — Jenner 
 V. Bowen, 139 Fed. 556; 71 C C. A. 540. 
 
 Smith V Sprague, 123 U. S. 249; International v. Gaylord, 140 U. S. 55; Root 
 V. Third Ave. 146 U. S. 210; Eastman v. Mayor, 134 Fed. 844. 
 
 Distinguishing Elizabeth v. Pavement Co. 97 U. S. 126. 
 
 § 856. Single Use. 
 
 It follows that a single instance of sale or of use by the patentee rn ay under 
 the circumstances, be fatal to the patent. — Consolidated v. Wright, 94 
 U. S. 92; 24 L. Ed. 68.
 
 7gQ THE FIXED LAW OF PATENTS §857 
 
 Pitts V Hall 2 Blatchf. 235; Am. v. Am. 4 Fish. 291; McMillin v Barclay 5 
 Fiih 189; McClurg v. Kingsland, 1 How. 202; Agawam v. Jordan, 7 WaU. 583. 
 
 To constitute public use of a patent it is not necessary that more than one 
 of the patented articles should be publicly used. The use o a great number 
 may tend to strengthen the proof of public use, but one well defined case of 
 public use is just as effectual to annul the patent as many. — Egbert v. 
 Lippmann, 104 U. S. 333; 26 L. Ed. 755. 
 
 Not dependant upon the number of persons using it. — Root v. Third 
 Ave., 146 U. S. 210; 36 L. Ed. 946; 13 S. Ct. 100. 
 Egbert v. Lippmann, 104 U. S. 333. 
 
 A single unrestricted sale proved is sufficient to establish the defense of 
 prior public use. — DeLamater v. Heath, 58 Fed. 414; 7 C. C. A. 279. 
 
 Fruit lar Co v Wright, 94 U. S. 92; Egbert v. Lippmann, 104 U. S 332; Hall 
 
 V MacLaTe, 107 U S.^90;' Mfg. Co. .. Sprtgue, 123 U. S. 249; Elizabeth .. Pave- 
 ment Co. 97 U. S. 126. 
 
 The sale of this machine was absolute, unconditional and for a valuable 
 consideration. As a general rule, a single unrestricted sale by the patentee 
 of his patented device, embodying his completed m\'ention, is a public use 
 or sale within sec. 4886 of the Revised Statutes. — Swain v. Holyoke, 109 
 Fed. 154; 48 C. C. A. 265. 
 
 Egbert V. Lippmann, 104 U. S. 333; Fruit-JarCo^ Wright 94 U. S. 92; Hall 
 
 V MacNeale, 107 U. S. 90; Henry i;. Soapstone Co 2 Fed. 78; Sinclair t^ Backus, 
 4 Fed 539- Mfg Co. v. Mellon, 58 Fed. 705; DeLamater v. Heath, 58 ted. 414; 
 Mfg. Co. v'. Sprague, 123 U. S. 249. 
 
 We should hesitate to lay down the broad proposition that a single sale of 
 a patented device for experimental purposes works a forfeiture under the 
 statute. We do not understand that it has ever been so expressly decided 
 by the Supreme Court. It is certainly doubtful whether, under such cir- 
 cumstances, the device can be said to be " on sale " within the fair meaning 
 of the statute. It does not follow that, because a machine has been sold, 
 it has passed the experimental stage. — Swain v. Holyoke, 109 Fed. 154; 
 48 C. C. A. 265. 
 
 Hall V. MacNeale, 107 U. S. 96. 
 
 There are undoubtedly cases where the strict application of this rule 
 (a single unrestricted sale) works great hardship. Some inventions are for 
 large and costly structures, others require a long period of time to test their 
 practical utility, and still others are for small devices which are attached 
 to large machines. It follows that an inventor, from lack of means or other 
 circumstances, may be forced to sell his patented device in order to fest its 
 utility or efficiency. For these reasons the courts in some instances have 
 declined to enforce the strict rule where the sale was attended by some 
 exceptional circumstance. — Swain v. Holyoke, 109 Fed. 154; 48 C. C. A. 
 265. 
 
 Graham v. McCormick, 11 Fed. 859; Graham v. Mfg. Co. 11 Fed. 138; Harmon 
 V Struthers, 57Fed.637; Innisi;. Boiler Works, 22 Fed. 780; Eastern v. Standard, 
 30 Fed. 63; Draper v. Wattles, 3 Ban. & A. 618. 
 
 § 857. Two Years Use. 
 
 Is fatal to the validity of the patent. — Worley v. Loker, 104 U. S. 340; 
 26 L. Ed. 821. 
 
 McClurg V. Kingsland, 1 How. 202; Consolidated v. Wright, 94 U. S. 92; Egbert 
 V. Lippmann, 104 U. S. 333.
 
 §858 PUBLIC USE 781 
 
 While the act of 1836 made any public use fatal, the act of 1870 makes a 
 public use of two years prior to the application fatal to the granting of a 
 valid patent. — Manning v. Cape Ann, 108 U. S. 462; 27 L. Ed. 793; 2 
 S. Ct. 860. 
 
 McClurg V. Kingsland, 1 How. 202; Egbert v. Lippmann, 104 U. S. 333; Fruit 
 V. Wright, 94 U. S. 92; Worley i;. Tobacco, 104 U. S. 340. 
 
 An invention which had been in public use more than two years, whether 
 with or without the inventor's consent is abandoned. — Andrews v. Hovey, 
 123 U. S. 267; 31 L. Ed. 160; 8 S. Ct. 101. 
 
 Statutes and authorities construed. — Andrews v. Hovey, 124 U. S. 694; 
 31 L. Ed. 557;8S. Ct. 676. 
 
 McClurg V. Kingsland, 42 U. S. 202; Pierson v. Eagle, 3 Story, 402; Hovey v. 
 Stevens, 1 Wood & M. 290; Pitts v. Hall, 2 Blatchf. 229; McCormick v. Seymour, 
 2 Blatchf. 240; Seymour v. McCormick, 57 U. S. 480; Sargent v. Seagrave, 2 
 Curt. 553; Kendall v. Winsor, 62 U. S. 322; Pennock v. Dialogue, 27 U. S. 1; 
 Shaw V. Cooper, 32 U. S. 292; Sanders v. Logan, 2 Fish. P. C. 167; American v. 
 American, 4 Fish. P. C. 284; McMillin v. Barclay, 5 Fish. P. C. 189; Russell v. 
 Mallory, 10 Blatchf. 140; Jones v. Sewall, 3 Cliff. 563; Klein v. Russell, 86 U. S. 
 433; Henry v. Francestown, 2 B. & A. 221; ConsoHdated v. Wright, 94 U. S. 92; 
 Kelieher v. Darling, 4 Cliff. 424; Henry v. Providence, 3 B. & A. 501; Draper 
 V. Wattles, 3 B. & A. 618; Bates v. Coe, 88 U. S. 31; Graham v. McCormick, 10 
 Biss. 39; Brickill v. Mayor, 18 Blatchf. 273; Campbell v. Mayor, 20 Blatchf. 
 67; Davis v. Fredericks, 21 Blatchf. 556. 
 
 If an inventor applies for his patent within two years from the time that 
 he first exhibits his completed invention in public, no amount of public use 
 within that two years, either by the inventor or others, will work any for- 
 feiture of his right to a patent or constitute any evidence of abandonment. — 
 Haines v. McLaugWin, 135 U. S. 584; 22 L. Ed. 241; 10 S. Ct. 876. 
 
 Where an inventor puts his invention into public use for more than two 
 years without controlling his invention and in good faith seeking to perfect 
 the same, such use avoids the patent. — Root v. Third Ave., 146 U. S. 210; 
 36 L. Ed. 946; 13 S. Ct. 100. 
 
 Elizabeth v. Nicholson, 97 U. S. 126; Smith v. Sprague, 123 U. S. 249; Hall v. 
 MacNeale, 107 U. S. 90; Egbert v. Lippmann, 104 U. S. 333. 
 
 § 858. Miscellaneous Rules. 
 
 The acquiescence of an inventor in the public use of his invention can in 
 no case be presumed, where he has no knowledge of such use. But this 
 knowledge may be presumed from the circumstances of the case. — Shaw 
 V. Cooper, 7 Pet. 292; 8 L. Ed. 699. 
 
 Where the employee invents under hire and employer uses, such use, if for 
 more than two years is public use and is not avoided by any part ownership 
 by the employer. — Worley v. Loker, 104 U. S. 340; 26 L. Ed. 821. 
 
 An inventor cannot relieve himself of the consequences of the prior public 
 use of his patented invention by assigning an interest in his invention or 
 patent to the person by whom the invention was used. — Worley v. Loker, 
 104 U. S. 340; 26 L. Ed. 821. 
 
 What constitutes. — Hall v. MacNeale, 107 U. S. 90; 27 L. Ed. 367; 2 
 S. Ct. 73. 
 Coffin V. Ogden, 18 Wall. 120.
 
 782 THE FIXED LAW OF PATENTS §§ 859-860 
 
 It follows from this principle (rule in Penna. v. Locomotive, 110 U. S. 
 490) that, where the public has acquired in any way the right to use a machine 
 or device for a particular purpose, it has the right to use it for all the like 
 purposes to which it can be applied, and no one can take out a patent to cover 
 the application of the device to a similar purpose. — Blake v. San Francisco, 
 113 U. S. 679; 28 L. Ed. 1070; 5 S. Ct. 692. 
 
 It will hardly be contended that the mistaken advice of a patent solicitor 
 can override a statute of the United States. — Eastman v. Mayor, 134 Fed. 
 844; 69 C. C. A. 628. 
 
 PUBLIC USE PROCEEDINGS. 
 
 General Statement § 859 
 
 See — Interference § 580; Public Use § 849 
 
 § 859. General Statement. 
 
 These proceedings are similar to protests (see § 848), and appear to have 
 grown up in much the same way. While a protest proceeding may inform 
 the Commissioner as to prior publication, these proceedings are to inform him 
 as to public use. Both proceedings have as their object the assistance of the 
 Commissioner in performing his duties under sec. 4893. As appears from 
 the case quoted from below, it is not a proceeding which a contestant before 
 the Office can institute without some risk to himself; for the establishment of 
 a prior use to defeat an opponent may operate to defeat both parties. 
 
 The public use, therefore, carried back more than two years prior to Beck- 
 ert's application, antedates the new application of Currier for a still longer 
 period, and prevents not only Beckert'.s fourth claim, but the claim of the 
 patent in suit, from covering needles with headed pins. — Dodge v. Jones, 
 159 Fed. 715; 86 C. C. A. 191. 
 
 REDUCTION TO PRACTICE. 
 
 General Statement § 860 
 Diligence § 861 
 
 Essential to Patentability § 862 
 Experiment § 863 {see § 412) 
 Last Step Rule § 864 
 Operativeness § 865 
 
 Priority § 866 
 What Constitutes § 867 
 See — Experiment § 412; Operative- 
 ness § 781; Priority § 811; Public 
 Use § 849 
 
 § 860. General Statement. 
 
 What has been said with reference to operativeness (§ 781) applies largely 
 to this subject. The statute (sec. 4886) requires that an invention, in order 
 to be patentable, shall not only be new but useful. It is self-evident that an 
 invention which cannot be reduced to practice without further invention is 
 not patentable by reason of non-utility. Moreover, the statute requires 
 that the specification shall recite the manner and process of making, con- 
 structing, compounding and using the invention, 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 contemplated applying 
 that principle. R. S. 4888. 
 
 Since the furnishing of a model (sec. 4891) is not mandatory, and the re- 
 quirement has fallen into desuetude, the Commissioner has no means of 
 knowing, in many cases, whether the invention is operative, or has been 
 reduced to practice to any extent whatever. One who has had any con-
 
 §860 REDUCTION TO PRACTICE 783 
 
 siderable experience in patent soliciting well knows that many inventions 
 pass directly from the drafting board to the patent specification, without 
 ever having been embodied in a machine. Many of these paper patents are 
 never reduced to practice — many never could be. There is evidently a 
 tendency on the part of the courts, in some cases, to limit the application of 
 such paper patents as showing anticipation (§ 92). It must be borne in mind 
 that failure to reduce to practice or inoperativeness are not questions within 
 the rule of non-user as laid down by the Supreme Court in Continental v. 
 Eastern, 210 U. S. 405 (§ 574), but are within the rules stated in Automatic 
 V. Pneumatic, under § 613. 
 
 The following summary of the law by Judge Holt is instructive: 
 
 This is a bill in equity under 4920 R. S. for infringement. The only 
 defense is priority of invention. Under sec. 4920 the defendant contends, 
 first, that Watson was the original and first inventor of the thing patented, 
 and, second, that Thomas unjustly obtained his patent for that which was 
 in fact invented by Watson, who was using reasonable diligence in adapting 
 and perfecting the same. The first defense turns upon the respective dates 
 of the Thomas and Watson inventions, and the second defense raises a 
 question of fact as to Watson's diligence in adapting and perfecting his 
 invention. Thomas filed his application Dec. 17, 1896, and his patent 
 issued July 26, 1904. Watson conceived his invention, illustrated it by a 
 drawing, and disclosed it to others as early as Jan. 10, 1896. He reduced his 
 invention to practice by the building of a machine in Apr., 1897. He filed 
 his application Mar. 11, 1898, and his patent issued Sept. 26, 1899. It 
 may be noted, first, that Thomas' application antedates Watson's reduction 
 to practice by 4 months, and Watson's application by 15 months; and 
 second, that Watson's conception antedates Thomas' application by 11 
 months. The main controversy with respect to the Thomas invention is 
 whether the date of his invention is the date of his application, Dec. 17, 
 1896, and the main controversy with respect to the Watson invention is 
 whether the date of his invention is the date of his conception, Jan. 10, 1896. 
 
 Under a rule of the Patent Office, the filing of an allowable application 
 is a constructive reduction to practice. In accordance with this rule, the 
 date of the Thomas invention was fixed as of Dec. 17, 1896, the date of his 
 application; and the burden of proof was thrown upon Watson to establish 
 the fact of reasonable diligence from the date of his prior conception, Jan. 
 10, 1896, to the time Thomas filed his application. Upon this issue of dili- 
 gence on the part of Watson, the Examiner of Interferences and the Com- 
 missioner of Patents, and the Court of Appeals, D. C, found against Watson, 
 and adjudged Thomas the prior inventor, and accordingly a patent was 
 issued to Thomas under sec. 4904. As a result of the interference proceed- 
 ings, there are two outstanding patents for the same invention issued to in- 
 dependent inventors. 
 
 The decision in interference proceedings is not conclusive on the question 
 of priority of invention. The same question may arise in subsequent suits 
 instituted under sees. 4915, 4918 and 4920, R. S. In the present suit, the 
 question of priority is raised under paragraphs 2 and 4 of sec. 4920. In 
 order to determine the question of priority under these paragraphs, we 
 must ascertain the respective dates of the Thomas and Watson inventions. 
 If we find the date of the Thomas invention is prior to the date of the Watson 
 invention, then Thomas is the original and first inventor, unless Watson 
 was using reasonable diligence in adapting and perfecting his invention from 
 the time of his conception. On the other hand, if we find that the date of 
 the Watson invention is prior to the date of the Thomas invention, then 
 Watson is the original and first inventor. No question of diligence arises 
 regarding the Thomas invention, because the complainant does not under-
 
 784 THE FIXED LAW OF PATENTS §860 
 
 take to carry the date of the Thomas invention back of his application, 
 while in the case of Watson it is sought to carry the date of invention back 
 to his conception. 
 
 In patented inventions there are several distinct stages of the invention. 
 Some patented inventions comprise only three stages, namely, conception 
 (evidenced by drawings, disclosures, or models), application, patent; while 
 other patented inventions comprise four stages, namely, conception, re- 
 duction to practice, application, patent. 
 
 The date of the first class of patented inventions must be either (1) the 
 date of the patent, or (2) the date of the application, or (3) the date of the 
 conception; while the date of the second class must be either (1) the date 
 of the patent, or (2) the date of the application, or (3) the date of the reduc- 
 tion to practice, or (4) the date of the conception. 
 
 When two patents for the same invention have been issued to independent 
 inventors, we understand the rule to be that the dates of their respective 
 inventions are, (1) the dates of the patents; (2) the dates of the applications, 
 provided the application sufficiently describes the invention; (3) the dates 
 of actual reduction to practice; (4) the dates of conception; with this 
 qualification, that, if either patentee seeks to carry the date of his inven- 
 tion back to the date of his conception, he must show reasonable diligence 
 in adapting and perfecting his invention, either by actual reduction to prac- 
 tice or by filing his application. 
 
 Applying this rule, it appears that Thomas' application of Dec. 17, 1896, 
 carries the date of his invention back of Watson's application, Mar. 11, 1898, 
 and back of Watson's conception, Jan. 10, 1896. It follows, therefore, that 
 Watson, in order to establish an earlier date than Thomas, must show that 
 between the date of his conception, Jan. 10, 1896, and the date of his actual 
 reduction to practice, Apr., 1897, he was " using reasonable diligence in 
 adapting and perfecting " his invention. 
 
 The defendant contends that the courts have adopted another and a 
 different rule for determining the dates of inventions under the patent laws, 
 and that rule is as follows: Inventions are divided into two classes, simple 
 and complicated. Simple inventions may be completed by drawings or 
 disclosure which sufficiently describe the invention, while complicated 
 inventions require for their completion actual reduction to practice. With 
 respect to this theory of the defendant, it is sufficient to say that it is novel 
 and plainly unsound. No such distinction between inventions is found in 
 the statutes, or has ever been recognized by the courts in any adjudicated 
 cases. It may be further observed that any such artificial distinction would 
 lead to hopeless confusion and great injustice. 
 
 In the present case the question of priority of invention involves two 
 fundamental inquiries: First, is the date of the patented invention as early 
 as the date of the application? In other words, can Thomas carry back the 
 date of his invention to the date of his application? Second, is the date of a 
 patented invention as early as the date of conception? In other words, can 
 Watson carry back the date of his invention to the date of his drawing and 
 disclosure? 
 
 First. With respect to the first proposition it may be said that the law 
 is well settled that the date of a patented invention is at least as early as 
 the date of the application, provided it sufficiently describes the invention 
 to enable those skilled in the art to understand it; and we have found no 
 decision in which this rule is questioned. (Quoting and reviewing Walk. 
 Pat. 4th ed. § 70; Kearney v. Railroad, 32 Fed. 320; National v. Brown, 36 
 Fed. 317; Prindle v. Brown, 155 Fed. 531 ; Bates v. Coe, 98 U. S. 31 ; Barnes 
 V. Walworth, 51 Fed. 88, affd. 60 Fed. 605; Barbed Wire Case, 143 U. S. 
 275; Miller v. Eagle, 151 U. S. 186; Westinghouse v. Chartiers, 43 Fed. 
 582.)
 
 §860 REDUCTION TO PRACTICE 785 
 
 The rule of the Patent Office that the filing of an allowable application is 
 constructive reduction to practice is only the expression in another form of 
 the rule that the application for a patented invention, if it sufficiently 
 describes the invention, is conclusive evidence that the invention was made 
 at least as earlv as that date. Lorraine v. Thurmond, 51 O. G. 17S1. 
 
 The rule of "the Federal courts respecting an application which has re- 
 sulted in a patent, and the rule of the Patent Office respecting an allowable 
 application, simply mean that such applications are conclusive evidence 
 of the completeness of the invention. In other words, they are conclusive 
 evidence that the stage of the invention has been reached where it is evi- 
 denced by reduction to practice. 
 
 The rule of the Patent Office, as pointed out by Commissioner Mitchell 
 in Lorraine v. Thumiond, supra, is based upon two well-established prin- 
 ciples of the patent law: 
 
 (1) We have, in the first place, the principle that a statutory invention 
 (except as modified by the doctrine of " diligence in adapting and per- 
 fecting ") is a completed invention; that is, an invention which is per- 
 fected'' and adapted to use, or, as otherwise expressed, reduced to practice; 
 and an inventor is not entitled to a patent — in other words, has not made an 
 invention in the legal sense — until he has reduced his invention to prac- 
 tice Agawam v. Jordan, 7 Wall. 583; Seymour v. Osborne, 11 Wall. 516; 
 Clark V WilUmantic, 140 U. S. 481; Woodcock v. Parker, Fed. Cas. 1813; 
 Bedford v. Hunt, Fed. Cas. 1217; Reed v. Cutter, Fed. Cas. 11,645; Wash- 
 burn V. Cxould, Fed. Cas. 17,214; White v. Allen, Fed. Cas. 17,535; Winans 
 V. New York, Fed. Cas. 17,864. , , ^, 
 
 (2) At the same time we have the equally well settled rule that an inven- 
 tion need not be perfected and adapted to use, or reduced to practice, in 
 order to obtain a valid patent, since no such condition is contained in the 
 statute. Wheeler v. Chpper, Fed. Cas. 17,493; Telephone Cases, 126 U. S. 1. 
 
 From these established and seemingly contradictory principles of the 
 patent law first, that an invention in order to be patentable must be re- 
 duced to practice, and, second, that, under the statutes, reduction to prac- 
 tice is not essential either before or after the grant of a patent, it follows that 
 there must be some stage of an invention wdien it must be presumed as a 
 matter of law that the inventor has reduced his invention to practice; and 
 that stage is presimied to have been reached when he has done all that he 
 is required to do to obtain a valid patent, namely, when he has filed a com- 
 plete and allowable application; and hence the Patent Office has adopted 
 the rule that the filing of such an application is constructive reduction to 
 practice and the Federal courts have adopted the rule that such an appli- 
 cation is conclusive evidence that the patentee made his invention — that 
 is reduced his invention to practice — at least as early as that date. 
 
 'The cases which hold that a rejected application is not sufficient to estab- 
 lish priority of invention under the statutes have no bearing on the question 
 of the leffal effect of a complete and allowable application which will result 
 or has resulted in the granting of a patent. Corn Planter Pat. 2o \\ all. 181 ; 
 Ljmian v. Lalor, Fed. Cas. 8632; Northwestern v. Philadelphia, Fed. Cas. 
 
 10 337 
 
 Second We have now to consider the question whether Watson c^n 
 carrv the date of his invention back to the time of his conception, Jan. 10 
 1896 This question must be viewed from two standpoints: J^irst can it 
 be said that Watson's conception, drawings and disclosure to others, ot 
 themselves, or without regard to his subsequent acts, can constit ute a com- 
 plete invention within the meaning of the patent laws? Second, can Watson 
 i a patentee carry back the date of his invention to the time of his con- 
 
 ^^ a^The law appears to be well established that a conception evidenced
 
 786 THE FIXED LAW OF PATENTS §860 
 
 by disclosure, drawings, and even a model, confers no rights upon an inventor 
 unless followed by some other act, such as actual reduction to practice, or 
 filing an application for a patent. A conception of this character is not a 
 complete invention under the patent laws. If it did constitute an invention 
 under the statutes, then an inventor might stop with his drawings and dis- 
 closure, and hold the field for all time against a subsequent inventor who 
 had reduced his invention to practice, or who had obtained a patent. The 
 law will not permit this. An inventor must not stop with this stage of his 
 invention, but he must proceed with reasonable diligence to perfect his 
 invention, either by actual reduction to practice, or by filing his application 
 for a patent. (Quoting and reviewing Detroit v. Renchard, 9 Fed. 293; 
 Reeves v. Keystone, Fed. Cas. 11,660; Pennsylvania v. Simpson, 29 J'ed. 
 288; Winans v. New York, Fed. Cas. 17,864; Electric v. Hall, 6 Fed. 603; 
 Draper v. Potomska, Fed. Cas. 4072; EUithorp v. Robertson, Fed. Cas. 
 4408.) 
 
 (2) The next question we have to consider is whether Watson as a pat- 
 entee can carry back the date of his invention to the date of his conception; 
 that is, to his drawing and disclosure of Jan. 10, 1896. It is conceded that 
 a patentee who has used " reasonable diligence in adapting and perfect- 
 ing " his invention can carry the date back to his drawings and disclosure; 
 and the only question which arises is whether the law will permit him to 
 do this in the absence of such reasonable diligence. In other words, can a 
 patentee stop with his drawings and disclosure for an unreasonable time, 
 and then, by virtue of his subsequently obtaining a patent, hold this field 
 of invention against a rival inventor whose conception of the same invention 
 was later, and who proceeded with diligence to build a practical machine, 
 or to file an application for a patent? In our opinion, he cannot do this 
 imder the patent laws. We understand the true rule to be that a patentee 
 who undertakes to carry back the date of his invention to his drawings 
 and disclosure must show reasonable diligence in adapting and perfecting 
 his invention, either by actual reduction to practice or. by filing his appli- 
 cation. This rule is supported by the great weight of authority, and we have 
 found no cases which directly hold that this is not the law, though there 
 are some cases in which a patentee has been permitted to carry back his 
 invention to his drawings and disclosure, where the question of diligence 
 was not raised or passed upon. Loom Co. v. Higgins, 105 U. S. 580; Dodge 
 V. Porter, 98 Fed. 624; Westinghouse v. Stanley, 133 Fed. 167. No sound 
 reason has been advanced why the doctrine of diligence should not apply 
 to a patentee as well as an inventor who has not secured a patent. On 
 the other hand, any such distinction in favor of patentees is not in harmony 
 with the patent laws. We have seen that an invention in the sense of the 
 patent law signifies a completed invention, and that the earliest date of 
 an invention is the time of its completion. We have also seen that an in- 
 vention may be completed either by actual reduction to practice or by filing 
 a complete and allowable application in conformity with the statutes. 
 
 This general principle, however, is subject to this qualification: (Here 
 follows a discussion of the acts of July 4, 1836, sec. 15; Feb. 21, 1793, sec. 
 6; [and a review of the cases bearing thereon: Reed v. Cutter, supra; Loom 
 Co. V. Higgins, supra; Odell v. Stout, 22 Fed. 159; Reeves v. Keystone, 
 supra; Christie v. Seybold, 55 Fed. 69; Merrow v. Shoemaker, 59 Fed. 120; 
 Detroit v. Renchard, supra; Pennsylvania v. Simpson, supra; Electric v. 
 Hall, supra; Morgan v. Daniels, 153 U. S. 120). 
 
 We come now to the remaining question, whether Watson was reason- 
 ably dihgent in adapting and perfecting his invention. Upon this question 
 oi fact the decision of the Patent Office tribunals and the Court of Appeals, 
 D. C. is entitled to great weight, if it is not absolutely controlling. 
 
 In Morgan v. Daniels, 153 U. S. 120, a suit was brought under § 4915,
 
 §§861-862 REDUCTION TO PRACTICE 787 
 
 R. S. by the party who was refused a patent in interference proceedings 
 to determine the question whether he should not be adjudged entitled to a 
 patent, in this case the court used the following language: 
 
 "Upon principle and authority, therefore, it must be laid down as a rule 
 that, where the question decided in the Patent Office is one between con- 
 testing parties as to priority of invention, the decision there made must be 
 accepted as controlling upon the question of fact in any subsequent suit 
 between the same parties, unless the contrary is established by testimony 
 which in character and amount carries thorough conviction "— Auto- 
 matic V. Pneumatic, 166 Fed. 288; 92 C. C. A. 206. 
 
 § 86i. Diligence. 
 
 The settled rule of law is, that whoever first perfects a machine is entitled 
 to the patent, and is the real inventor, although others may have had the 
 Idea and made some experiments toward putting it in practice He is the 
 inventor and is entitled to the patent who first brought the machine to per- 
 
 rf ^^''roo .^'^T^'^T^*, capable of useful operation. — Agawam v. Jordan, 74 
 U. S. 583; 19 L. Ed. 177. , 
 
 Washburn v. Gould, 3 Story, 133. 
 
 A complicated invention, requiring many experiments and much study to 
 give it practical form, would reasonably delay a reduction to practice after 
 the first conception for a greater length of time than where the idea and the 
 machine embodying it were simple in character. Then, too, the sickness of 
 the inventor, his poverty and his engagements in other inventions of a similar 
 kind, are all circumstances which may affect the question of reasonable 
 diligence. — Christie v. Seybold, 55 Fed. 69; 5 C. C. A. 33. 
 
 Bradford v. Corbin, 6 0. G. 223; Webster v. Carpet Co. 5 0. G 522- Cox v 
 ^^o^^f< \^'^^- ^^^' Munger v. Connell, 1 O. G. 491; Proctor v. Ackroyd.'e O g' 
 b03; Cushman v. Parkam, 9 O. G. 1108. 
 
 § 862. Essential to Patentability. 
 
 Original and first inventors are entitled to the benefit of their inventions 
 if they reduce the same to practice, and seasonably comply with the re- 
 quirements of the patent law in procuring letters patent for the protection 
 of their exclusive rights. Crude and imperfect experiments are not sufficient 
 to confer a right to a patent; but in order to constitute an invention the 
 party must have proceeded so far as to have reduced his idea to practice and 
 embodied it in some distinct form. — Seymour v. Osborne, 78 U, S. 516- 
 20 L. Ed. 33. ' 
 
 An invention in order to be patentable must be more than a mere ex- 
 periment; its utility must have been established by reduction to practice — 
 Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 This was a problem of the reconciliation of antagonisms, which so often 
 occurs m mechanics and without which practically successful results are not 
 attained. — Consolidated v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 
 513. 
 
 A conception of the mind is not an invention until represented in some 
 physical form, and unsuccessful projects or experiments, abandoned by the 
 inventor, are equally destitute of character. — Clark v. Willimantic 140 
 U. S. 481; 35 L. Ed. 521; 11 S. Ct. 846.
 
 788 THE FIXED LAW OF PATENTS §§ 863-866 
 
 § 863. Experiment. 
 
 What constitutes legitimate experiment in reducing to practice, see 
 — Smith V. Sprague, 123 U. S. 249; 31 L. Ed. 141; 8 S. Ct. 122. 
 
 § 864. Last Step Rule. 
 
 In the law of patents it is the last step that counts. — Washburn v. Beat 
 Em All, 143 U. S. 275; 36 L. Ed. 154; 12 S. Ct. 443. 
 
 Loom Co V. Higgins, 105 U. S. 580; Safety Valve Co. v. Crosby, 113 U. S. 
 157; Smith v. Goodyear, 93 U. S. 486; Magawan v. N. Y. 141 U. S. 332. 
 
 § 865. Operativeness. 
 
 All we know is that he found out that, by changing the intensity of a 
 continuous current so as to make it correspond exactly with the changes in 
 density of air caused by sonorous vibrations, vocal and other sounds could 
 be transmitted and heard at a distance. This was the thing to be done, 
 and Bell discovered the way of doing it. — Telephone Cases, 126 U.S. 1 ; 
 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Although at the time Bell applied for his patent he had never actually 
 transmitted spoken words so that they could be distinctly understood, so 
 long as he had described the device with sufficient precision to enable one 
 skilled in the art thereafter to produce a speaking telephone, it was sufficient. 
 " Where the question is whether a thing can be done or not, it is always easy 
 to find persons ready to show how not to do it." — Telephone Cases, 126 
 U. S. 1; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 Loom V. Higgins, 105 U. S. 580. 
 
 The law does not require that a discoverer or inventor, in order to get a 
 patent for a process, must have succeeded in bringing his art to the highest 
 degree of perfection. It is enough if he describes his method with sufficient 
 clearness and precision to enable those skilled in the matter to understand 
 what the process is, and if he points out some practical way of putting it in 
 operation. — Telephone Cases, 126 U. S. 1 ; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 The patent laws were not designed for the benefit of the man who attempts 
 to originate a useful thing, but rather to reward the one who first achieves 
 success in the production of it. It would be a perversion of the law to hold 
 a machine which can do certain kinds of work to be an infringement of a 
 patent for a different machine, which cannot do the same work. — Norton 
 V. Jensen, 49 Fed. 859; 1 C. C. A. 452. 
 
 His patent should not be declared void because he was in doubt as to 
 which of the compositions would prove the most satisfactory in a commercial 
 sense, or because he had not practically and finally tested and chemically 
 isolated all the matter or material containing the required cohesive, ad- 
 hesive and acid resisting qualities. — American v. Howland, 80 Fed. 395; 
 25 C. C. A. 500. 
 
 Telephone Cases, 126 U. S. 1. 
 
 § 866. Priority. 
 
 However brilliant the discovery of the new principle may be, to make it 
 useful it must be applied to some practical purpose. Short of this no patent 
 can be granted. And it would not seem to be a work of much labor for a 
 man of ingenuity to describe what he had invented. The principle may be
 
 §§ 867-868 REHEARINGS 789 
 
 the new and valuable discovery, but the practical application of it to some 
 useful purpose is the test of its value. -LeRoy v. Tatham, 63 U. b.ld^, 
 16 L. Ed. 366. 
 LeRoy v. Tatham, 14 How. 156, 176. 
 
 He is the first inventor and entitled to the patent, who, being an original 
 dis^overer,\as first perfected and adapted the invention to actual use. - 
 Whitely V. Swayne, 74 U. S. 685; 19 L. Ed. 199. 
 
 Curt. Pat. 43 and notes. 
 
 § 867. What Constitutes. 
 
 A machine is said to be complete when the apparatus is attaehed substan- 
 tiatly c:mpl:tL^n^ts operatn/parts And it i-^V^S^L' 58 U t fs" 
 be doing work, so long as it is capable of it. - Troy v. Odiorne, ob u. ft. m, 
 
 15 L. Ed. 37. 
 
 ot practical uumy . 1:. c y °,„„y,:..p r)rocess or product is but its material 
 
 to him who conceived it. ^^e macnine, procebb u p 
 
 reflex and embodiment. — Smith v. Nichols, 88 U. b. U^ ^- ^- ^^- ^^o. 
 
 It can hardly b. claimed that the rough sketch made by Se>^boW of his 
 
 actua operative machine. - Christie .. Seybold, 55 Fed. 69- 5 C- C ^^ g; 
 \, T) -J r-^ r. v^^h P C 456- Lubricator 1;. Renchard, 9 l^ish. zyc5, 
 
 TMals, 13 O. G. 276; Odell v. Stout, 22 Fed. 159. 
 
 REHEARINGS. ,. ^ ^ ,• 
 
 , o. . f s SR« 1 55 138-9; Pleading and Practice 
 
 f^e"- aIJSSuMs; A„eals \ IW; Beope^n, Case 8 890 
 
 S 868. General Statement. „„+^„+ 
 
 geS r^es to patent causes with no substantial variation. 
 
 After the case has been >eard and decid^^^^^^^^^^^ 
 
 could not file a disclaimer m ^«^^K,%";3^ 
 any other subject, except at^areh^.rn^^^
 
 790 
 
 THE FIXED LAW OF PATENTS 
 
 869 
 
 court in which the case has been heard or tried, and is not a subject of appeal. 
 The terms imposed are a condition precedent to a rehearmg not haymg been 
 comnlied with, the disclaimer was not in the case. — Roemer v. Neumann, 
 132 U. S. 103 ; 33 L. Ed. 277 ; 10 S. Ct. 12. 
 
 In reaching our conclusions of fact in this case, we have not been unmindful 
 of the abuses which the strict rules enforced in the allowing of the rehearings 
 were adopted to prevent. Where an elaborate opinion of the court of last 
 resort upon the evidence is published, and the weaknesses of the losing side 
 are clearly brought out, and the defeated party is thereafter given an 
 opportunity to strengthen the defects of his case by evidence as to trans- 
 actions long past and machinery long since cast into the scrap heap, there is 
 great danger that the exigencies of the case may lead witnesses to round 
 out evidence beyond that which exact truth would permit. Such evidence 
 must be taken with great caution, and weighed in the light of this danger. — 
 Potts V. Creager, 97 Fed. 78; 38 C C. A. 47. 
 
 REISSUES. 
 
 The Statute § 869 
 
 Abandoned Claim § 870 (see § 1) 
 
 Broadening 
 
 Not Permissible — In General § 
 871 
 
 Not Permissible — Omitting Ele- 
 ments § 872 
 When Permissible § 873 
 Miscellaneous. Rules § 874 
 
 Delay 
 
 Excusable § 875 
 Fatal § 876 
 General Rules § 877 
 Intervening Rights § 878 
 Miscellaneous Rules § 879 
 
 Decision of Commissioner § 880 
 
 Different Invention § 881 
 Disclaimer § 882 {see § 339) 
 General Rules § 883 
 Grounds for § 884 
 
 Inadvertence, Accident, or Mistake 
 § 885 
 
 Scope of § 886 
 Surrender — Effect of § 887 
 Tests of Validity § 888 
 Miscellaneous Rules § 889 
 See — Assignment § 173; Commis- 
 sioner of Patents § 258; Defenses 
 § 310; Disclaimer § 339; Divisional 
 Patenting § 348; Double Pateiiting 
 § 356; Fraud § 425; Infringement 
 § 522; Laches § 731 
 
 § 869. The Statute. 
 
 Whenever any patent is inoperative or invalid, by reason of a defective 
 or insufficient 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 intention, the Commissioner shall, on the surrender of such 
 patent and the payment of the duty required by law, cause a new patent 
 for the same invention, and in accordance with the corrected specification, 
 to be issued to the patentee, or, in case of his death or of an assignment of 
 the whole or any undivided part of the original patent, then to his executors, 
 administrators, or assigns, for the unexpired part of the term of the original 
 patent. Such surrender shall take effect upon the issue of the amended 
 patent. The Commissioner may, in his discretion, cause several patents to 
 be issued for distinct and separate parts of the thing patented, upon demand 
 of the applicant, and upon payment of the required fee for a reissue for each 
 of such reissued letters patent. The specifications and claim in every such 
 case shall be subject to revision and restriction in the same manner as original 
 applications are. Every "patent so reissued, together with the corrected 
 specifications, shall have the same effect and operation in law, on the trial 
 of all actions for causes thereafter arising, as if 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
 
 §§ 870-871 REISSUES 791 
 
 drawing, amendments may be made upon proof satisfactory to the Commis- 
 sioner that such new matter or amendment was a part of the ongmal mven- 
 tion, and was omitted from the specification by inadvertence, accident, or 
 mistake, as aforesaid. R. S. 4916. 
 
 Patents may be granted and issued or reissued to the assignee of the in- 
 ventor or discoverer; but the assignment must be first entered of record in 
 the Patent Office. And in all cases of an application by an assignee for the 
 issue of a patent, the application shall be made and the specification sworn 
 to by the inventor or discoverer ; and in all cases of an application for a 
 reissue of any patent, the application must be made and the corrected 
 specification signed by the inventor or discoverer, if he is hying unless the 
 patent was issued and the assignment made before the eighth day ot July, 
 1870. R. S. 4895. 
 
 § 870. Abandoned Claim. 
 
 Indeed we have heretofore expressed doubts whether reissued letters patent 
 can be sustained in any case where they contain claims that have once been 
 formally disclaimed by the patentee, or rejected with his acquiescence and 
 he has consented to such rejection in order to obtain his letters patent. — 
 Goodyear v. Davis, 102 U. S. 222; 26 L. Ed. 149. 
 
 Leggett V. Avery, 101 U. S. 256. 
 
 When apphcant abandoned a claim under pressure of rejection it does not 
 follow that such rejection implies that the claim is otherwise covered. — 
 Yale V. James, 125 U. S. 447; 31 L. Ed. 807; 8 S. Ct. 967. 
 
 Swain v. Ladd, 102 U. S. 408. 
 
 A claim once abandoned in the Patent Office and restored in the reissue 
 cannot be admitted in consistency with numerous decisions by this court. — 
 Yale V. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 884. 
 
 § 871. Broadening — Not Permissible — In General. 
 
 The practice of the art of broadening claims by reissue to cover subsequent 
 invention is to be condemned, and the reissue to be hmited. — Burr v. 
 Duryee, 68 U. S. 579; 17 L. Ed. 660. 
 
 The new art of expanding patents for machines into patents for " a mode 
 of operation," a function, a principle, a result, so that by an equivocal 
 use of the term " equivalent " a patentee of an improved machine may sup- 
 press all further improvements, is to be condemned. — Case v. Brown, 69 
 U. S. 320; 17 L. Ed. 817. 
 
 Burr V. Duryee, 1 Wall. 535; McCormick v. Talcott, 20 How. 405. 
 
 It is clear that the commissioner has no jurisdiction to grant a reissue 
 except for the same invention as the original. — Seymour v. Osborne, 78 
 U.S. 516; 20 L. Ed. 33. 
 
 Cahart v. Austin, 2 Cliff. 536; Curt. Pat. 276; Woodworth v. Stone, 3 Story, 
 753. 
 
 We think it proper to reiterate our disapprobation of these ingenious 
 attempts to expand a simple invention of a distinct device into an all- 
 emSing claim, calculated by its wide generalizations and anibiguous 
 Lnguage to discolirage further invention in the same department of industry 
 and to cover antecedent hiventions. — Carlton v. Bokee, 84 U. S. 463, 
 21 L. Ed. 517.
 
 792 THE FIXED LAW OF PATENTS §871 
 
 It aDPears on the face of the reissue that it is for a different invention, 
 for the^reissue is attempted to be sustained only on the ground that it isfor 
 a single stage process. — American v. Fiber, 90 U. S. 566, 23 L iid. 6\. 
 
 A reissue could only be granted for the same invention embraced in the 
 ori^^inal patent, the specification could not be substantially changed, either 
 bv^addition of new matter or the omission of important particulars, so as 
 to enlarge the scope of the invention. — Russell v. Dodge, 93 U. b. 460; 
 23 L. Ed. 973. 
 
 Moray v. Lockwood, 8 Wall. 230. ». 
 
 The original covered only the process. In the reissue division was made, one 
 patent covering the process and the other the product. Held: Invalid. — 
 Powder v. Powder, 98 U. S. 126; 25 L. Ed. 77. 
 
 Burr V Duryee, 1 Wall. 575; Seymour v. Osborne, 11 Wall. 516; Gill v. Wells, 
 22 Wall. 1; Wood Paper Pat. 23 Wall. 566. 
 
 A reissue for a broader claim than the original, especially when it embraces 
 matter previously rejected and disclaimed by amendment or in obtaining 
 an extension, is invalid. — Leggett v. Avery, 101 U. S. 256; 25 L. Ed. 865. 
 
 Here is a sweeping generalization, which reissue claims taken literally, 
 would give to the patentee a monopoly of all water wheels having simul- 
 taneously an effective inward and downward flow and discharge, whatever 
 might be the shapes of the floats, or of the crown. 
 
 The mistake of the patentee, or his assigns, seems to have been in sup- 
 posing that he was entitled to have inserted in a reissue patent all that he 
 might have applied for and had inserted in his original patent. A reissue can 
 be granted only for the same invention which was originally patented. If 
 it were otherwise, a door would be opened to the admission of the greatest 
 frauds. — Swain v. Ladd, 102 U. S. 408; 26 L. Ed. 184. 
 
 This court has repeatedly held that if, on comparing a reissue with the 
 original, the former appears on its face to be for a different invention from that 
 described or indicated in the latter, it must be declared invahd. — Ball v. 
 Langles, 102 U. S. 128; 26 L. Ed. 104. 
 
 Seymour v. Osborne, 78 U. S. 516; Russell v. Dodge, 93 U. S. 460. 
 
 If the reissued patent is to be construed as appellant insists it should be 
 and as it must be to include the defendant's devices it is broader than the 
 original patent and therefore void. — Hopkins v. Corbin, 103 U. S. 786; 
 26 L. Ed. 610. 
 
 Wood Paper Patent, 90 U. S. 566; Powder v. Powder, 98 U. S. 126; Ball v. 
 Langles, 102 U. S. 128; Russell v. Dodge, 93 U. S. 460; Swain v. Ladd, 102 U. 
 S. 408; Wicks v. Stevens, 2 Woods, 312. 
 
 The general rule and leading case (quoted § 873) — Miller v. Brass Co. 
 104 U. S. 350; 26 L. Ed. 783. 
 
 General rule followed. — Guidet v. Brooklyn, 105 U. S. 550; 26 L. Ed. 1106. 
 
 General rule applied and followed. — Johnson v. Flushing, 105 U. S, 539; 
 26 L. Ed. 1162. 
 
 Giant v. California, 6 Sawy. 508; Powder v. Powder, 98 U. S. 126; Ball v. 
 Langles, 102 U. S. 128; James v. CampbeU, 104 U: S. 356.
 
 5 871 REISSUES 793 
 
 A reissue for a broader claim than warranted by the original is void. — 
 Bantz V. Frantz, 105 U. S. 160; 26 L. Ed. 1013. 
 aiiller V. Brass Co. 104 U. S. 350. 
 
 Broadening claim voids patent. — Matthews v. Boston, 105 U. S. 54: 
 26 L. Ed. 1022. 
 Miller v. Brass Co. 104 U. S. 350. 
 
 The specification and first claim of the reissued patent is a plain attempt 
 to include a device which was not and could not be fairly covered by the 
 original patent. The claim is, therefore, for that reason void. — Moffitt v. 
 Rogers, 106 U. S. 423; 37 L. Ed. 76; IS. Ct. 70. 
 
 Gill V. Wells, 22 Wall. 1; Wood Paper Pat. 23 Wall. 566; Powder v. Powder, 
 98 U. S. 126; Ball v. Langles, 102 U. S. 128; Miller v. Brass Co. 104 U. S. 350; 
 James v. Campbell, 104 U. S. 356; Heald v. Rice, 104 U. S. 737; Bantz v. Frantz, 
 105 U. S. 160; Johnson v. R. R. 105 U. S. 539. 
 
 It is quite clear that the original patent covered a mechanism to accomplish 
 a specific result, and that the reissued patent covers the process by which the 
 result is attained, without regard to the mechanism used to accomplish it. 
 The reissue is therefore much broader than the original patent, and covers 
 every mechanism which can be contrived to carry on the process. — Wing 
 V. Anthony, 106 U. S. 142; 27 L. Ed. 110; 1 S. Ct. 93. 
 
 Powder v. Powder, 98 U. S. 126; Campbell v. James, 104 U. S. 356; Heald v. 
 Rice, 104 U. S. 737; Gill v. Wells. 22 Wall. 1; Wood Paper Pat. 23 Wall. 566; 
 Ball V. Langles, 102 U. S. 128; Miller v. Brass Co. 104 U. S. 350; Johnson v. 
 R. R. 105 U. S. 539; Bantz v. Frantz, 105 U. S. 160. 
 
 If so construed it is invalid as being for a different invention from any 
 invention found in the original patent. And if it is so limited as to be no 
 broader than the claim of the original patent, there has been no infringement 
 of it. — Gosling v. Roberts, 106 U. S. 39; 27 L. Ed. 61; IS. Ct. 26. 
 
 The expansions in the reissue were afterthoughts, developed by the subse- 
 quent course of improvement, and intended to cover matter appearing in 
 subsequent patents. No excuse is given for the delay and no inadvertence, 
 accident or mistake is shown. — Clements v. Odorless, 109 U. S. 641; 27 
 L. Ed. 1060; 3 S. Ct. 525. 
 
 Miller v. Brass Co. 104 U. S. 350; James v. Campbell, 104 U. S. 356. 
 
 The original patent was issued July 7, 1863. Eleven years after, in 1874, 
 the competition of the appellant's device became apparent and was felt. In 
 1875, application was made for the reissue; the original patent was sur- 
 rendered and the patent reissued July 13, 1875. Here is a delay of nearly 
 12 years, without the offer of an explanation or excuse, without even the 
 suggestion of inadvertence or mistake in the original application. The only 
 inference that can be drawn is, that the discovery and experience of success- 
 ful competition in 1874 suggested first and led to the discovery that the 
 original claim did not cover everything that might have been embraced and 
 was not broad enough to maintain the monopoly desired but not secured. — 
 Turner v. Dover, 111 U. S. 319; 28 L. Ed. 442; 4 S. Ct. 401. 
 
 Miller v. Brass Co. 104 U. S. 350; Clements v. Odorless, 109 U. S. 641. 
 
 If the claim is to be construed so broadly as to cover the defendant's 
 article, it is wider in scope than the original actual invention, and wider than 
 anything indicated in the specification of the original patent, and that, if it 
 is to be so construed as to cover only the product which the process described
 
 794 THE FIXED LAW OF PATENTS § 871 
 
 in it will produce it is not shown that the defendant's article is that product 
 or can be practically produced by that process. — Cochrane v. Badische, 
 111 U. S. 293; 28 L. Ed. 433; 4 S. Ct. 455. 
 
 It is plain that the claims mentioned include many devices not covered by 
 the original patent, and are void. — McMurray v. Mallory, 111 U. S. 97; 
 28L. Ed. 365; 4 S. Ct. 375. 
 
 Gill V Wells, 22 Wall. 1; Wood Paper Pat. 23 Wall. 566; Powder v. Powder, 
 98 U S 126; Ball v. Langles, 102 U. S. 128; Miller v. Brass Co. 104 U. S. 350; 
 James v. Campbell, 104 U. S. 356; Heald v. Rice, 104 U. S. 737; Johnson v. 
 R. R. 105 U. S. 539; Bantz v. Frantz, 105 U. S. 160; Wing v. Anthony, 106 U. S. 
 142. 
 
 It is clear on the face of the patent that the only object of the reissue was 
 to enlarge the claims. The description was not altered in the least. The 
 claims in the original patent were clear and explicit, one of these being sub- 
 stantially retained in the reissue. Nothing was altered, nothing was changed, 
 but to multiply the claims and to make them broader. And this was done, 
 not for the benefit of the original patentee but for that of his assignee; and 
 was done after the lapse of nearly four years. — Mahn v. Harwood, 112 U. S. 
 354; 28 L. Ed. 665; 5 S. Ct. 174. 
 
 Miller v. Brass Co. 104 U. S. 350. 
 
 The rule in Miller v. Brass Co. 104 U. S. 350, and James v. Campbell, 104 
 U. S. 356, followed and approved. — Coon v. Wilson, 113 U. S. 268; 28 L. 
 Ed. 963; 5 S. Ct. 537. 
 
 Mahn v. Harwood, 112 U. S. 354. 
 
 The first claim of the reissue is bad, not only because it was for something 
 the patentee had expressly disclaimed in the original patent, but because, as 
 the evidence clearly shows, there was nothing new in the dies themselves. — 
 Beecher v. Atwater, 114 U. S. 523; 29 L. Ed. 232; 5 S. Ct. 1007. 
 
 The suggestion in the second reissue of its adaptability to a certain use, 
 not found in the original patent or in the first reissue is new matter, so far as 
 anvthing in it can be invoked to confer patentability on the article. — 
 Gardner v. Herz, 118 U. S. 180; 30 L. Ed. 158; 6 S. Ct. 1027. 
 
 The alterations, it is said in argument, had the effect only of giving a 
 more full, complete, and accurate description of the same mechanism; but, 
 in point of fact, the alterations changed the shape of the specification in such 
 a way as to admit the new and enlarged claim in a manner in which it could 
 not have been made upon the original description. — Hartshorn v. Saginaw, 
 119 U. S. 664; 30 L. Ed. 539; 7 S. Ct. 421. 
 
 Broadening by claiming a different thing voids the patent. — Ives v. 
 Sargent, 119 U. S. 652; 30 L. Ed. 544; 7 S. Ct. 436. 
 
 Broadening the claims voids the patent. — Newton v. Furst, 119 U. S. 
 373; 30 L. Ed. 442; 7 S. Ct. 369. 
 
 As the patent is not susceptible of a broad construction, the reissue is a 
 material expansion and enlargement of it. As such expansion appears to 
 be the only object of the reissue, and as the application for the reissue was not 
 made until nearly five years after the original was granted, the case comes 
 within the ruling of Miller v. Brass Co. 104 U. S. 350. — White v. Dunbar, 
 119 U. S. 47; 30 L. Ed. 303; 7 S. Ct. 72.
 
 § 871 REISSUES 
 
 795 
 
 The design manifest is to cover such a structure as that of the defendants. 
 No inadvertence, accident or mistake is shown. This reissue patent is 
 invalid. — Worden v. Searls, 121 U. S. 14; 30 L. Ed. 853; 7 S. Ct. 814. 
 
 The court adheres strictly to the view, that, under the statute, the com- 
 missioner has no jurisdiction to grant a reissued patent for an invention sub- 
 stantially different from that embodied in the original patent, and that a 
 reissue granted not in accordance with that rule is void. — Parker ir. Yale, 
 123 U. S. 87; 31 L. Ed. 100; 8 S. Ct. 38. 
 
 Burr V Durvee, 68 U. S. 531; Se\'mour v. Osborne, 71 U. S. 516; Gill v. Wells, 
 87 U S 1- Giant v. California, 98 U. S. 126; Mahn v. Harwood, 112 U. S 354; 
 Coon V " Wilson, 113 U. S. 268; Ives v. Sargent, 119 U. S. 652; Corn Planter 
 Patent, 90 U. S. 181. 
 
 The drawings cannot be used, even on an appUcation for a reissue, much 
 less on a disclaimer, to change the patent and make it embrace a different 
 invention from that described in the specification. — Hailes v, Albany, 123 
 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 262. 
 
 Parker v. Yale, 123 U. S. 87. 
 
 General rule followed. — Dryfoos v. Wiese, 124 U. S. 32; 31 L. Ed. 362; 
 8 S. Ct. 354. 
 
 The general rules of recent cases followed. — Yale v. James, 125 U. S. 447; 
 31 L. Ed. 807; 8 S. Ct. 967. 
 
 Miller V Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Parker 
 V. Yale, 123 U. S. 87; Matthews v. Iron, 123 U. S. 347; Swain v. Ladd, 102 U. S. 
 408. 
 
 When it does not appear that any attempt has been made to secure by the 
 original patent the inventions covered by the new claims in the reissue, 
 those inventions must be regarded as having been abandoned or waived, 
 so far as the reissue was concerned. — Hoskin v. Fisher, 125 U. S. 217; 31 
 L. Ed. 759; 8 S. Ct. 834. 
 
 Parker v. Yale, 123 U. S. 87. 
 
 The enlargement of the claims in the reissue, so as to embrace machines 
 not containing that feature, is void. — Farmer's v. Challenge, 128 U. S. 506; 
 32L. Ed. 529; 9 S. Ct. 146. 
 
 It is well settled that a reissue can only be granted for the same invention 
 intended to be embraced in the original patent; and the specification 
 cannot be substantially changed, either by the addition of new matter or the 
 omission of important particulars, so as to enlarge the invention as intended 
 to be originally claimed. — Pattee v. Kingman, 129 U. S. 294; 32 L. Ed. 
 700; 9 S. Ct. 389. 
 
 Where it appears that the original specification was not defective or 
 insufficient and that the patent was not inoperative; and where it was 
 apparent that the sole object of the reissue was to obtain an enlarged claim; 
 and where the subject-matter of the renewal had been adjudicated in the 
 Patent Office on the original application and the applicant had acquiesced 
 in such adverse action by the Department, the effect of such an abandonment 
 of a claim upon the validity of a reissue has been often adjudged by this court 
 as fatal. -Yale v. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 &. Ct. 884. 
 
 Leeo-ett v Averv 101 U S 256; Mahn v. Harwood, 112 U. S. 354; Union v. 
 U. S 112 U. S. 624; Shepard v. Carrigan, 116 U. S. 593; Roemer v. Peddie, 132 
 U. S. 313.
 
 796 THE FIXED LAW OF PATENTS § 871 
 
 A reissue is an amendment and cannot be allowed unless the imperfections 
 in the original patent arose without fraud, and from inadvertence, accident or 
 mistake. R. S. 4916. Hence the reissue cannot be permitted to enlarge the 
 claims of the original patent by including matter once intentionally omitted. 
 Acquiescence in the rejection of a claim, its withdrawal by amendment, 
 either to save the application or to escape interference, the acceptance of a 
 patent containing Hmitations imposed by the Patent Office, which narrow 
 the scope of the invention as at first described and claimed — an instance of 
 such omission. — Dobson v. Lees, 137 U. S. 258; 34 L. Ed. 652; 11 S. Ct. 71. 
 
 Union v U. S. 112 U. S. 624; Shepard v. Carrigan, 116 U. S. 593; Roemer v, 
 Peddie, 132 U. S. 313; Yale v. Berkshire, 135 U. S. 342. 
 
 The applicant having withdrawn a similar claim in his original applica- 
 tion in order to obtain his original patent, and the present claim being for a 
 different invention from that covered by the original patent, it is void. — 
 Dobson V. Lees, 137 U. S. 258; 34 L. Ed. 652; 11 S. Ct. 71. 
 
 Giant v. California, 98 U. S. 126; Leggett v. Avery, 101 U. S. 256; Swain v. 
 Ladd, 102 U. S. 408; Goodyear v. Davis, 102 U. S. 122. 
 
 Where only a single magnet and a single armature were shown, applicant 
 cannot pluralize these terms in an amended claim. — Electric v. Boston, 
 139 U. S. 481 ; 35 L. Ed. 250; 11 S. Ct. 586. 
 
 A reissue where the claims are extended to cover new matter is invalid 
 regardless of the promptness in applying for the reissue. — Freeman v. 
 Asmus, 145 U. S. 226; 36 L. Ed. 685; 12 S. Ct. 821. 
 
 Mahn v. Harwood, 112 U. S. 354; Cooni;. Wilson, 113 U. S. 268; Ives v. Sargent, 
 119 U. S. 652; Parker v. Yale, 123 U. S. 87; Matthews v. Ironclad, 124 U. S. 347; 
 Hoskin V. Fisher, 125 U. S. 217; Flower v. Detroit, 127 U. S. 563; Yale v. Berk- 
 shire, 135 U. S. 342; Electric v. Boston, 139 U. S. 481; Tophff v. Tophff, 145 
 U. S. 156. 
 
 Unless a clear mistake had been made in the wording of the claim, a reissue 
 cannot be had merely to enlarge the claim. — Huber v. Nelson, 148 U. S. 
 270; 37 L. Ed. 447; 13 S. Ct. 603. 
 
 Miller v. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Coon v. 
 Wilson, 113 U. S. 268; Burr v. Duryee, 68 U. S. 531; GiU v. Wells, 89 U. S. 22. 
 
 Expansion of claim to embrace invention not specified in original patent 
 renders claim invalid. — Leggett v. Standard, 149 U. S. 287; 31 L. Ed. 737; 
 13 S. Ct. 902. 
 
 Miller v. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Wollen- 
 sak V. Reiher, 115 U. S. 96. 
 
 Applicant having withdrawn rejected claims and substituted narrow 
 claims cannot insist on construction of reissue claim to cover original claim. 
 — Corbin v. Eagle, 150 U. S. 38; 37 L. Ed. 989; 14 S. Ct. 28. 
 
 Shepard v. Carrigan, 116 U. S. 593; Roemer v. Peddie, 132 U. S. 313; Royer 
 V. Coupe, 146 U. S. 524. 
 
 Patent Office having rejected a claim and rejection acquiesced in, applicant 
 estopped to claim such construction. — Morgan v. Albany, 152 U. S. 425; 
 38 L. Ed. 500; 14 S. Ct. 627. 
 
 Leggett V. Avery, 101 U. S. 256; Shepard v. Carrigan, 116 U. S. 593: Crawford 
 V. Heysinger, 123 U. S. 589; Union Cartridge Co. v. U. S. 112 U. S. 624. 
 
 Rule of Miller v. Brass Co. 104 U. S. 350 applied. — Dunham v. Dermison, 
 154 U. S. 103: 38 L. Ed. 924; 14 S. Ct. 986.
 
 5 871 REISSUES 797 
 
 MUler (.-. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Topliff 
 V. Topliff, 145 U. S. 156; Huber v. Nelson, 148 U. S. 270; Leggett v. Standard, 
 149 U. S. 287; Corbin v. Eagle, 150 U. S. 38. 
 
 Where in the reissue the construction is made alternative by employing 
 the word " preferably " to cover structures in use, such alternative broadens 
 the claims based thereon and defeats the patent. — Olin v. Timken, 155 
 U. S. 141 ; 39 L. Ed. 100; 15 S. Ct. 49. 
 
 Huber v. IJelson, 148 U. S. 270. 
 
 Had the plaintiff, in his reissue, confined himself to the correction of an 
 error so manifest, we should have found little difficulty in sustaining it; 
 but in his application, which was made four years after the original patent, he 
 makes no claim that his patent " was inoperative or invalid, by reason of a 
 defective or insufficient specification," or b}^ reason of his having claimed 
 " more than he had a right to claim as new," or that any error had arisen, 
 " by inadvertence, accident or mistake," without which the commissioner 
 has no right to grant a reissue, but simply prays that he may be allowed to 
 surrender his original patent, and that, " letters patent may be reissued 
 to him for the same invention, upon the annexed amended specification." 
 He makes no reference at all to the obvious mistakes in his first claim, and 
 although the point is not distinctly made in the briefs, we think it a serious 
 question, whether the commissioner of patents had any jurisdiction under 
 R. S. 4916 to consider the application upon the bare statement that the 
 patentee desired to surrender his patent and obtain a reissue. — Eby v. 
 King, 158 U. S. 366; 39 L. Ed. 1018; 15 S. Ct. 972. 
 
 By removing the limitation of the thickness of the material, contained in 
 the original, the claim was broadened so as to void the patent. — American 
 V. Johnston, 52 Fed. 228; 3 C. C. A. 53. 
 
 It must appear by the description in the original patent that it was the 
 purpose of the patentee to secure the thing specified in the claim of the 
 reissue, and a patent cannot be lawfully reissued unless there has been a 
 clear mistake, inadvertentlv committed, in the wording of the claim. — 
 Featherstone v. Bidwell, 57 Fed. 631 ; 6 C. C. A. 487. 
 
 Parker v. Yale, 123 U. S. 99; Hoskin v. Fisher, 125 U. S. 223; Flower v. De- 
 troit, 127 U. S. 571; Mahn v. Harwood, 112 U. S. 354; Plow v. I^ingman, 129 
 U. S. 299. 
 
 While in this case it is true, that the fifth claim contains four elements, 
 while its predecessor contained but three, and therefore it is, in a certain 
 sense, a narrower claim, that statement contains but half a truth. The 
 remaining half is that the new claim is for a different and previously un-. 
 recognized invention. The patent had been in existence and under repeated 
 examination for nine years, and individuals and the public had acquired 
 adverse interests, which would be destroyed by a reconstruction of a void 
 claim. — Carpenter v. Searle, 60 Fed. 82; 8 C. C. A. 476. 
 
 Parker v. Yale, 132 U. S. 87. 
 
 This case is thought to mark a new departure by the Supreme Court in 
 the line of strict construction of the right of reissue. It must be interpreted 
 in the light of the special circumstances which gave rise to it, of the evils that 
 had grown up under the loose practice theretofore prevailing, and the remedy 
 required in the interest of the public. The evil to be corrected was this: 
 unscrupulous speculators, watching the development of successful inven- 
 tions, could, m searching the records of prior inventions, find one which might
 
 798 THE FIXED LAW OF PATENTS § 872 
 
 embody the same principles, and, availing themselves of the opportunity, 
 given by the reissue law, embody in the older patent claims which it might 
 have had but did not, and the result would be that the owner of the later 
 patent, who had spent time and money in the development of a profitable 
 business, would be confronted with a patent earlier in date than his, but 
 reissued later, which would completely control his business. This evil cer- 
 tainly demanded correction. Again there was a presumption — and generally 
 it was a fact — that what was not claimed was not invented by the patentee 
 and the public had the right to use what was not claimed, either because it 
 had not been invented by the patentee, or because by his own act he had made 
 it public property, if it was not so before. — Crown v. Aluminum, 108 Fed. 
 845; 48 C. C. A. 72. 
 
 The introduction in a reissued patent of claims for inventions which are 
 described, but which the patentee neither claimed nor intended to claim by 
 the original patent, is unauthorized by the acts of congress, and such claims 
 are void. — Ide v. Trorlicht, 115 Fed. 137; 53 C. C. A. 341. 
 
 Topliff V. Topliff, 145 U. S. 156; Hubel v. Dick, 28 Fed. 132; Carpenter v. 
 Searle, 60 Fed. 82. 
 
 It does not appear from the original specification that the patentee had 
 any idea of any novel means for obviating the self-induction resistance of 
 alternating currents. The claims in suit of the reissue cannot be sustained, 
 because the description in the original patent fails to show that the invention 
 covered by said claims was intended to be secured in the original patent. — 
 Weston V. Stevens, 134 Fed. 574; 67 C. C. A. 374. 
 
 Walker on Pat. sec. 233; Hoskin v. Fisher, 125 U. S. 217; Pattee v. Kingman, 
 129 U. S. 294; Featherstone v. BidweU, 57 Fed. 631. 
 
 A different doctrine (from that requiring prompt action for reissue upon 
 defect discovered) would go far to defeat the object of the rule which vo- 
 quires the patentee to define his invention with such distinctness that 
 other inventors, and the public as well, may know its scope and limhations. 
 And it is not alone these persons who are shown to have taken action upon 
 the faith that the patent defines the character of the invention who may 
 raise the objection to a change in its claims which makes it cover other 
 ground than that claimed before. The rule does not rest upon the ground 
 of an estoppel in favor of particular persons. — Milloy v. Thomson-Houston, 
 148 Fed. 843; 78 C. C. A. 533. 
 
 White V. Dunbar, 119 U. S. 47; Walker on Pat. sec. 226. 
 
 § 872. Broadening — Not Permissible — Omitting Elements. 
 
 The complainants have split up and divided the elements of their invention 
 and claimed them separately- and not in combination. Of course this en- 
 larges the scope of their patent. The separate claims embrace fewer elements 
 in combination than were embraced in the claim of the original patent. No 
 one could infringe the original patent unless he used all the elements of the 
 combination. Anyone will infringe the reissue who uses any of those elements 
 which are now separately claimed. — Matthews v. Boston, 105 U. S. 54; 
 26 L. Ed. 1022. 
 
 The reissue was granted 13 years and 8 months after the date of the 
 original patent. The new claim covered only five of the original seven ele- 
 ments. Held, invalid. — Gage v. Herring, 107 U. S. 640; 27 L. Ed. 601; 
 2 S. Ct. 819. 
 
 Prouty t) Ruggles, 16 Pet. 336; Vance v. Campbell, 1 Black. 427; Gould v. 
 Kees, 15 WaU. 187; Miller v. Brass Co. 104 U. S. 350; James v. CampbeU, 104
 
 § 873 REISSUES "^99 
 
 TT c! -iKa. Hpald v Rice 104 U S. 737; Matthews v. Machine, 105 U. S. 54; 
 EantzfrrS 105 US 160; Johnson .. R. R. 105 U. S. 539; Moffitt .. 
 Rogers, 106 U. S. 423. 
 
 If the effect of omitting the words in question is to extend the claim, the 
 claim is enlarged by omitting an essential element of ^^e patentee s inven- 
 tion and the reissue is invalid. — Matthews v. Ironclad, 124 U. b. ^4/ ; 61 
 L. Ed. 477 ; 8 S. Ct. 639. 
 
 Miller t' Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Parker 
 V. Yale, 123 U. S. 87. 
 
 The original patent and the first reissue having been distinctly hmited to 
 a construction shown, the second reissue, obtained nearly seven years later, 
 omitting such element specifically claimed, is an inwarrantable enlargement. 
 -Cornell v. Weidner, 127 U. S. 261; 32 L. Ed. 148; 8 S. Ct. 1152. 
 
 Yale V. James, 125 U. S. 447. 
 
 When every element of the combination claimed in the original patent is 
 thereby made material to such combination a reissue omitting one of such 
 elements is for a different combination and void. - Huber v. Nelson, 148 
 U S. 270; 37 L. Ed. 447; 13 S. Ct. 603. 
 
 Proiitvi; Ru--les 41 U S. 336; Brooks i;. Fiske, 56 U. S. 212; Burr i^. Duryee 
 68 US.^;- ieclendorfer .. Faber, 92 U. S. 347; Gas Light Co. -Boston 139 
 TT ^ 4S1 • Tonliff v Topliff, 145 U. S. 156; Fuller v. Yentzer, 94 U. S,^ 288, 
 Lfway iio.^rsfyli, 9?U. S. 554; Meter Co. . D-per 101 U. S^332; Eames 
 
 ?87^t[u^J Wells y§= S'T;^ ^^"'0^1 CaL^n^a, ^'^i:S^i^ 
 iJeVv lOlU S 256; J^^^^^ U. S. 356; Coon ..Wilson, 113 
 
 U. S. 268; Parker v. Yale, 123 U. S. 87. 
 
 The reissue was saved from the fata of the original because its clainis have 
 but four elements whereas the claims of the original were construed to have 
 five We cannot now read into the claims the very element he ornission 
 of which gave them vitality. If these claims are construed to delude a 
 ^enlion device they are void for double patenting; if construed as containing 
 but four elements; it is obvious that they are broader than the c aims of the 
 original. -Thomson-Houston v. Western, 158 Fed. 813 (2d case), 86 C. 
 C. A. 73. 
 
 § 873. Broadening — When Permissible. 
 
 It is the right of the patentee and his representatives to enlarge or restrict 
 the claim so as to give it validity and secure the mvention. - Rubber v. 
 Goodyear, 76 U. S. 788; 19 L. Ed. 566. 
 
 Battin v. Taggart, 17 How. 84. 
 
 The general rules are (1) That the reissue cannot cover another invention 
 than that of the original; (2) That the reissue cannot recover what was 
 described but not claimed after long delay; (3) That while a reissue claim 
 maj be enlarged it can be done only when actual mistake has occurred and 
 Sen only without delay; (4) That in reissues for ^n arging the scope of a 
 patent the rule of laches should be rigidly applied; (5) That the general 
 purpose of the statute providing for reissueswas to correct mistakes and errors 
 ?n7not to enable the inventor from time to t me to extend his monopoly 
 so as to cover progress by others in his art. - Miller v. Brass Co. 104 U. b. 
 350; 26 L. Ed. 783. 
 
 If the amended specification does not enlarge the scope of the patent by 
 extending the claim so as to cover more than was embraced in the original,
 
 800 THE FIXED LAW OF PATENTS § 873 
 
 and thus cause the patent to include an invention not in the original, the 
 rights of the public are not thereby narrowed, and the case is within the 
 remedy intended by the statute. Those cases in which this court has held 
 reissues to be invalid were of a different character, and were cases where 
 by the reissued patent the scope of the original was so enlarged as to cover 
 and claim as a new invention that which was either not in the original 
 specification, as part of the invention described, or if described, was, by not 
 being claimed, virtually abandoned, and dedicated to public use. — Eames 
 V. Andrews, 122 U. S. 40; 30 L. Ed. 1064; 7 S. Ct. 1073. 
 
 Distinguishing, Russell i;. Dodge, 93 U. S. 460; Morey v. Lockwood, 74 U. S. 230. 
 
 To warrant new and broader claims, such claims must not be merely 
 suggested or indicated in original specification, drawings or model, but it 
 must appear that they were constituent parts of the invention sought to be 
 covered. 
 
 Nor is the applicant allowed to incorporate in his reissue claims embracing 
 what has been rejected. — Corbin v. Eagle, 150 U. S. 38; 37 L. Ed. 989; 
 14 S. Ct. 28. 
 
 Bantz V. Frantz, 105 U. S. 160; Heald v. Rice, 104 U. S. 737; Miller v. Brass 
 Co. 104 U. S. 350; James v. Campbell, 104 U. S. 356; TopUff v. Topliff, 145 U. S. 
 156. 
 
 The Supreme Court of the United States has held that while this section 
 (4916) liberally construed, would only authorize reissue to correct specifica- 
 tions or claims defective or inoperative because too broad, it would construe 
 the section liberally to give the commissioner of patents power to grant a 
 reissue to expand claims which had been made too narrow .by reason of 
 accident, inadvertence or mistake, without fraud. But it has been held in 
 a number of cases that the commissioner is without power to grant a reissue 
 unless it shall clearly appear that the patent, as originally issued, was de- 
 fective and inoperative for the invention intended; that this defect and 
 inoperativeness arose through inadvertence and mistake; and, finally, that 
 the patentee had not by lapse of time and laches, abandoned his right to 
 have the correction made. — Peoria v. Cleveland, 58 Fed. 227; 7 C. C. A. 
 197. 
 
 A claim which made that which was no part of the invention one of its 
 elements, and consequently essential to its infringement, was therefore 
 clearly defective, which defect was properly cured by omitting the proper 
 element from the reissue. — Gaskill v. Myers, 81 Fed. 854; 26 C. C. A. 642. 
 
 Where there has been an expansion of the patent to describe inventions 
 substantially different from the original, covering nebulous combinations 
 not exhibited therein, and where there has been protracted and unreasonable 
 delay in face of the manufacture of articles not substantially covered by 
 the original invention, the reissue has been held void; but the courts, recog- 
 nizing the fact that the ordinary inventor is not usually skilled in technical 
 rules of construction, and is apt to suppose that his claims protect him in 
 the essential elements mentioned in them, and that these claims and specifi- 
 cations are usually drawn by men who are strangers to and ignorant of the 
 art within which they lie,, and that even skilled solicitors are not infallible 
 in framing technical documents, have sanctioned reissues which permit the 
 framing of claims adequate to secure the full benefits of the inventions 
 designed to be protected by the patent laws. — Crown v. Aluminum, 108 
 Fed. 845; 48 C. C. A. 72. 
 ■ Grant v. Raymond, 6 Pet. 243.
 
 § 874 REISSUES 801 
 
 This case (Miller v. Brass Co. 104 U. S. 350) did not deny that a claim 
 might be enlarged, in a reissued patent, but held that there must be a bona 
 fide mistake, and that there must not be unreasonable delay; any con- 
 siderable lapse of time affording opportunities and temptations to commit 
 fraud. — Crown v. Aluminum, 108 Fed. 845; 48 C. C. A. 72. 
 
 The somewhat recent case of Topliff v. Topliff, 145 U. S. 56, stated that the 
 power to reissue may be exercised when the patent is inoperative, because 
 the claims were narrower than the actual invention, provided the error arose 
 from inadvertence or mistake. The right, however, is subject to certain 
 limitations, and among them that the reissue shall be for the same invention, 
 as it appears from the specification and claims, and that there must be rea- 
 sonable diligence in moving. It is also stated as something to be regarded 
 as settled by the Supreme Court that the court will not review the decision 
 of the Commissioner of Patents upon the question of inadvertence, accident 
 or mistake, unless the matter is manifest from the record. The application 
 was made in a little over four months, which ordinarily would be accepted 
 as not an unreasonable time, provided public rights had not intervened. 
 The specification of the original patent, when read in connection with the 
 cuts, manifestly shows that the patentee intended a broader invention than 
 that stated in the claims. — Houghton v. Whitin, 153 Fed. 740; 83 C. C. 
 A. 84. 
 
 § 874. Broadening — Miscellaneous Rules. 
 
 It would seem, under the old rule and former statute the question of con- 
 struction of a reissue, whether for the same invention, was one of fact for the 
 jury. — Battin v. Taggart, 58 U. S. 77; 15 L. Ed. 37. 
 
 When challenged in a court of justice as too broad, the words " substan- 
 tially as herein described " may be resorted to as qualifying the claim. — 
 Burr V. Duryee, 68 U. S. 531 ; 17 L. Ed. 750. 
 
 Parol testimony is not admissible in an application for a reissue to enlarge 
 the scope or effect beyond what was described, suggested or substantially 
 indicated in the original. — Union v. Vandeusen, 90 U. S. 530; 23 L. Ed. 
 128. 
 
 • 
 
 The fact that the patentee has not been able to establish royalties on his 
 original patent, and after four years obtained a reissue with broader claims 
 which did not enable him to establish such royalties does not take the case 
 outside the rule of reissue patents. — Eby v. King, 158 U. S. 366; 39 L. Ed. 
 1018; 15 S. Ct. 972. 
 
 White V. Dunbar, 119 U. S. 47; Ives v. Sargent, 119 U. S. 652; Dunham v. 
 Dennison, 154 U. S. 103. 
 
 The drawings and descriptions of the two patents are identical, as are all 
 the original four claims, except the first, which, in the reissue, is broadened. 
 The scope of the original patent is further broadened by the addition of seven 
 new claims in the reissue. The bill alleges infringement of all the claims of 
 the reissue patent, and the demurrer attacks the validity of the reissued 
 patent as a whole. W^e are of opinion that the validity of the claims in the 
 reissue which were identical with those of the original patent are not affected 
 thereby. — Rawson v. Hunt, 147 Fed. 239; 77 C. C. A. 381. 
 
 Walker on Pat. sects. 201, 249; Gage v. Herring, 107 U. S. 640; Yale v. Sar- 
 gent, 117 U. S. 536; Leggett v. Standard, 149 U. S. 287; International v. Maurer, 
 44 Fed. 618.
 
 802 THE FIXED LAW OF PATENTS §§ 875-876 
 
 § 875. Delay — Excusable. 
 
 The decision of the Patent Office upon the question of delay in applying 
 for a reissue is not final. — Hoskin v. Fisher, 125 U. S. 217; 31 L. Ed. 759; 
 8 S. Ct. 834. 
 
 WoUensak v. Reiher, 115 U. S. 96. 
 
 The fact that reissue was applied for only 13 days after the grant of the 
 original patent does not establish its validity, as held in Coon v. Wilson, 
 113 U. S. 268. — Yale v. Berkshire, 135 U. S. 342; 34 L. Ed. 168; 10 S. Ct. 
 884. 
 
 Ives V. Sargent, 119 U. S. 652; Parker v. Yale, 123 U. S. 87. 
 
 The part of a sentence which is added in the statement of the object of an 
 invention, states nothing which was not previously obvious. The narrowed 
 and truthful reissue is, therefore, unobjectionable except that it was belated; 
 and upon the point of laches in obtaining a reissue, the Federal courts are 
 now sensitive. Delay in this regard is obnoxious, because, as a rule, individ- 
 uals and the public have acquired, during such delay, " adverse equities 
 which would be destroyed by a re-construction of a void claim." In this case, 
 the adverse interests, whatever they are, arose after the termination of the 
 Gibson litigation, and as soon as they came into being, they were warned by 
 the reissue of the existence of a patent which covered the attempted infringe- 
 ment. This reissue cannot be declared void by reason of the lapse of time 
 after the original was issued, without establishing a new rule of law upon the 
 subject of reissued patents. — Maitland v. Goetz, 86 Fed. 124; 29 C. C. A. 
 607. 
 
 In this class of cases there should not be applied a stricter rule of diligence 
 than that applied by statute in case of public use before application for the 
 patent, even if so strict a limitation as that is applicable. — Crown v. Alumi- 
 num, 108 Fed. 845; 48 C C. A. 72. 
 
 § 876. Delay — Fatal. 
 
 The patent on its face is notice of defects therein; and unreasonable 
 delay will render the reissue void. — WoUensak v. Reiher, 115 U. S. 96; 
 29 L. Ed. 350; 5 S. Ct. 1137. 
 
 Miller v. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354. 
 
 The application for the reissue was made nearly eleven years after the 
 original patent was granted, and after machines effecting the shifting by other 
 means had gone into use subsequently to the date of the original patent, and 
 no sufficient excuse is given for the laches and delay. — Brown v. Davis, 1 16 
 U. S. 237; 29 L. Ed. 659; 6 S. Ct. 379. 
 
 The Washington solicitor failed to claim the vital point of the invention 
 although it had been distinctly stated to him in writing. (As a certain class 
 of patent solicitors are liable to do.) The omission was plain and might have 
 been discovered by a single reading of the patent. Held, that after three 
 years and after the event of infringement the conduct of the Washington 
 solicitor as an excuse for the fact and their confidence in him as an excuse 
 for the delay in applying for the reissue was insufficient. — Ives v. Sargent, 
 119 U. S. 652; 30 L. Ed. 544; 7 S. Ct. 436. 
 
 The reissue was taken out seven years after the original patent, and a year 
 or two after the patentee knew that the defendant was making such an
 
 § 876 REISSUES 803 
 
 article as is now alleged to be infringed cannot avail complainant. — Mat- 
 thews V. Ironclad, 124 U. S. 347; 31 L. Ed. 477; 8 S. Ct. 639. 
 
 Unexplained delay in applying for a reissue is fatal to its claims. — Electric 
 V. Boston, 139 U. S. 481; 35 L. Ed. 250; 11 S. Ct. 586. 
 
 Miller v. Brass Co. 104 U. S. 350; Clements v. Odorless, 109 U. S. 641; Mahn v. 
 Harwood, 112 U. S. 354; WoUensak v. Reiher, 115 U. S. 96; Ives v. Sargent, 
 119 U. S. 652; HoskiB v. Fisher, 125 U. S. 217. 
 
 While it was ruled in Railway v. Sayles, 97 U. S. 563 ; Clements v. Odorless, 
 109 U. S. 649, and Electric v. Boston, 139 U. S. 502, that in cases of reissue 
 and enlargement of the claims could not avail against patents granted, or 
 articles made and sold, between the time of the original application and the 
 time of the final granting of the reissued patent, it does not cover a case of 
 reissue where there were new or different claims or any substantial departure 
 from the claims first made. — Hillborn v. Hale, 69 Fed. 958; 16 C. C. A. 569. 
 
 Every one is constructively bound with notice of the issue of a patent, and, 
 if actual notice of the original issue is to be regarded as binding the possessor 
 of that knowledge with notice of all possibilities of reissue, consistency 
 requires that the same effect be allowed to that constructive notice which all 
 are bound to take of the issue of a patent; and, this being so, there can be no 
 protection for intervenors in an act against a subsequent reissue of a patent, 
 except by license or by conditions which amount to an equitable estoppel. 
 No such meaning is expressed in, or can be fairly implied from the opinion in 
 Gaskill V. Myers. — American v. Swietusch, 85 Fed. 968; 26 C. C. A. 506. 
 
 The original patent was granted April 11, 1893. The application for the 
 reissue was filed Sept. 28, 1900. In the meantime various persons had been 
 acting upon the supposed invalidity of the patent, which was declared invalid 
 by the Circuit Court of Appeals for the Second Circuit in July, 1897. As 
 early as 1895 the attention of the patentee was directly challenged to the 
 specifications of the patent, and they were elaborately canvassed. If any 
 error had been committed in the language employed or in claiming more than 
 was new, it was discoverable then as it ever became, unless, indeed, a patentee 
 has the right to await results which the courts may reach after prolonged 
 litigation and examination of the subject. We cannot think that a patentee 
 may thus experiment with his patent. On the contrary, we think that, when 
 the grounds are disclosed for thinking there may be an error or mistake, he 
 is bound in duty to the public to correct it by obtaining a reissue or to adhere 
 to his original patent; and, if he declines to correct it, he should be deemed 
 to be standing upon it as the measure of his right. — Milloy v. Thomson- 
 Houston, 148 Fed. 843; 78 C. C. A. 533. 
 
 Section 4916 of the Revised Statutes authorizes a reissue (quoting the 
 words of the statute). But it has been held, on grounds of public policy, 
 that this right must be promptly exercised upon the discovery of the error. — 
 Milloy V. Thomson-Houston, 148 Fed. 843; 78 C. C. A. 533. 
 
 Miller v. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; White 7-. 
 Dunbar, 119 U. S. 47; Ives v. Sargent, 119 U. S. 652; Parker v. Yale, 123 U. S. 
 87; Dobson v. Lees, 137 U. S. 258; Wollensak v. Sargent, 151 U. S. 221; Walker 
 on Pat. sec. 227. 
 
 That where the necessity for applying for a reissue became apparent from 
 a decision of the circuit court of appeals on an appeal from an interlocutory 
 decree granting an injunction, and the complainant waited for over three 
 years until the question could be decided upon appeal from a final decree.
 
 804 THE FIXED LAW OF PATENTS § 877 
 
 Held: We think the decree in question was, in everything but name, a final 
 decree. The complainant could not have received a more definite or final 
 information regarding the invalidity of the claims. If such reasons for delay 
 as are now advanced are to be sanctioned, the rights of the public will be 
 seriously jeoparded and the door opened to excuses limited only by the in- 
 genuity of counsel. — Thomson-Houston v. Western, 158 Fed. 813 (2d case); 
 86 C. C. A. 73. 
 
 § 877. Delay — General Rules. 
 
 The reissue was not applied for until nearly five years after the date of 
 the original patent and not until another inventor had made a substantial 
 advance in the art which was sought to be covered by the reissue. — Torrent 
 V. Rodgers, 112 U. S. 659; 28 L. Ed. 842; 5 S. Ct. 501. 
 
 Gill V Wells, 22 Wall. 1; Wood Paper Pat. 23 Wall. 568; Powder v. Powder, 
 98 U S 126; Ball v. Langles, 102 U. S. 128; James v. Campbell, 104 U. S. .356; 
 Heald v Rice, 104 U. S. 737; Miller v. Brass Co. 104 U. S. 350; Johnson v. R. R. 
 105 U S 539; Bantz v. Frantz, 105 U. S. 160; Wing v. Anthony, 106 U. S. 142; 
 Clements v. Odorless, 109 U. S. 641; McMurray v. Mallory, 111 U. S. 97; Malm v. 
 Harwood, 112 U. S. 354. 
 
 A patent cannot lawfully be reissued for the mere purpose of enlarging the 
 claim unless there has been a clear mistake inadvertently committed in 
 the wording of the claim and the application for a reissue is sued within a 
 reasonably short time. The granting of such reissues after the lapse of long 
 periods of time is an abuse of the power and is founded on a total miscon- 
 ception of the law. The rights of the public here intervene, which are totally 
 inconsistent with such tardy reissues, and the great opportunity and tempta- 
 tion to commit fraud after any considerable lapse of time, when the circum- 
 stances of the original application have passed out of mind, and the monopoly 
 has proved to be of great value, make it imperative on the courts, as a dictate 
 of justice and public policy, to hold the patentees strictly to the rule of rea- 
 sonable diligence in making applications for this kind of reissues. 
 
 No precise limit of time can be fixed and laid dowB for all cases. The 
 courts will always exercise a proper liberality in favor of the patentee. But 
 in any case by such delay as the court may deem unnecessary and unreason- 
 able, the right to a reissue will be regarded as having been abandoned and 
 lost. In Miller v. Brass Co. by analogy to the law of public use before an 
 application for a patent, we suggested that a delay of two years should be 
 construed equally favorable to the public. But this was a mere suggestion 
 by the way and was not intended to lay down any general rule. • — Mahn v. 
 Harwood, 112 U. S. 354; 28 L. Ed. 665; 5 S. Ct. 174; 6 S. Ct. 451. 
 
 Where the reissue is for the purpose of expanding the claims, and a delay 
 of two years or more has taken place, which is unexplained, the question of 
 laches is a question of law arising on the face of the bill, which avails as a 
 defense, upon a general demurrer, for want of novelty. — WoUensak v. 
 Reiher, 115 U. S. 96; 29 L. Ed. -350; 5 S. Ct. 1137. 
 
 When the reissue expands the claims, a delay of two years or more in- 
 validates the reissue. — Wollensak v. Reiher, 115 U. S. 96; 29 L. Ed. 350; 
 5 S. Ct. 1137. 
 
 While no general rule can be laid down, an unexcused delay of two years, 
 by analogy to the law of public use, will defeat a reissue. — Ives v. Sargent, 
 119 U. S. 6.52; 30 L. Ed. 544; 7 S. Ct. 436. 
 
 WoUensak v. Reiher, 115 U. S. 96; Mahn v. Harwood, 112 U. S. 354.
 
 5 877 REISSUES 805 
 
 When there is delay of two years or more in applying for a reissue the delay 
 unless excused, invalidates the reissue. — Hoskni v. Fisher, 125 U. b. 2U , 
 31 L. Ed. 759; 8 S. Ct. 834. 
 
 WoUensak v. Reiher, 115 U. S. 96. 
 
 The two year rule explained and modified. — Topliff v. TopUff, 145 U. S. 
 156; 36 L. Ed. 658; 12 S. Ct. 825. 
 
 MiUer V. Brass Co. 104 U. S. 350; Johnson v. Flushing 105 US 539; Ma to 
 V Harwood, 112 U. S. 354; Matthews v. Boston 105 U. b 54, Bantz t J^rantz 
 i^f fT a ifin Winer „ Anthonv 106 U S. 142; Moffitt v. Rogers, 106 U. S. 423, 
 Gage^. VeSn^lOT U^ eTo!' ttments .. Odorless 109 US 641; McMurray 
 ^ MaUorT Til U. S. 97; White v. Dmibar, 119 U. S. 47; Parker r. \ale 123 
 TT q 87 Coon ^ Wilson, 113 U. S. 268; WoUensak v. Reiher llo U^ &. 96, 
 S,- ; • ' R^^tnn l^QTT S 481- Newton^ Furst, 119 U. S. 373; Ives v. Sargent, 
 m u! S"6!2f WoJin^. Searies, m U. s! 14; Matthews .. Iron, 124 U. S. 347. 
 
 It is declared to be settled that while no invariable rule can be laid down, 
 a delay of two years by analogy to the law of public use should be constmed 
 equally favorably to the pubhc. - WoUensak v. Sargent, 151 U. S. 221, 
 38 L Ed 137; 14 S. Ct. 291. 
 
 Ives V Sargent, 119 U. S. 652; WoUensak v. Reiher, 115 U. S. 96; Mahn v. 
 Harwood, 112 U. S. 354. 
 
 It is fair to presume, therefore, that the reissued patent was applied for 
 and obtSned because (he patentee himself beUeved that the claims o his 
 original patent when fairly construed in connection with other parts of the 
 Scafion couW not be made to embrace the new form of pump, with a 
 crarXr Dated above the cylinder, which had recently come into use, and 
 tSt was necessary to alter certain parts of the origmal specification, and 
 to re asT the original claims, to bring the new pump withm the terms of his 
 oatent If this was not the opinion of the patentee, or of those who acted as 
 Ms advisers when the reissued patent was taken out, then we fail to see 
 wLfwas the purpose which induced the application for the reissue. It is 
 r se fivfdent proposition that the invention related to a simple struc ure 
 thft it was clearly described in the original patent, as issued, was neither 
 noperative nor .walid by reason of any defect or insufficiency of the speci- 
 TaUof but undoubtedly secured to the patentee the exclusive n^ht to manu- 
 facture'the kind of pump which he had described m his specification and 
 iCr'ted in his drLink In short, if ther^ ^s a sub^tan^^^^^^ defect^ 
 the ori^-inal specification, it consisted in the fact that it T\as not so arawri 
 a to br ^^ wTtMn its claims another kind of pump that had come into use 
 u ZlrTi 7niL dite of the original patent, which the patent might have 
 ree"rade\o co;er,tthe^^^^^^^^^^^ had foreseen the later mode of construe- 
 to For these reao,s, and especially in view of the conduct of the patentee 
 in app yTng for a reissue when there was no occasion for such application 
 unS he intended to enlarge the scope of his patent, we concur in the 
 conclusion reached by the trial court touching the ^P^f^ruction of the 
 cSmso? the original Bean patent, and wejurther concur in the view that the 
 
 ^t^:^f^r^:^^^a::^tSZ:^^ of th. ..ms of the 
 
 -Sttn^^up^^»to^^^^^ 
 
 tViP nrio-inil claims have been enlarged in the reissue. Under some cir 
 the original .f '?^™^,^5;;' ''"^ „„ .u„t a patent may be reissued m such a form 
 cumstances it is ^0^^^^^^^/^"^ ^^r^Yheld repeatedly that, to warrant such
 
 806 THE FIXED LAW OF PATENTS §§878-880 
 
 accident or mistake, the patentee did not originally obtain all that he was 
 fairly entitled to. — Mast v. Iowa, 76 Fed. 816; 22 C. C. A. 586. 
 
 Miller v Brass Co 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Coon v. 
 Wilson, 113 U. S. 268; Parker v. Yale, 123 U. S. 87; Huber v. Mfg. Co. 148 U. S. 
 270; Peoria v. Cleveland, 58 Fed. 227. 
 
 § 878. Delay — Intervening Rights. 
 
 Where complainant delayed six months, and in the meantime the subject 
 of the reissue claims has gone into general use, such reissue is an attenapt to 
 cover what had come into general use by others, and is therefore void. — 
 Parker v. Yale, 123 U. S. 87; 31 L. Ed. 100; 8 S. Ct. 38. 
 
 Mahn v. Harwood, 112 U. S. 354; Coon v. Wilson, 113 U. S. 268; Ives v. Sargent, 
 119 U. S. 652. 
 
 We have here the case of an application for the reissue of a patent made 
 after an acquiescence of more than 12 years. The public had been freely 
 using the devices. Upon the facts disclosed by this record, it seems to us 
 that, even if the first claim of the reissue were otherwise sustainable, yet it 
 must be held to be invalid in view of the intervening private and public 
 rights which have sprung up, and the unreasonable delay in the application for 
 the reissue. — Horn v. Pelzer, 91 Fed. 665; 34 C. C. A. 45. 
 
 Miller v. Brass Co. 104 U. S. 350; Ives v. Sargent, 119 U. S. 652; Eby v. King, 
 158 U. S. 366; Hubel v. Dick, 28 Fed. 132; Peoria v. Cleveland, 58 Fed. 227; 
 Machine Co. v. Searles, 50 Fed. 82. 
 
 The case would be different if Painter had unreasonably delayed to assert 
 his rights to reissue after such notice was brought home to him, and where 
 his silence and inaction had misled other parties to their injury ; and the fact 
 that the original patent contained a statement of his invention which covered 
 the subject matter of the reissued claim, and that a reissue to fully secure the 
 invention disclosed was authorized by law, was sufficient notice that this 
 patent was subject to such right of reissue, which right was liable to be 
 exercised at any time at least within two years. — Crown v. Aluminum 108 
 Fed. 845; 48 C. C. A. 72. 
 
 § 879. Delay — Miscellaneous Rules. 
 
 The question whether the delay has been reasonable or unreasonable is 
 for the court to determine; and it cannot substitute the decision of the 
 patent office for its own. — WoUensak v. Reiher, 115 U. S. 96; 29 L. Ed. 
 350; 5 S. Ct. 1137. 
 
 The question of delay in applying for a reissue is a question of law for 
 the court. — Hoskin v. Fisher, 125 U. S. 217; 31 L. Ed. 759; 8 S. Ct. 834. 
 WoUensak v. Reiher, 115 U. S. 96. 
 
 § 880. Decisions of Commissioner. 
 
 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 
 patent, 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. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Rattin V. Tapgart, 17 How. 83; O'Reilly v. Morse, 15 How. Ill; Siekes v. 
 Evans, 2 Cliff. 222; Allen v. Blunt, 3 Story, 744.
 
 880 REISSUES 
 
 807 
 
 The action of the Commissioner is final except as to matters of legal 
 construction. — Union v. Vandeusen, 90 U. S. 530; 23 L. Ed. 128. 
 
 The action of the commissioner is final as to question of fraud. — Brown 
 V. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 The Commissioner of Patents has no jurisdiction to grant a reissue for any- 
 other or different invention than that of the original. — Ball v. Langles, 
 102 U. S. 128; 26 L. Ed. 104. 
 
 We think it is a serious question whether the Commissioner of Patents had 
 any jurisdiction, under R. S. 4916, to consider the application upon the bare 
 statement that the patentee desired to surrender his patent and obtain a. 
 reissue. The Commissioner is authorized to reissue patents in certain speci- 
 fied cases, and if the petition makes no pretense of setting forth facts entitling 
 the patentee to a reissue, it is exceedingly doubtful whether he obtain any 
 jurisdiction to act at aU. — Eby v. King, 158 U. S. 366; 39 L. Ed. 1018; 
 15 S. Ct. 972. 
 
 In the case under consideration the examiner acted upon the application 
 as if it were a new proceeding, and dealt with it as the evidence before him 
 seemed to warrant, but his action in rejecting some of the claims which had 
 been repeated from the original patent did not affect the patent. It is true 
 that it was within his power to reject any claims contained in the application 
 for a reissue which he judged to be invalid, whether contained in the original 
 patent or not. It is also true that the reasons given for the rejection of such 
 claims might apply equally to the same claims contained in the original 
 patent, but with respect to such claims he was functus officio. His opinion 
 thereon was but his personal opinion, and, however persuasive it might be, 
 did not oust the jurisdiction of any court to which the owner might apply 
 for an adjudication of his rights, and, as the examiner had no authority to 
 affect the claims of the original patent, no appeal was necessary from his 
 decision. — McCormick v. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 
 443. 
 
 If by reason of any inadvertence or mistake in the drawings or specifica- 
 tions a patent is rendered in part inoperative, and the patentee promptly 
 applies for a reissue and no substantial rights are affected, or fraudulent 
 intent charged, we think the commissioner has the right, under section 
 4916 R. S., to cause a new patent to issue, and that under the circumstances, 
 his decision is conclusive. We know of no authority in conflict with this 
 proposition. — Beach v. Hobbs, 92 Fed. 146; 36 C. C. A. 248. 
 
 It is said that the legal conclusion is closed in favor of the appellants, 
 because it must be presumed that before the reissue was issued, there was 
 before the Patent Office satisfactorv evidence that, but for the madvertence 
 or mistake, the original letters would have taken the form that the reissue now 
 employs. That some such presumption properly attaches itself to the reissue 
 patent we mav admit. At most, however, it is a prima facie presumption 
 only. It is not a presumption that debars appellant from challenging the 
 validity of the issue bv showing facts that would overcome the presumption. 
 The reissue is before us just as it was before the Patent Office before it was 
 allowed, except that while the burden of proof then was upon the appellants, 
 the burden is now upon the appellees. — Franklin v. Illinois, 138 Fed. 58; 
 70 C. C. A. 484.
 
 g08 THE FIXED LAW OF PATENTS §§881-883 
 
 § 88 1. Different Invention. 
 
 A patent issued for a process cannot be reissued for a machine. — Heald 
 V. Rice, 104 U. S. 737 ; 26 L. Ed. 910. 
 Powder v. Powder, 98 U. S. 134. 
 
 He entitled his original patent as for a new and useful machine, while 
 with equal explicitness, in his reissue, he declared that he had myented a 
 new and improved process. This is at least a prima facie departure from the 
 ori<^inal patent which would seem to be serious, if not fatal, under a law which 
 linTits the power of the Commissioner of Patents so as to issue a new patent 
 only for the same invention. — Eachus v. Broomall, 115 U. S. 429; 29 L. 
 Ed. 419; 6S. Ct. 229. 
 
 Powder v. Powder, 98 U. S. 126. 
 
 Where the original patent was for a process and the reissue was for the 
 article of manufacture, the new article of manufacture is a product which 
 results from the use of the process described in the patent, and not one which 
 may be produced in any other way. — Plummer v. Sargent, 120 U. b. 442; 
 SOL. Ed. 737; 7 S. Ct. 640. 
 
 § 882. Disclaimer. 
 
 It is not competent for the patentee or his assignee, by merely disclainiing 
 all the changes made in the reissue patent, to revive and restore the original 
 patent This could be done only, if it could be done at all, by surrender 
 of the reissued patent and the grant of another reissue. — McMurray v. 
 Mallory, 111 U. S. 97; 28 L. Ed. 365; 4 S. Ct. 375. 
 
 We do not think that the reissued patent as it stood after the filing of the 
 disclaimer, was open to the objection that it was not for the same invention 
 as that of the original patent. Whatever there was of objectionable matter 
 inserted in the specification or the first claim of the reissue, when it was 
 granted was removed by the disclaimer. The reissue was granted within 
 ten moAths of the original. The single claim of the original patent was 
 repeated in the reissue as the second claim of the latter; and the hrst claim ot 
 the reissue as it stood after the disclaimer did not expand beyond the claim 
 of the original what was claimed in the reissue. — Hurlbut v. SchiUinger, 130 
 U. S. 456; 32 L. Ed. 1011 ; 9 S. Ct. 584. 
 
 § 883. General Rules. 
 
 Patents, when inoperative or invalid, may in certain cases, be surrendered 
 and reissued ; but the new patent in such case must be for the same inven- 
 tion as the original patent; and if it is for a different invention, the reissue 
 is invalid for the reason that it was granted without authority of law. — 
 Marsh v. Seymour, 97 U. S. 348; 24 L. Ed. 963. 
 
 Sec. 4916 construed in Powder v. Powder, 98 U. S. 126; 25 L. Ed. 77. 
 
 Reissued letters patent must be for the same invention as that secured 
 in the original patent. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 Seymour v. Osborne, 11 Wall. 546. 
 
 The general rules are, (1) that the reissue cannot cover another invention 
 than that of the original; (2) that the reissue cannot recover what was 
 described but not claimed after long delay ; (3) that while a reissue claim niay 
 be enlarged, it can be done only when actual mistake has occurred and then
 
 §883 REISSUES 809 
 
 only without delay; (4) that in reissues for enlarging the scope of a patent, 
 the rule of laches should be rigidly applied ; (5) that the general purpose of 
 the statute providing for reissues was to correct mistakes and errors, and not 
 to enable the inventor from time to time to extend his monopoly so as to 
 cover progress by others in his art. — Miller v. Brass Co. 104 U. S. 
 350; 26 L. Ed. 783. 
 
 The case of Gage v. Herring, 107 U. S. 640, holds that the invalidity of 
 a new claim in a reissue does not impair the validity of a claim in it which 
 is only a repetition and separate statement of a claim in the original patent. 
 It also holds that a reissue patent is within the letter and spirit of sections 
 4917 and 4922; and that where a defendant has infringed such a restated 
 valid claim of a reissue, the plaintiff, on filing a disclaimer of the new and 
 invalid claims of the reissue, may have a decree, without costs, for the in- 
 fringement of such valid claim, where there has been no unreasonable delay 
 in entering the disclaimer. — Yale v. Sargent, 117 U. S. 536; 29 L. Ed. 954; 
 6 S. Ct. 934. 
 
 Reissues are subject to the following qualifications: 
 
 1. That it shall be for the same invention as the original patent, as such 
 invention appears from the specification and claims of such original. 
 
 2. That due diligence must be exercised in discovering the mistake in 
 the original patent, and that, if it be sought for the purpose of enlarging the 
 claim, the lapse of two years will ordinarily, though not always, be treated 
 as evidence of an abandonment of the new matter to the public to the same 
 extent that a failure by the inventor to apply for a patent within two years 
 from the public use or sale of his invention is regarded by the statute as con- 
 clusive evidence of an abandonment of the patent to the public. 
 
 3. That this court will not review the decision of the Commissioner upon 
 the question of inadvertence, accident or mistake, unless the matter is mani- 
 fest from the record; but that the question whether the apphcation was made 
 within a reasonable time is, in most, if not in all such cases, a question of 
 law for the court. — TopUff v. TopUff, 145 U. S. 156 ; 36 L. Ed. 658 ; 12 S. Ct. 
 825. 
 
 It is a mistake to suppose that the case was intended to settle the principle 
 that, under no circumstances, would a reissue containing a broader claim than 
 the original be supported. We have no desire to modify in any respect the 
 views expressed in that and subsequent cases. There is no doubt as was said 
 in Giant v. California, 98 U. S. 126, that a reissue can be granted only for 
 the same invention which formed the subject for the original, since the ex- 
 press words of the Act are "a new patent for the same invention." The 
 specification may be amended so as to make it more clear and distinct; the 
 claim may be modified so as to make it more conformable to the exact rights 
 of the patentee, but the invention must be the same. — Topliff v. Topliff, 
 145 U. S. 156; 36 L. Ed. 658; 12 S. Ct. 825. 
 
 Explaining and limiting, Miller v. Brass Co. 104 U. S. 350; Giant v. California, 
 98 U. S. 126. 
 
 The plain purpose of this section is to give the patentee an opportunity to 
 make valid and operative that which was before invalid and inoperative, — 
 invalid, because it claimed as new that which had been previously invented 
 or used by the public; inoperative because the specification was defective or 
 insufficient. New matter cannot be introduced, nor can the scope of the 
 invention be enlarged. All that the applicant can do is to so amend his 
 patent as to enable him to receive some practical and beneficial result from 
 his actual invention, of which he had been deprived by defects or omissions
 
 810 THE FIXED LAW OF PATENTS §§ 884-885 
 
 in the original patent. The object of a patentee applying for a reissue is not 
 to reopen the question of the validity of the original patent, but to rectify 
 any error which may have been found to have arisen from inadvertence or 
 mistake. But until the amended patent shall have been issued the original 
 stands precisely as if a reissue had never been applied for. — McCormick v. 
 Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. 
 Allen V. Gulp, 166 U. S. 501. 
 
 § 884. Grounds for. 
 
 When a patent was granted to the wrong person, an action by the rightful 
 inventor will lie to compel a surrender and reissue. — Appleton v. Bacon, 
 67 U. S. 699; 17 L. Ed. 338. 
 
 Where the applicant has been led into an error or mistake by the com- 
 missioner it was ground for a reissue. — Moray v. Lockwood, 75 U. S. 230; 
 19 L. Ed. 339. 
 
 Now whilst, as before stated, we do not deny that a claim may be enlarged 
 in a reissued patent, we are of opinion that this can only be done when an 
 actual mistake has occurred ; not from a mere error of judgment, for that may 
 be rectified by appeal, but a real bona fide mistake, inadvertently committed; 
 such as a court of chancery in cases within its ordinary jurisdiction will 
 correct. — Miller v. Brass Co. 104 U. S. 350; 26 L. Ed. 783. 
 
 The patent has been the subject of an earnest contest in the Patent Office 
 for four years; had been put in interference with five other devices, and it 
 was scarcely possible that, after this long litigation, the patentee should not 
 have detected defects in his original application, and have taken this oppor- 
 tunity of correcting them. His experience in this litigation had doubtless 
 appraised him of the weak points in his prior specification and claims, and it 
 was perfectly competent for him to restate them, provided his patent was not 
 essentially broadened to cover intervening devices. — Hobbs v. Beach, 180 
 U. S. 383; 45 L. Ed. 586; 218. Ct. 409. 
 
 Defendant's argument against the validity of the reissue is ingenious, but 
 
 the facts are plain, and not unusual. The device of the specification was 
 
 recognized as an invention by the manufacturers of lighting fixtures. They 
 
 became licensees, and the patent was acquiesced in and respected for a number 
 
 of years. The Gibson litigation showed that the principal claim was fatally 
 
 loose in the opinion of both the circuit and appellate courts. It was reissued 
 
 so as to make the claim correspond with and be limited to the description 
 
 in the specification. The claim was narrowed but narrowed to conform to 
 
 the specification, and to state the same invention which it had described. 
 
 The reissue is not one of the class of reissues of which Machine Co. v. Searle, 
 
 60 Fed. 82. is an example, which pretend to narrow a claim but which in 
 
 fact describe an invention of an independent character and one which the 
 
 patentee either did not make or omitted to describe, but which he now finds 
 
 " lurking " somewhere in the structure. — Maitland v. Goetz, 86 Fed. 124; 
 
 29 C. C. A. 607. 
 
 » 
 
 § 885. Inadvertence, Accident, or Mistake. 
 
 The applicant obtained his original, Apr. 14, 1863. He obtained his first 
 reissue Aug. 23, 1864. He obtained his second reissue Aug. 3, 1869. He 
 obtained his fourth reissue Oct. 4, 1870. The invention was a simple stamp 
 cancelling tool. The court held "that in view of the simplicity of the patent 
 on the one hand and in view of the remarkable efforts of the inventor to make
 
 $885 REISSUES 811 
 
 his patent cover all future improvements from time to time, he had forfeited 
 his right to what he had originally invented. 
 
 For a sharp rebuke to designing reissue applicants, see this case. — James 
 V. Campbell, 104 U. S. 356; 26 L. Ed. 786. 
 
 An error due to inadvertence or mistake apparent on the face of the patent 
 may be cured by prompt surrender and reissue, but such a right will be 
 abandoned by unreasonable delay. — Miller v. Brass Co. 104 U. S. 350; 26 
 L. Ed. 783. 
 
 Two applicants some nine years after issue discover that their solicitor 
 has " mixed those children up," the claims of the one being issued to the 
 other. Therefore they obtained a reissue separately. Held, that, (1) As 
 to the patent receiving the broadened claim under the reissue, it is void under 
 the rule of Miller v. Brass Co. 104 U. S. 350; and (2) that as to the patent 
 disclaiming the broader claims, that it covered as limited only a mechanical 
 improvement upon the other. — Hartshorn v. Saginaw, 119 U. S. 664; 
 30 L. Ed. 539; 7 S. Ct. 421. 
 
 't'he misapprehension of the applicant as to the efficiency of a claim does 
 not amount to inadvertence, accident or mistake. — Yale v. James, 125 
 U. S. 447; 31 L. Ed. 807; 8 S. Ct. 967. 
 
 Swain v. Ladd, 102 U. S. 408. 
 
 An alleged error of " omission of claims " where it was evident that the 
 " error " was discovered in subsequent inventions is not ground for reissue. 
 — Electric v. Boston, 139 U. S. 481 ; 35 L. Ed. 250; 11 S. Ct. 586. 
 
 Clements v. Odorless, 109 U. S. 641; Mahn v. Harwood, 112 U. S. 354; Coon v. 
 Wilson, 113 U. S. 268; Newton v. Furst, 119 U. S. 373; Worden v. Searles, 121 
 U. S. 14; Matthews v. Iron, 124 U. S. 347. 
 
 If the petition does not set forth grounds for reissue under R. S. 4916 the 
 Commissioner does not acquire jurisdiction. — Eby v. King, 158 U. S. 366; 
 39 L. Ed. 1018; 15 S. Ct. 972. 
 
 There are cases in which the description of an invention, and the claims 
 sought to be founded upon it, by the apphcant for a patent, are so plain and 
 unequivocal upon the face of the application itself, that the judicial mind 
 cannot be convinced that he intended to describe and claim any other 
 invention than that for which the patent was granted ; and in such cases the 
 courts ought not to hesitate to review the decision of the commissioner upon 
 the question of inadvertence, accident or mistake, and should refuse to be 
 bound by it when the record upon the application for the reissue discloses that 
 no explanatory facts or circumstances, adequate to account for the error, 
 were brought to his attention. — Featherstone v. Bidwell, 57 Fed. 631 ; 
 6 C. C. A. 487. 
 
 With respect to the proof of inadvertence, accident or mistake, the action 
 of the commissioner is conclusive, if there is any evidence before him tending 
 to show such accident, inadvertence or mistake, as will, in law, warrant a 
 reissue. With respect to whether the original patent is inoperative and 
 defective, the court has always reserved the right to review the action of the 
 commissioner. If it shall appear from an examination of the new and old 
 patents that the old patent was not defective or inoperative but was for a 
 complete invention, and that the reissue was taken out to secure another and 
 different invention, lurking in the mechanical arrangement of parts, the 
 Supreme Court has always held the reissue void. Parker v. Yale, 123 U. S.
 
 812 THE FIXED LAW OF PATENTS §§ 886-887 
 
 87. Again, if an examination of the patent office record discloses that there 
 was no evidence before the commissioner of accident, inadvertence or mis- 
 take, such as to warrant him in reissuing the patent, or that there was record 
 evidence of a conclusive character, showing that there could have been no 
 accident, inadvertence or mistake, the Supreme Court has not hesitated to 
 hold a reissue void. — Peoria v. Cleveland, 58 Fed. 227; 7 C. C. A. 197. 
 
 Huber v Mfg. Co. 148 U. S. 270; Huber v. Mfg. Co. 38 Fed. 836; Mahn v. 
 Harwood, il2 U, S. 354. 
 
 § 886. Scope of. 
 
 If he were the author of any other invention than that which he specifically 
 describes and claims, though he might have asked to have it patented at the 
 same time and in the same patent, yet if he had not done so, and afterwards 
 desired to secure it, he is bound to make a new and distinct application for 
 that purpose, and make it the subject of a new and different patent. When 
 a patent fully and clearly, without ambiguity or obscurity, describes and 
 claims a specific invention, complete in itself, so that it cannot be said to be 
 inoperative or invalid by reason of a defective or insufficient specification, 
 a reissue cannot be had for the purpose of expanding and generalizing the 
 claim so as to make it embrace an invention not described and specified in 
 the original. — James v. Campbell, 104 U. S. 356; 26 L. Ed. 786. 
 
 Burr V. Duryee, 68 U. S. 577; Miller v. Brass Co. 104 U. S. 350. 
 
 It would seem on the authority of the Goodyear vulcanized India rubber 
 patent that a patent covering only the process, where both process and 
 product were new, may be reissued to cover both process and product. — 
 James v. Campbell, 104 U. S. 356; 26 L. Ed. 786. 
 
 It is clearly to be understood, from the entire language, that the things to 
 be included are only the things which properly belonged to the invention as 
 embodied in the original patent ; that what the invention was is to be ascer- 
 tained by consulting the original patent ; and that, while the new description 
 may properly contain things which are indicated in the original specification, 
 drawings or patent office model (though not sufficiently described in the 
 original specification) it does not follow that what was indicated in the 
 original specification, drawings or patent office model is to be considered as 
 a part of the invention, unless the court can see, from a comparison of the 
 two patents, that the original patent embodied, as the invention intended 
 to be secured by it, what the claims of the reissue are intended to cover. — 
 Parker v. Yale, 123 U. S. 87; 31 L. Ed. 100; 8 S. Ct. 38. 
 
 It is well settled that no construction can be given to the claims of the 
 reissue involved in this suit which will include what was covered by the 
 rejected claims under either the original or reissue applications. — Fox v. 
 Perkins, 52 Fed. 205; 3 C. C. A. 32. 
 
 Shepard v. Carrigan, 116 U. S. 597; Sutter v. Robinson, 119 U. S. 530; Dobson 
 V. Lees, 137 U. S. 258; Roemer v. Peddie, 132 U. S. 313. 
 
 § 887. Surrender — Effect of. 
 
 A surrender of the patent within the sense of the provision means, an act 
 which, in judgment of law, extinguishes the patent. It is a legal cancella- 
 tion of it and hence can no more be the foundation for the assertion of a right 
 after the surrender than could a repealed act of Congress. — Moffitt v. Garr, 
 66 U. S. 273; 17 L. Ed. 207.
 
 § 887 REISSUES 813 
 
 The surrender of a patent extinguishes pending suits. — Moffitt v. Garr, 66 
 U. S. 273; 17 L. Ed. 207. 
 
 Surrenders take effect when the amended patent is issued, and from that 
 time the original patent ceases to be operative as a franchise to vest in the 
 patentee the exclusive right to make and use the invention, and vend the 
 same to others to be used. — Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 Surrendered patents cease to be operative when the new patent is issued; 
 from which it follows that such a patent, after the surrender, is not the proper 
 foundation for an action to recover either damages or profits for the in- 
 fringement of the invention. — Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 The surrender of the patent in suit after final judgment and decree does 
 not affect the judgment or decree. — Mevs v. Conover, 131 U. S. cxlii, app.; 
 23 L. Ed. 1008. 
 
 A patent after it is surrendered cannot be the foundation of any suit. 
 The surrender of a patent pendente Ute dismisses the suit. — Meyer v. 
 Pritchard, 131 U. S. ccix, app.; 23 L. Ed. 961. 
 
 Moffitt V. Garr, 1 Black, 282; Reedy v. Scott, 90 U. S. 352; Cleveland v. Cham- 
 berlain, 1 Black, 426; Lord v. Veazie, 8 How. 255. 
 
 Under the Act of 1837 the surrender of a patent for the purpose of a reissue 
 extinguished the original and all rights or claims thereunder. — Peck v. 
 Collins, 103 U. S. 660; 26 L. Ed. 512. 
 
 A void reissue does not affect original application on which patent was 
 granted. — Washburn v. Beat Em All, 143 U. S. 275; 36 L. Ed. 154; 12 
 S. Ct. 443. 
 
 Where a patent has been surrendered and reissued, and such reissue is held 
 void, the patentee cannot proceed under his original patent nor recover 
 damages thereunder. — Eby v. King, 158 U. S. 366; 39 L. Ed. 1018; 15 
 S. Ct. 972. 
 
 Moffitt V. Garr, 66 U. S. 273; Reedy v. Scott, 90 U. S. 352; Peck v. Collins, 
 103 U. S. 660; McMurray v. Mallory, 111 U. S. 97; Gage v. Herring, 107 U. S. 640. 
 
 It is true that in making his surrender the patentee declares that his 
 patent is inoperative and invalid; but this is not necessarily so for all pur- 
 poses, but for the purpose for which he desires to have it reissued. Such a 
 patent might be inoperative and invalid as against certain persons who had 
 pirated the underlying principle of the patent, and avoided infringing the 
 exact language of the claim, and yet be perfectly valid as against others 
 who were making machines clearly covered by their language. — Allen v. 
 Culp, 166 U. S. 501 ; 41 L. Ed. 1093; 17 S. Ct. 644. 
 
 When a patent is thus surrendered there can be no doubt that it continues 
 to be a valid patent until it is reissued, when it becomes inoperative; but, 
 if a reissue be refused, it is entirely clear that the surrender never takes effect, 
 and the patent stands as if no application had over been made fora reissue. 
 WTiether, if the reissue be void, the patentee in ay fall back on his original 
 patent has never yet been decided by this court, although the question was 
 raised in Eby v. King, 158 U. S. 366; but, as the original patent was also 
 held to be void, it did not become necessary to express an opinion upon the 
 question. But if the original application for a reissue be rejected, the original 
 patent stands precisely as though a reissue had never been applied for.
 
 814 THE FIXED LAW OF PATENTS § 888 
 
 unless, at least, the reissue be refused upon some ground equally affecting 
 the original patent. — Allen v. Gulp, 166 U. S. 501; 41 L. Ed. 1093; 17 S. 
 Ct. 644. 
 
 To attempt to cancel a patent upon an application for reissue when the first 
 patent is considered invalid by the examiner would be to deprive the applicant 
 of his property without due process of law, and would be in fact an invasion 
 of the judicial branch of the government by the executive. — McCormick 
 V. Aultman, 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. 
 
 The Circuit Court of Appeals certified the following question to the Supreme 
 Court, in McCormick v. Aultman, 69 Fed. 371: 
 
 If a patentee applies for a reissue of his patent, and includes among the 
 claims under the new application the same claims as those which were in- 
 cluded in the old patent, and the examiner of the patent office rejects some 
 of such claims, and allows others, both old and new, does the patentee, by 
 abandoning his application for a reissue, and by procuring a return of his 
 original patent, hold his patent invalidated as to those claims which the 
 examiner rejected? 
 
 The Supj-eme Court answered the question thus: 
 
 The fact that the rules of the patent office require that the original patent 
 should be placed in its custody for the purpose of sun-endering it upon the 
 issue of an amended patent gives that department no right to the possession 
 of it upon the rejection of the application for a reissue. If the patentee 
 abandoned his application for a reissue, he is entitled to a return of his 
 original patent precisely as it stood when such application was made, and the 
 Patent Office has no greater authority to mutilate it by rejecting any of its 
 claims than it had to cancel the entire patent. — McCormick v. Aultman, 
 169 U. S. 606; 42 L. Ed. 875; 18 S. Ct. 443. 
 
 When the patentee came to ask for a reissue, he was confronted with 
 certain conditions on which only could the reissue be permitted. One was 
 that the specifications of his patent, as it (they) stood, were inoperative. 
 He was obliged to aver and prove that they were so. If this was true, the 
 patentee had been exploiting a patent which, though it might have contained 
 the germ of an invention, was practically useless to the public, for a patent 
 which does not disclose a way to work or use the invention does not con- 
 stitute the expected consideration for the grant. Having averred in a solemn 
 manner, and to induce the granting of a reissue, that the fact was as just 
 stated, he was estopped from claiming otherwise. — Coffield v. Fletcher, 
 167 Fed. 321 ; C. C. A. 
 
 Moffitt V. Garr, 1 Black, 273; Reedy v. Scott, 23 Wall. 352; Peck v. Collins. 
 103 U. S. 660; Ga^e i'. Herring, 107 U. S. 640; Coon v. Wilson. 113 U. S. 268; 
 Eby V. King, 158 U. S. 366; McCormick i'. Aultman, 169 U. S. 606. 
 
 Note: This certainly is a holding which will be open to some criticism 
 in view of the decision in McCormick v. Aultman, supra. To what extent 
 the averments in an application for a reissue may be regarded as an estoppel 
 is a serious question, and one which cannot be regarded as finally settled by 
 this decision for all cases. 
 
 § 888. Tests of VaUdity of. 
 
 The construction of a reissue in a court of equity is a question to be de- 
 termined by a comparison of the original and reissue; and with the aid of 
 expert testimony in cases where the specification is technical. — Seymour v. 
 Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 Sickles V. Evans, 2 Cliff. 203; Bischoff v. Wethered, 9 Wall. 812; Betts v. 
 Menzies, 4 B. & S. Q. B. 999.
 
 § 889 REISSUES 815 
 
 Equivalents are, doubtless, allowed to a patentee or owner of a patent to 
 shut out infringements, but the patent act furnishes no support to the theory 
 that the patentee may surrender a patent for an invention consisting of a 
 combination of old ingredients and amend the descriptive parts of the 
 specification by striking out the entire description of one of the ingredients 
 of the combination and inserting in lieu thereof a full description of several 
 other devices without any allegation that they are the equivalents of the one 
 whose description is stricken out, or any explanation whatever showing the 
 reason why the change was made. — Gill v. Wells, 89 U. S. 1; 22 L. Ed. 
 699. 
 
 When the reissue is clearly void by comparison with the original as a 
 matter of law, extensive evidence is unnecessary; but where such evidence 
 is required it is proper that it should be considered. — Heald v. Rice, 104 
 U. S. 737; 26 L. Ed. 910. 
 
 James v. Campbell, 104 U. S. 356; Miller v. Brass Co. 104 U. S. 350; Burr v. 
 Duryee, 68 U. S. 531; Powder v. Powder. 98 U. S. 139; Battin v. Taggart, 58 
 U. S. 77; Bischoff v. Wethered, 76 U. S. 812; Seymour v. Osborne, 78 U. S. 545. 
 
 What was suggested in the original specification, drawings or patent office 
 model is not to be considered as a part of the invention intended to have 
 been covered by the original patent, unless it can be seen from a comparison 
 of the two patents that the invention, which the original patent was intended 
 to cover embraced the things thus suggested, or indicated in the original 
 specification, drawings, or patent office model, and unless the original 
 specification indicated that those things were embraced in the invention 
 intended to have been secured by the original patent. — Flower v. Detroit, 
 127 U. S. 563; 32 L. Ed. 175; 8 S. Ct. 1291. 
 
 Parker v. Yale, 123 U. S. 87; Hoskin v. Fisher, 125 U. S. 217. 
 
 We are of opinion that the circuit court committed an error in excluding 
 the original patent. It was relevant evidence upon the question whether the 
 reissue was " for the same invention " as the original, and the issue on that 
 subject was sufficiently raised by the averment of the complainant and the 
 denial in the answer. — Oregon v. Excelsior, 132 U. S. 215; 33 L. Ed. 344; 
 10 S. Ct. 54. 
 
 § 889. Miscellaneous Rules. 
 
 Under the general statute, which did not specifically provide for reissues, 
 the government had the right, incident to its power to grant a patent, to 
 grant a reissue in case of accident or mistake. — Grant v. Raymond, 6 Pet. 
 218; 8 L. Ed. 376. 
 
 The second patent being a continuation of the first one, the rights of the 
 plaintiff must be ascertained by the law under which the original application 
 was made. — Shaw v. Cooper, 7 Pet. 292; 8 L. Ed. 689. 
 
 Moneys recovered on judgments in suits or voluntary payment under 
 the first patent, upon the surrender cannot be recovered back. — Moffitt ■;;. 
 Garr, 66 U. S. 273; 17 L. Ed. 207. 
 
 A reissue has no connection with or bearing upon antecedent suits; it 
 has as to subsequent suits. — Moffitt v. Garr, 66 U. S. 273 ; 17 L. Ed. 207. 
 
 Upon an application for a reissue the commissioner should pass upon 
 the sufficiency of applicant's title to apply for reissue.— Hollo way v. Whiteley, 
 71 U. S. 522; 18 L. Ed. 335.
 
 815 THE FIXED LAW OF PATENTS § 889 
 
 It was held by the court, in view of the Patent Act of 1832, that the fact 
 of the granting of the reissued patent closed all inquiry into the existence 
 of inadvertence, accident or mistake, and left open only the question of fraud 
 to the jury. — Seymour v. Osborne, 78 U. S. 516; 20 L. Ed. 33. 
 
 R. R. V. Stimpson, 4 How. 384. 
 
 Note: Under the later law and more recent rulings, this is regarded too 
 broad. 
 
 Reissued patents, in order that they may be valid, must be for the same 
 invention as the surrendered originals. The express provision in the new 
 Patent Act is that no new matter shall be introduced into the specification, 
 and that in the case of a patent for a machine neither the model nor drawings 
 shall be amended, except each by the other. — Gill v. Wells, 89 U. S. 1 ; 22 
 L. Ed. 699. 
 
 Pending suits are defeated when it appears that the patent on which the 
 suit is founded has been surrendered, nor is a supplemental bill setting up 
 the reissued patent a proper pleading to revive such a suit in equity, as 
 nothing can be recovered, either as damages or profits for infringement of the 
 surrendered patent. — Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 Moffitt V. Garr, 1 Black, 273. 
 
 The reissue together with the corrected specification has the same effect 
 and operation in law on the trial of all actions for causes hereafter (there- 
 after) arising, as though the same had been originally filed in such correct 
 form. — Reedy v. Scott, 90 U. S. 352; 23 L. Ed. 109. 
 
 The defendant must overcome the presumption against him arising from 
 the decision of the Commissioner of Patents in granting the reissue.— 
 Smith V. Goodyear, 93 U. S. 486; 23 L. Ed. 952. 
 
 The statute in force at the time of the issue of the original patent authorized 
 a surrender and reissue whenever any patent was " 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 a right to claim as new." The statute in force at the time of the 
 reissue made no change in this except by striking out the words " descrip- 
 tion or " Stat. 4th July, 1836, Ch. 357, sec. 13 (5 Stat, at L, 117): R. S. sec. 
 4916. — Gage v. Herring, 107 U. S. 640; 27 L. Ed. 601; 2 S. Ct. 819. 
 
 It was never lawful to cover, by the claims of a reissue, an improvement 
 made after the granting of the original patent. — Union v. U. S. 112 U. S. 
 624; 28 L. Ed. 828; 5 S. Ct. 475. 
 
 The combination covered by the claim in the reissued patent is, in law and 
 in fact, merely a mechanical equivalent for that which was already covered 
 by the C. patent, which had the priority of invention. For this reason we 
 hold the reissue invaUd. — Hartshorn v. Saginaw, 119 U. S. 664; 30 L. Ed. 
 539; 7 S. Ct. 421. 
 
 The patentee having imposed words of limitation upon himself in his 
 claims, especially when so required by the patent office in taking out his 
 reissue, is bound by such limitations, in subsequent suits on the reissued 
 patents. — Crawford v. Heysinger, 123 U. S. 589; 31 L. Ed. 269; 8 S. 
 Ct. 399. 
 
 Leggett V. Avery, 101 U. S. 256; Goodyear v. Davis, 102 U. S. 222; Fay v. 
 Cordesman, 109 U. S. 408; Mahn v. Harwood, 112 U. S. 354; U. S. v. Union,
 
 § 889 REISSUES 817 
 
 112 U. S. 624; Sargent v. Hall, 114 U. S. 63; Shepard v. Carrigan, 116 U. S. 593; 
 White V. Dunbar, 119 U. S. 47; Sutter v. Robinson, 119 U. S. 530; Bragg v. 
 Fitch, 121 U. S. 478; Snow i;. Lake Shore, 121 U. S. 617. 
 
 A reissue applied for subsequent to the expiration of a foreign patent 
 upon the original is invalid. — Commercial v. Fairbank, 135 U. S. 176; 
 34 L. Ed. 88; 10 S. Ct. 972. 
 
 Claims of a reissue patent must be limited to the specific mechanism 
 claimed in the original patent. — Electric v. Boston, 139 U. S. 481; 35 L. 
 Ed. 250; 11 S. Ct. 586. 
 
 Sutter V. Robinson, 119 U. S. 530. 
 
 Where an application was made on the ground of a defect in the " omis- 
 sion of claims," and it appears that the real object of the reissue was to cover 
 apparatus covered by subsequent patents, the reissue claim was held invalid. 
 — Electric v. Boston, 139 U. S. 481 ; 35 L. Ed. 250; 11 S. Ct. 586. 
 
 Does not invalidate original claim when it is repeated in reissue. — Leggett 
 V. Standard, 149 U. S. 287; 37 L. Ed. 737; 13 S. Ct. 902. 
 Gage V. Herring, 107 U. S. 640 
 
 In that case (Gaskill v. Myers) too, there was no change whatever in the 
 specification. In this case a change was introduced, which was not only 
 different from, but essentially inconsistent with, the original specification. — 
 American v. Swietusch, 85 Fed. 968; 29 C. C. A. 506. 
 
 Distinguishing Gaskill v. Myers, 81 Fed. 854. 
 
 In the original application a part was shown and described as a hole which 
 should have been a slot. This rendered the device absolutely inoperative. 
 The error was caused by oversight and was unconnected with the gist of the 
 indention, though its adoption rendered the machine inoperative. No change 
 was made or needed in the claim. If the patentee made a meritorious inven- 
 tion, he ought not to lose the benefit of it by reason of a defect so narrow and 
 technical. — Hart v. Anchor, 92 Fed. 657; 34 C. C. A. 606. 
 
 It is urged that the success of the- appellee in procuring the reissue is 
 in the nature of a fraud. The defect of this argument is that it assumes that 
 we have before us (on injunction proceeding), in this case, all the facts that 
 the commissioner had before him in the application for a reissue ; and that 
 we can, in a collateral proceeding, declare the patent fraudulent, on account 
 of the supposed imposition on the commissioner. — Justi v. Clark, 108 Fed. 
 659; 47 C. C. A. 565. 
 
 If the claims in a reissue are valid which were contained in the original, 
 notwithstanding its new claims are invalid, it would seem to follow that, 
 where there are no new claims in the reissue, all the claims should be valid, 
 although in attempting to correct a mistake the commissioner has done 
 nothing more than to introduce unimportant changes into the description. — 
 Thomson-Houston v. Black River, 135 Fed. 759; 68 C. C. A. 461. 
 
 It suffices for present purposes that the patentee not only described the 
 same invention as is described in the reissue (with amplification now omitted 
 as to the detail'? of construction and arrangement of the tension device) but 
 also endeavored to claim the combination now claimed. Unless a reissue is 
 invalid because unimportant changes are made in the descriptive matter 
 and the language of the claims so as to express beyond any chance of mis-
 
 818 THE FIXED LAW OF PATENTS §§ 890-891 
 
 apprehension what the patentee intended to claim in the original, there is 
 nothing to militate against the present reissue. It is urged for the appellee 
 that there was no statutory ground for a reissue, because the specification 
 for the original was not in any sense defective. If it should be conceded that 
 the changes in the description of the reissue are of no materiality, and that 
 the claims are identically such as some of the claims of the original, the 
 circumstances would not impeach their validity. In many cases where the 
 new claims in a reissue have been held invalid, the claims repeated from the 
 original have been sustained. — Thomson-Houston v. Black River, 135 Fed. 
 759; 68 C. C. A. 461. 
 Gage V, Herring, 107 U. S. 640; Mahn v. Harwood, 112 U. S. 354. 
 
 REOPENING CASE. 
 
 After Decree on Appeal § 890 
 Newly Discovered Evidence § 891 
 Miscellaneous Rules § 892 
 
 See — Adjudication § 35; Appeals 
 § 109; Decrees § 301; Pleading and 
 Practice § 788; Rehearings § 868 
 
 § 890. After Decree on Appeal. 
 
 The question of due diligence, as well as the materiality of the newly dis- 
 covered evidence, is, we think, a question for decision by this court upon an 
 application for leave to review a decree of the Circuit Court, entered in pur- 
 suance of the decree of this court. — Kisinger-Ison v. Bradford, 123 Fed. 
 91; 59C. C. A. 221. 
 
 Society v. Watson, 77 Fed. 512; Jourolmon v. Ewing, 85 Fed. 103; Rubber v. 
 Ewing, 9 Wall. 805. 
 
 That where a case is on appeal, before final decree, the appellate court 
 may dismiss the appeal without prejudice, on request of the court below, for 
 the purpose of further pleading and proofs, see Mossberg v. Nutter, 124 
 Fed. 966 ; 60 C. C. A. 98. 
 
 Distinguishing Roemer v. Simon, 91 U. S. 149. 
 
 On an interlocutory decree, like the one now before us, the Circuit Court 
 has the case in its own breast, and on the dismissal of an appeal without 
 prejudice can reopen any interlocutory proceedings if justice requires it. — 
 Greene v. United, 124 Fed. 961; 60 C. C. A. 93. 
 
 That a complainant-appellant may not ask the appellate court to instruct 
 the circuit court to allow complainant to reopen the case and amend so as to 
 bring in the proper parties defendant, see — National v. Stolts, 135 Fed. 534; 
 68 C. C. A. 84. 
 
 § 891. Newly Discovered Evidence. 
 
 It is a settled rule in this class of cases " that the matter must not only 
 be new, but such as the party, by the use of reasonable diligence, could not 
 have known; for if there be any laches or negligence in this respect, that 
 destroys the title to the relief." Story Eq. PI. sec. 414. — Providence v. 
 Goodyear, 76 U. S. 805; 19 L. Ed. 828. 
 
 Whether such an application shall be granted or refused, rests in the 
 sound discretion of the court. — Providence v. Goodyear, 76 U. S. 805; 
 19 L. Ed. 828. 
 
 The decision and decree of this court did not amount, indeed, technically 
 speaking, to a final judgment, because the matter of accounting still remained
 
 § 891 REOPENING CASE 819 
 
 to be disposed of. Humiston v. Stainthorp, 2 Wall. 106; Smith v. Iron 
 Works, 165 U. S. 518. But they constitute an adjudication by this court of 
 all questions, whether of law or of fact, involved in the conclusion that the 
 letters patent of the plaintiff were valid, and had been infringed. Applying 
 the rule stated at the beginning of this opinion, the questions of novelty 
 and infringement were before this court, and disposed of by its decree, and 
 must therefore be deemed to have been finally settled, and could not after- 
 wards be reconsidered by the circuit court. When the merits of the case 
 have been once decided by this court on appeal, the circuit court has no 
 authority without express leave of this court to grant a new trial, a rehearing 
 or a review, or to permit new defenses on the merits to be introduced by 
 amendment of the answer. — In re Potts, 166 U. S. 263; 41 L. Ed. 994- 
 17 S. Ct. 520. 
 
 Ex Parte Story, 12 Pet. 339; Southard v. Russell, 16 How. 547; Ex Parte 
 Du Buque, 1 Wall. 69; Stewart v. Solomon, 97 U. S. 361; Gaines t'. Rugg, 148 
 U. S. 228. 
 
 The refusal of the court of leave to the defendants to take further proof 
 is assigned for error, but this assignment has not been seriously pressed by 
 counsel. The rebuttal proofs in the case had been closed, and leave was 
 denied on the ground of lack of due diligence, and because it was not clear 
 that the new evidence was material. The disposition of the motion was, 
 however, in the discretion of the court, and in general such motions are not 
 appealable. — Pittsburgh v. Roberts, 71 Fed. 706; 18 C. C. A. 302. 
 
 Stimes v. FrankUn, 14 Wall. 22. 
 
 While the views which we have expressed in respect to stare decisis, 
 public policy, and laches, do not operate strictly as an estoppel under the 
 circumstances of this case, such considerations have operated to create and 
 sustain the rule which requires that the newly discovered evidence, in order/ 
 to be controlling, shall fully, clearly and unmistakably establish, in connec- 
 tion with the other evidence in the case, that the former decisions between the 
 same parties were wrong. — Bresnahan v. Tripp, 99 Fed. 280; 39 C. C. A. 508. 
 
 The decisions (and there are many) all go at least to the extent of saj^ing 
 that the new evidence, to warrant it, must be so cogent and persuasive as to 
 impress the court with the conviction that, if it had been presented and con- 
 sidered on the original hearing, it would have clearly produced a contrary 
 conclusion from the one there reached. There are some cases where it is 
 held that, if the claim is made that the newly discovered evidence or patents 
 anticipate the patent previously sustained upon bona fide and strenuous 
 contest, the anticipation must be described in full, clear and exact terms. — 
 Bresnahan v. Tripp, 99 Fed. 280; 39 C. C. A. 508. 
 
 That a searcher was sent to examine the Patent Office for the purpose of 
 obtaining all matter which was material to the defense of want of patentable 
 novelty, and that this searcher did not come across these particular patents, 
 is not such an extraordinary circumstance as would justify the review of a 
 decree sustaining the validity of the patent. Such evidence is of a cumulative 
 character. These patents were public records, and accessible if the search 
 had been sufficiently diligent. The discovery of other patents bearing upon 
 the question of anticipation should not be made the basis for a bill of review, 
 in the absence of some very peculiar circumstance. — Kisinger-Ison v. 
 Bradford, 123 Fed. 91 ; .59 C. C. A. 221. 
 
 Re GameweU, 73 Fed. 908.
 
 820 THE FIXED LAW OF PATENTS §§892-893 
 
 That a party is entitled to a reasonable time after the discovery of new 
 evidence to verify and substantiate such evidence before movuig to reopen 
 the case, see - Kelley v. Diamond, 136 Fed. 855; 69 C. C. A. 599. 
 
 The petition seems to us to be for leave to open up the case not so much to 
 introduce evidence newly discovered, as to introduce old evidence the 
 materiality of which has been newly discovered. The disturbance of a fina 
 iud«^ment between given parties on such a ground would be contrary to all 
 the adjudged cases. It would destroy the finality of nearly every decree 
 handed down. - Lafferty v. Acme, 143 Fed. 321; 74 C. C. A. 521. 
 
 § 892. Miscellaneous Rules. 
 
 The decree in this case under consideration is not final, within the de- 
 cisions of this court. The injunction prayed for was made perpetual but 
 there was a reference to a master to ascertain the damages by reason of the 
 infringement; the bill was not dismissed, nor was there a decree for costs. 
 No point is better settled in this court, than that an appeal may be prosecuted 
 only from a final decree. The cases are numerous where appeals have been 
 dismissed, because the decree of the circuit court was not final. It is supposed 
 there was a departure from this uniform course of decision, at the last term 
 in case of Forgay v. Conrad, 6 How. 201. — Barnard v. Gibson, 7 How. 650; 
 12 L. Ed. 857. 
 
 The record contains no warrant for more than nominal damages at any 
 time. We cannot reopen the taking of evidence simply because the com- 
 plainant has failed to make a case. — Baker v. Crane, 138 Fed. 60; 70 t. 
 C. A. 486. 
 
 Appellant, after the decision of the case, moved to reopen it, in order to 
 show that it used fire-brick and did not use chamotte, within the meaning 
 given to it by the court in its opinion. This motion was rightly denied. 
 The new evidence sought to be introduced might have been brought before 
 the court at the original hearing. — Panzl v. Battle Island, 138 Fed. 48; 
 70 C. C. A. 474. 
 
 RES JUDICATA. 
 
 Conclusiveness § 893 
 Former Suit § 894 
 Patent Office Decisions § 895 
 Miscellaneous Rules § 896 
 
 See — Adjudication § 28; Comity 
 § 250; Estoppel § 381; Injunction §§ 
 561, 570, 575; Interferences § 580; 
 Pleading and Practice § 788 
 
 § 893. Conclusiveness. 
 
 The judgment rendered in that (the former) suit, while it remains in force, 
 and for the purpose of maintaining its validity, is conclusive of all the facts 
 properly pleaded by the plaintiffs. But when it is presented as testimony in 
 another suit the inquiry is competent whether the same issue has been 
 tried and settled by it. — Packet Co. v. Sickles, 65 U. S. 333; 16 L. Ed. 650. 
 
 Merriam v. Whittemore, 5 Gray, 316; Hughes v. Alexander, 5 Duer, 488. 
 
 A recovery for an infringement of one claim of the patent is not of itself 
 conclusive of an infringement of that other claim and there was no extrinsic 
 evidence offered to remove the uncertainty upon the record; it is left to 
 conjecture what was in fact litigated and determined. The verdict may have 
 been for an infringement of the first claim ; it may have been for the infringe-
 
 §893 RES JUDICATA 821 
 
 merit of the second ; it may have been for an infringement of both. The 
 validity of the patent was not necessarily involved, except with respect to 
 the claim which was the basis of recovery. — Russell v. Place, 94 U. S. 606: 
 24 L. Ed. 214. 
 
 It is undoubtedly settled law that a judgment of a competent court of 
 jurisdiction, upon a question directly involved in one suit, is conclusive as to 
 that question in another suit between the same parties. But to this opera- 
 tion of the judgment it must appear, either upon the face of the record or be 
 shown by extrinsic evidence, that the precise question was raised, and deter- 
 mined in, the former suit. If there be any uncertainty on this head in the 
 record — as, for example, if it appear that several distinct matters may have 
 been litigated, upon one or more of which the judgment may have passed 
 without indicating which of them was thus litigated, and upon which the 
 judgment was rendered — the whole subject-matter of the action will be at 
 large and open to a new contention, unless this uncertainty be removed by 
 extrinsic evidence. — Russell v. Place, 94 U. S. 606; 24 L. Ed. 214. 
 
 The jury did not find that the alleged infringing machines combined in 
 their " structure and operation the substance of the invention" described 
 in the letters patent. Curt, sec. 308; but found the identity of the three 
 exhibits in the case. If the invention of the patent was not used, it is im- 
 material how similar the two machines were in other respects. The question 
 whether the invention of the patent was used by the defendant was not 
 actually determined by the state court, although it could have been; but 
 it is only in respect to matters actually in litigation and determined that 
 the judgment is conclusive in another action. — Brusie v. Peck, 54 Fed. 820- 
 4 C. C. A. 597. 
 
 Cromwell v. Sac, 94 U. S. 351. 
 
 A decision of another circuit court of appeals to be res judicata and a 
 binding precedent must have been upon the merits of the same patent, and 
 not upon others co-related with it. — Boyden v. Westinghouse, 70 Fed. 816; 
 17 C. C. A. 430. 
 
 The decree in the Toledo Case awarded a perpetual injunction, but with an 
 order of reference to a master to ascertain the damages by reason of infringe- 
 ment, and for that purpose the suit, it is conceded, is still pending. It is 
 therefore only an interlocutory decree, and not available as an estoppel in 
 respect to any issue in these suits. Barnard v. Gibson, 7 How. 650; Humiston 
 V. Stainthorp, 2 Wall. 106; McGourkey v. Ry. Co. 146 U. S. 545; Bradley v. 
 Eagle, 57 Fed. 980; Jones v. Munger, 50 Fed. 785; Richmond v. Atwood, 
 52 Fed. 10; Marden v. Campbell, 67 Fed. 809; Bissell v. Goshen, 72 Fed. 
 545. — Brush v. Western, 76 Fed. 761 ; 22 C. C. A. 543. 
 
 The decision of this court in the case of Wheaton v. Norton, 70 Fed. 833, 
 was upon the merits; and it was there adjudged that the same machine, the 
 use of which constitutes the alleged infringement by the defendant in the 
 present suit, was not an infringement of the patent sued on by the com- 
 plainants; and the judgment of the trial court, entered in pursuance of the 
 mandate of this court, was an adjudication conclusively binding, not only 
 upon the parties to that suit, but upon their privies. Johnson Steel v. 
 Wharton, 152 U. S. 252; Last Chance v. Tvler, 157 U. S. 683; Railroad v. 
 National, 102 U. S. 14; Stout v. Lye, 103 U. S. 66. The judgment is 
 affirmed. — Norton v. San Jose, 79 Fed. 793; 25 C. C. A. 194. 
 
 While we appreciate fully that the doctrine of res judicata is a salutary 
 one, intended to mitigate the evils which follow prolonged and repeated
 
 §22 THE FIXED LAW OF PATENTS § 894 
 
 litigations, still the decisions show that the courts have always restricted 
 its application to cases where, among other identities, the subject matter 
 was the same. — Norton v. Jensen, 90 Fed. 415; 33 C. C. A. 141. 
 
 Cromwell v. Sac, 94 U. S. 351; Russell v. Place 94 U S 606; Lumber Co r 
 Buchtel, 101 U. S. 638; Wilson v. Deen, 121 U. S. 525; Bissell v. Sprmg, 124 
 U. S. 231. 
 
 The defendant here was a mere user. The infringing manufacturer, the 
 Diamond Meter Co., was not a party to the prior adjudication but un- 
 doubtedly furnished the defense. Held: The proofs as a whole satisfy us 
 that the purpose of the Diamond Meter Co. was to maintain such an attitude 
 with reference to the prior suit that it might have the direct benefit -of the 
 decree if favorable to the defendants therein, and yet not be concluded 
 should the decree be adverse to the defendant. But if the Diamond Meter 
 Co. desired that the decree in the prior suit should operate as an estoppel 
 in its favor, it was bound by avowal or open action to place itself in such an 
 unequivocal position that the decree should be mutually binding as res 
 adjudicata upon itself and upon the complainant. — Jefferson v. Westing- 
 house, 139 Fed. 385; 71 C. C. A. 481. 
 
 Litchfield v. Goodnow's, 123 U. S. 549; Andrews v. National, 76 Fed. 166; 
 Cramer v. Singer, 93 Fed. 636; Lane v. Welds, 99 Fed. 286. 
 
 An adjudication that the patent was void would protect defendant against 
 a new attack bv plaintiff on the same patent. But an adjudication that the 
 defendant was doing something that did not infringe a valid patent would not 
 justify defendant in doing something else that does infringe. — Robinson 
 V. American, 150 Fed. 331 ; 80 C. C. A. 127. 
 
 If courts are to examine defenses in patent cases de novo, as often as they 
 are presented, litigation will continue until the resources of the defendants 
 or the patience of the complainant, and possibly the patience of the court, 
 are exhausted. — Consolidated v. Diamond, 162 Fed. 892; 89 C. C. A. 582. 
 
 § 894. Former Suit. 
 
 It was not necessary as between parties and privies that the record should 
 show that the question upon which the right of the plaintiff to recover, or 
 the validity of the defense, depended for it to operate conclusively; but only 
 that the same matter in controversy might have been litigated, and that 
 extrinsic evidence would be admitted to prove that the particular question 
 was material and was, in fact, contested and that it was referred to the 
 decision of the jury. — Packet Co. v. Sickles, 65 U. S. 333; 16 L. Ed. 650. 
 
 Although one infringer may succeed in defeating a patent by one of the 
 statutory defenses, such action does not prevent another from being sued, 
 or mulcted, in case he fails to produce the requisite evidence to maintain his 
 defense. -United States v. Am. Bell, 128 U. S. 315; 32 L. Ed. 450; 9 S. 
 Ct. 90. 
 
 As the prior action was between the same parties, and was based in part 
 at least, and principally, upon the same patent, it would appear that the 
 judgment of the court dismissing the petition would operate as a cx)mplete 
 estoppel to the present suit, unless the proceedings subsequent to the judg- 
 ment in the former suit in some way deprived the judgment of its force and 
 effect res judicata. - Hubbell v. U. S. 171 U. S. 203; 43 L. Ed. 136; 18 S. 
 Ct. 828. 
 
 3 Rob. Pat. sec. 1017.
 
 1894 RES JUDICATA 823 
 
 The presumption is that the issues were the same, and, if they were in part 
 different, it was incumbent upon the claimant to show that the prior case was 
 decided upon questions not involved herein. — Hubbell v. U. S. 171 U. S 
 203; 43 L. Ed. 136; 18 S. Ct. 828. 
 
 The patentee cannot bring suit against an infringer upon a certain state of 
 facts, and, after dismissal of his action, bring another suit against the same 
 party upon the same state of facts, and recover upon a different theory. The 
 judgment in the first action is a complete estoppel in favor of the successful 
 party in a subsequent action upon the same state of facts. — Hubbell v. 
 U. S. 171 U. S. 203; 43 L. Ed. 136; 18 S. Ct. 828. 
 
 Walker Pat. 468; DuBois v. Railroad, 5 Fish. 208, Fed. Cas. 4109; Bradley v. 
 Eagle, 57 Fed. 989. 
 
 This is a second action upon the same claim or demand, to wit, upon the 
 claim for a monopoly granted by patent; and that the former decree, the 
 question being necessarily involved and at issue in that case, determines 
 conclusively and for all time, as between the parties thereto and their privies, 
 the validity of the patent. It can no more be made the subject of contention 
 between them. — Bradley v. Eagle Mfg. Co. 57 Fed. 980; 6 C. C. A. 661. 
 
 Cromwell v. Sac. 94 U. S. 351; Davis v. Brown, 94 U. S. 423; Campbell v. 
 Rankin, 99 U. S. 281; Block v. Commissioners, 99 U. S. 686; Wilson v. Deen, 
 121 U. S. 525; Bissell v. Spring Valley, 124 U. S. 225: Nesbit v. Independent, 144 
 U. S. 610; Railroad v. Alsbrook, 146 U. S. 279; McComb v. Frink, 149 U. S. 629; 
 Lumber Co. v. Buchtel, 101 U. S. 638; Insurance Co. v. Bangs, 103 U. S. 780; 
 Elgin V. Marshall, 106 U. S. 578. 
 
 The defendant there was the agent of the present appellant in the sale 
 of the infringing machines. The defense of the suit then was assumed and 
 prosecuted by the appellant here. The appellant was in fact the real party to 
 that litigation, and so far as the decree there is res adjudicata is as effectively 
 concluded thereby as if it were the actual defendant of record. — Bradley 
 V. Eagle ^Ifg. Co. 57 Fed. 980; 6 C. C. A. 661. 
 
 Lovejoy v. Murray, 3 Wall. 1; Robbins v. Chicago, 4 Wall. 657. 
 
 That the decree was interlocutory at the bringing of this suit, and subse- 
 quently ripened into a final decree, does not impair its efficiency or con- 
 clusiveness when properly presented in this suit. The relative time of in- 
 stitution of suit, or the relative date of final decree, is not of consequence 
 if the merits of the controversy be thereby fully and finally determined, and 
 the record thereof is properly brought to the attention of the court. — Brad- 
 ley V. Eagle Mfg. Co. 57 Fed. 980; 6 C. C. A. 661. 
 
 Duffy V. Lytle, 5 Watts. 120; Casebeer v. Mowry, 55 Pa. St. 422; Child v. 
 Powder Works, 45 N. H. 547. 
 
 The rule of res judicata has never been disturbed that where, in a prior 
 suit, it appears of record that any particular question has been actually 
 adjudicated, the prior judgment is to that extent conclusive in any subsequent 
 suit between the same parties or their privies, relating to an instrument which 
 forms the basis of litigation in each. Here we find in the prior judgment a 
 solemn and express adjudication in favor of the validity of the patent. If 
 in that particular the court went beyond its province, its action was not void, 
 and the remedy for the respondents was to apply to have its decree amended. 
 As, therefore, we find in the record here, matter which, as far as we are 
 concerned, conclusively establishes that the court having cognizance of the 
 prior suit had expressly adjudicated the validity of the patent as between the 
 parties in privity with those now before us, we have no power to permit
 
 824 THE FIXED LAW OF PATENTS § 895 
 
 that question to be litigated again. — Empire v. American, 74 Fed. 864; 
 21 C. C. A. 152. 
 
 Bradley v. Eagle, 57 Fed. 980; Russell v. Place, 84 U. S. 351; Bissell v. Spring, 
 124 U. S. 225; Hewlett v. Tarte, 10 C. B. N. S. 813; Roberts v. Railroad, 158 
 XJ. S. 1; DeSoUa'rv. Hanscome, 158 U. S. 216; Last Chance v. Tyler, 157 U. S. 683; 
 Lumber v. Buchtel, 101 U. S. 638. 
 
 The prior suit was brought against defendant company and its agent. The 
 company had the bill dismissed against it for want of jurisdiction, but 
 furnished the funds for the defense. That suit having been decided in favor 
 of the agent, the defendant company now pleads that suit as estoppel on the 
 ground that it sustained the expense of the former suit for its agent. Held: 
 The open dismissal of the Singer Company from that suit upon its own motion 
 was significant of its withdrawal from the litigation, and of its purpose not 
 to be bound by the judgment to be rendered therein. — Singer v. Cramer, 
 109 Fed. 652; 48 C. C. A. 588. Reversed, 192 U. S. 265. 
 
 The plea does meet the declaration (that of infringement), for it alleges 
 that the acts for which defendant is now sought to be held are merely a 
 continuation of the very same acts which were involved in the former litiga- 
 tion and were adjudged not to constitute a cause of action. But this allega- 
 tion was expressly denied in the replication. So an issue of fact was framed, 
 for the determination of which plaintiff was entitled to a jurv trial. — Robin- 
 son V. American, 150 Fed. 331; 80 C. C. A. 127. 
 
 In the former case Heller testified that he was interested in the defense 
 financially and otherwise. Whether intended to be so or not, there is no 
 doubt that the suit against the N. Y. Baking Powder Co. was, in fact, a test 
 case and is controlling in this court upon all questions there decided. We 
 are of the opinion that their participation in the defense of the test suit made 
 the defendants Heller and the N. Y. Hygienic Co. parties privy to that suit 
 and that the testimony of Clotworthy given therein may properly be read 
 against these defendants — Clotworthy having died prior to the hearing. — 
 Rumford v. Hygienic, 159 Fed. 436; 86 C. C. A. 416. Reversed, 215 U. S. 156. 
 
 Each plea states with abundant particularity the issues raised, heard, and 
 decided in the prior equity suit referred to between the parties, and specifies 
 their identity with the subject-matter in controversy here. The prior ad- 
 judication was clearly brought within the elementary rule which bars a 
 second action upon the same claim or demand. — Robinson v. American, 
 159 Fed. 131; 86 C. C. A. 321. 
 
 Cromwell v. County, 94 U. S. 351. 
 
 § 895. Patent OflEice Decisions. 
 
 It would seem that a defendant cannot set up an interference adjudication 
 and rely upon it as res adjudicata when sued for infringement. — Garratt v. 
 Siebert, 98 U. S. 75; 25 L. Ed. 84. 
 
 The question of judicial interpretation of a doubtful question before the 
 Patent Office is not to be regarded as res judicata by that department. — 
 Andrews v. Hovey, 124 U. S. 694; 31 L. Ed. 557; 8 S. Ct. 676. 
 
 In a subsequent suit between the same parties to the decision of the patent 
 office upon the question of priority, the decision there made must be accepted 
 as controlling upon the question of fact in a subsequent suit, unless the
 
 §§ 896-897 ROYALTIES 825 
 
 contrary is established by testimony which, in character and amount, carries 
 thorough conviction. — Ecaubert v. Appleton, 67 Fed. 917; 15 C. C. A. 73. 
 Morgan v. Daniels, 153 U. S. 120. 
 
 It has not been the tendency of the decisions either of the Supreme Court 
 or of the circuit courts of appeal to extend the effect of interference decisions 
 as final adjudications, and we concur with the circuit court in the con- 
 clusion that " while the decision in interference may be res judicata as to 
 priority, it does not preclude defendant from raising other questions not in 
 issue in said proceedings." — Nationally. Wheeler, 79 Fed. 432; 24 C. C. A. 
 663. 
 
 No intimation is intended that such decision is res adjudicata or con- 
 clusive in the present controversy (between the same parties on motion for 
 preliminary injunction) or of other than persuasive effect in reference to 
 the facts thus involved. — Scott v. Laas, 150 Fed. 764; 80 C. C. A. 500. 
 
 § 896. Miscellaneous Rules. 
 
 To make the judgment available as a plea in bar or as conclusive evidence, 
 it must appear that the parties were the same or in privity. The situation 
 must have been such that the Hanks Dental Association (defendant below) 
 would have been estopped from asserting the validity of the patent had the 
 judgment been against Bennett. The mere fact that Bennett and defendant 
 are members of an association which has contributed to the defense of each, 
 does not warrant the conclusion that a judgment in favor of one inures to 
 the benefit of the other in the absence of knowledge by the plaintiff of the 
 true relations between them. The plaintiff must have known at the time that 
 the Hanks Company was contributing to the defense of the Bennett suit. — 
 Hanks v. International, 122 Fed. 74; 58 C. C. A. 180. 
 
 The defendant sought, by showing the invalidity of the patent, to ter- 
 minate the contract. That issue having been raised and merged in the 
 judgment, it is clear that in a suit between the same parties for subsequent 
 installments under the same contract the same question cannot be raised and 
 litigated a second time. — Wilcox v. Sherborne, 123 Fed. 875; 59 C. C. A. 
 363. 
 
 ROYALTIES. 
 
 General Statement and the Decisions I See — Assignment § 149; Damages 
 § 897 1 § 294; License § 760; Profits § 825 
 
 § 897. General Statement and the Decisions. 
 
 Royalties arise out of contract and agreement. A patent is personal prop- 
 erty, and rights arising out of contract and agreement are subject to the 
 general rules relating thereto. So long as it is borne in mind that, unless 
 otherwise specified in the assignment, joint owners are tenants in common, 
 and not by the entirety, there will be little difficulty in applying the general 
 principles underlying contracts to the subject of royalties. 
 
 The question of an established royalty furnishes a measure of damages 
 and a factor for the computation of profits. See Damages and Profits. 
 
 To occasionally take promissory notes from licensees in lieu of cash for 
 accrued royalties would, if done in good faith, not be so far out of the course of 
 ordinary business transactions as to render the licensee liable for losses oc- 
 curring through the insolvency of any of its licensees. In the absence oi
 
 826 THE FIXED LAW OF PATENTS § 897 
 
 any guarantee only diligence and good faith are required. — Thorn v. Wash- 
 burn, 159 U. S. 423 ; 40 L. Ed. 205 ; 16 S. Ct. 94. 
 
 That where the license is founded upon a pending application which is 
 being prosecuted by the licensee, with the result that some of the claims are 
 rejected by the Patent Office and the licensee notifies the licensor that the 
 claims that can be secured are not " worth a pinch of snuff," but at the 
 same time retains his license privilege and neither surrenders the contract 
 nor the patent application, is bound to account for articles manufactured 
 under the contract and embodying the invention as understood at the time 
 the contract was made, see — Eclipse v. Farrow, 199 U. S. 581 ; 50 L. Ed. 317; 
 26 S. Ct. 150. 
 
 U. S. V. Harvey, 196 U. S. 310. 
 
 The decree declares in general terms the rights of the plaintiff to royalties 
 upon all devices manufactured by the defendant and embodying the inven- 
 tions mentioned in the contract, and directs an accounting in accordance 
 with the decree. We are of opinion that these terms warranted the auditor 
 in charging royalties upon any device found to come within the contract. 
 — Eclipse V. Farrow, 199 U. S. 581 ; 50 L. Ed. 317; 26 S. Ct. 150. 
 
 Until the attorney's authority was revoked and the defendants had knowl- 
 edge of it, their settlements with him were a discharge of hability. — Union 
 V. Johnson, 61 Fed. 940; 10 C. C. A. 176. 
 
 That where the license contract covered a period extending beyond the 
 term of the patent under which a part of the royalties arose, in the absence 
 of specific agreement to the contrary, the royalties arising out of such patent 
 cease with the expiration of that patent, although the contract continues in 
 force as to other patents, see— Holmes v. McGill, 108 Fed- 238; 47 CCA. 296. 
 
 That the fact that a licensee has inextricably complicated and confused the 
 profits or returns accruing from sub-letting or territorial sales under a specific 
 royalty agreement with a licensor cannot defeat the right of the licensor to 
 his royalties, see —Western Union %\ Am. BeU,125 Fed. 342; 60 C C A. 220. 
 
 Roj^alties are commonly understood as meaning something proportionate 
 to the use of a patented device; in other words, a kind of excise. Bouvier's 
 Law Dictionary, " Royalty." In its more ordinary meaning it would not 
 literally include the shares of stock for which an accounting is demanded. 
 In some of its uses it is a broader word than " rentals," and yet in other 
 aspects " rentals " is a broader word than " royalties. " Rentals in their 
 ordinary signification are not limited as royalties in their ordinary significa- 
 tion; that is, something proportionate to the use of the patented device. 
 The word " ordinarily " means specific sums paid annually, or at other stated 
 periods, for the right to use a patented device, whether it is used much or 
 little or not at all. — Western Union v. Am. Bell, 125 Fed. 342; 60 C C A. 
 220. 
 
 It is argued that although the contract requires the payment of royalties 
 on all machines " sold or delivered," the intent of the j)arties was that pay- 
 ment should be limited to machines " sold and delivered " and that the court 
 should have so interpreted the contract. We cannot accede to this view. 
 There is no ambiguity about the contract; its language is perfectly plain. 
 In the short clause providing for the payment of royalties the words " sold 
 or delivered " are twice used. There is no room for interpretation. — Con- 
 fectioners' V. PanouaHas, 1.34 Fed. 393; 67 C C A. 391.
 
 §§ 89S-899 SECRET PROCESS OR MACHINE 827 
 
 That in an action to recover royalties under a contract which confined 
 the licensee to manufacture and sell the patented device and no other, 
 it is not necessary for the licensor to prove that the devices made and sold 
 conformed to the claims of the patent, see — Chfford v. Capell, 165 Fed. 193; 
 C. C. A 
 
 SECRET PROCESS OR MACHINE. 
 
 General Rule § 898 
 
 See — Abandontrient § 1; Unpatented Invention § 930 
 
 § 898. General Rule. 
 
 One who makes or vends an article which is made by a secret process or 
 private formula cannot appeal to the protection of any statute creating a 
 monopoly in his product. He has no special property in either a trade secret 
 or a private formula. The process or the formula is valuable only so long as 
 he keeps it secret. The public is free to discover it if it can by fair and honest 
 means, and, when discovered, anyone has the right to use it. — Park v. 
 Hartman, 153 Fed. 24; 82 C. C. A. 158. 
 
 Chadwick v. Covell, 151 Mass. 190; Tabor 1;. Hoffman, 118 N. Y. 30; Peabody 
 V. Norfolk, 98 Mass. 452; Vulcan v. American, 58 Atl. 290. 
 
 SALE OF PATENTED ARTICLE. 
 
 General Statement and Holdings I See — Assignment § 149; License 
 § 899 I § 749 
 
 § 899. General Statement and Holdings. 
 
 The distinctions between the sale of a patented article and the sale of any 
 right under a patent are to be noted. Since the owner of a patent has a close 
 monopoly, he may, provided he gives the proper notice so that the public 
 is not ensnared, sell or otherwise dispose of articles covered by his monopoly 
 with such restrictions as he may impose. While this subject is related to that 
 of license, it differs from it in that a license, generally speaking, deals with 
 some right under the patent, while the sale and purchase of a patented ar- 
 ticle with restrictions deals with the product of the patent, rather than the 
 patent itself. 
 
 The condition against sales to retail dealers who do not sign a similar 
 agreement governing sales by them was imposed by complainant in the ex- 
 ercise of its property right in the monopoly, and for the purpose of rendering 
 it valuable. The complainant had the same right to require that such an 
 agreement be exacted from defendants' vendees that it had to demand it 
 from defendants. Any sale by defendants outside of the terms of their 
 under-license or contract was an invasion of complainant's lawful monopoly. 
 — National v. Schlegel, 128 Fed. 733; 64 C. C. A. 594. 
 
 Undoubtedly, the general rule is that if a patentee make a structure em- 
 bodying his invention, and unconditionally make a sale of it, the buyer 
 acquires the right to use the machine without restrictions, and, when such 
 machine is lawfully made and unconditionally sold, no restriction upon its 
 use will be implied in favor of the patentee. By such unconditional sale the 
 machine passes without the limit of the monopoly. Adams v. Burke, 17 Wall. 
 453 ; Mitchell v. Hawley, 16 Wall. 544. That the complainant has attempted 
 to state a case not within this rule is very obvious, for it charges that every 
 Bale has been under an express restriction as to the use of the invention
 
 g28 THE FIXED LAW OF PATENTS § 899 
 
 embodied in the machine. In view of the conspicuous character of both the 
 machine and the notice permanently affixed thereon, everyone buymg must be 
 conclusively presumed to have notice that the owners of the patents mtended 
 bv the inscription on the machine to grant only a restricted license for 
 its use and it is difficult to see why such purchaser is not to be r^ardcd as 
 acquiring and accepting the structure subject to this restriction. The buyer 
 of the machine undoubtedly obtains the title to the materials embodying 
 the invention, subject to a reverter in case of violation of the conditions 
 of the sale. But, as to the right to use the invention, he is obviously a 
 mere licensee, having no interest in the monopoly granted by the letters 
 patent A license operates only as a waiver of the monopoly as to the li- 
 censee " and estops the licensor from exercising its prohibitory powers in 
 derogation of the privileges conferred by them upon the licensee." Rob. 
 Pat sees 806-808. It has been said that the sole matter conveyed in a li- 
 cense is the right not to be sued. Hawks v. Swett, 4 Hun. 146. A licensee 
 is one who is not the owner of an interest in the patent, but who has, by con- 
 tract acquired a right to make or use or sell machines embodying the 
 invention. Gaylor v. Wilder, 10 How. 477; Oliver v. Chemical, 109 U. S. 
 75. All alienations of a mere right to use the invention operate only as 
 licenses. It must follow, therefore, that the purchaser of one of com- 
 plainant's machines subject to a restricted use takes the structure with a 
 license to use the invention only with staples made by the patentee. That the 
 complainant sells the machine through jobbers and not directly to those 
 who buy or use is immaterial, under the facts stated on the face of the bill. 
 The jobber buys and sells subject to the restriction, and both have notice 
 of the conditional character of the sale, and of the restriction on the use. 
 Supply Co. V. Bullard, Fed. Cas. 294; Cotton v. Simmons, 106 U. S. 89. That 
 the buyer enters into an impHed agreement that he will not use the machine 
 contrary to the terms of his license, and that there is in the agreement a 
 provision for the reverter of the title to the structures, may operate to 
 give the patentee a remedy under general principles of law as for damages 
 for breach of contract or for recovery of the machine. It may be that a 
 suit for breach of contract would not be a suit depending on the patent laws, 
 and would therefore be cognizable by the state courts, as intimated in Hart- 
 ell V. Tilghman, 99 U. S. 547, and White v. Rankin, 144 U. S. 628. The 
 remedy of complainant may be a double one ; for liability may rest either 
 upon the broken contract, or for the tortious use of the invention. Rob. 
 Pat. sees. 1225-1250 & n. If a patentee may lawfully make and sell ma- 
 chines embodying his invention, and restrict the use of the invention in 
 respect of territory or time or business, or purposes to which it may be put, or 
 material to be used in conjunction therewith, it would seem very obvious 
 that the effect of the restrictions and limitations on the use would operate to 
 prevent the machine from passing, as in the case of an unconditional sale, 
 beyond the monopoly of the patent. The control reserved by the patentee 
 as to the use of the machine has the effect of continuing it within the pro- 
 hibition of the monopoly. The license defines the boundaries of a lawful 
 use, and estops the hcensor from the assertion of his monopoly contrary to its 
 terms. On the other hand, a use prohibited by the Hcense is a use in defiance 
 of the monopoly reserved by the patentee, and necessarily an unlawful inva- 
 sion of the rights secured to him by his patent. The license would be no 
 defense for a suit for infringement by a use in excess of its terms. The 
 patentee has the exclusive right of use, except in so far as he has parted with 
 it by his license. The essence of the monopoly conferred by the grant of 
 letters patent is the exclusive right to use the invention or discovery de- 
 scribed in the patent. This exclusive right of use is a true and absolute 
 monopoly, and it is granted in derogation of the common right, and this right 
 to monopolize the use of the invention or discovery is the substantial property
 
 §§ 900-901 
 
 SPECIFICATION 
 
 829 
 
 right conferred by law, and which the pubhc is under obhgation to respect 
 and protect. " The rights to make and use or sell, are completely severable 
 rights, and involve the right to confer on others such qualified privilege, 
 whether of making, of selling to others or of using, as he sees fit, whether 
 within specified limits, or under Umitations of quantity or numbers, or 
 restricted use." Dorsey v. Bradley, Fed. Cas. 4,015. In Adams v. Burke, 
 17 Wall. 453, the court said, " The right to manufacture, the right to sell, 
 and the right to use, are each substantive rights, and may be granted sepa- 
 rately, or conferred together by the patentee." — Heaton v. Eureka, 77 
 Fed. 288; 25 C. C. A. 267. 
 
 SPECIFICATION. 
 
 Statutory Requirements § 900 
 General Statement § 901 
 Amendment § 902 {see § 52) 
 Construction § 903 
 Defective § 904 
 Sufficiency 
 
 Accuracy § 905 
 
 Alternative Constructions § 906 
 
 Ambiguity § 907 
 
 Distinguishing New from Old § 908 
 
 Equivalents § 909 (see § 373) 
 
 Excessive § 910 
 
 Function § 911 {see § 426) 
 
 Immaterial Error § 912 
 Old Parts § 913 
 Process § 914 {see § 813) 
 Rules for Determining § 915 
 Scientific I^owledge § 916 
 Unambiguousness § 917 
 Two Inventions. One Patent § 918 
 Miscellaneous Rules § 919 
 See — -Amendment § 52; Attorneys 
 § 178; Claims §§ 212, 223; Defenses 
 §§ 309, 317; Drawings § 362; Oath 
 §779 
 
 § goo. Statutory Requirements. 
 
 Before any inventor or discoverer shall receive a patent for his invention 
 or discovery, he shall make application therefor, in writing, to the Com- 
 missioner of Patents, and shall file in the Patent Office a written description 
 of the same, and of the manner and process of making, constructing, com- 
 pounding 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 contemplated 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. The specification and claim shall be 
 signed by the inventor and attested by two witnesses. R. S. 4888. 
 
 Every patent shall contain a short title or description of the invention or 
 discovery, 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 invention or discovery throughout the United 
 States and the Territories thereof, referring to the specification for the 
 particulars thereof. A copy of the specification and drawings shall be an- 
 nexed to the patent and be a part thereof. — R. S. 4884. 
 
 Sections 490 and 491 provide for the printing, publication and depositing 
 of patent specifications in state capitols, district court clerk's offices and the 
 Library of Congress. 
 
 § go I. General Statement. 
 
 The term " specification " is used in a two-fold and confusing manner. 
 As used in the statutes it means both the descriptive portion and the claims.
 
 830 THE FIXED LAW OF PATENTS §§ 902-903 
 
 As commonly used by the Patent Office and by patent attorneys it 
 means the descriptive portion alone. The courts use the term in both ways, 
 but the tendency in the more recent decisions is to mark the distinction as 
 the Patent Office has done. Instances will be found, moreover, where the 
 courts have made the term cover description, claim, and drawings as well. 
 
 The relation of the descriptive portion — the specification in the more 
 restricted sense — to the claims, may not be established in a brief statement. 
 While it is a general rule that the claims may not be broadened by reference 
 to the specification, it is none the less true that, in applying the doctrine 
 of equivalents in the case of a patent for a generic invention, this rule is 
 often winked at. On the other hand, the large service of the specification 
 is to locate the invention with reference to the prior art, to enable the courts 
 to delimit the claims. 
 
 In the examination of a patent it is always to be borne in mind that it is 
 the common practice of patent solicitors to draw the specification in broad 
 terms and to submit to the Patent Office claims of undue scope. The claims 
 are amended, pruned and restricted, and often cover only a fragment of the 
 subject-matter of the specification. The bad practice prevails in the Patent 
 Office of allowing the specification to stand with its broad disclosure; so 
 that it generally remains for the lawyer or the court to discover, by reference 
 to the claims and to the file wrapper contents, the true scope of the specifi- 
 cation. 
 
 This title, generally speaking, needs to be considered in connection with 
 
 Claims (§§ 187-249) and Equivalents (§§374-380). 
 
 § 902. Amendment. 
 
 The fact that there were changes made in the specification does not imply 
 a different invention disclosed. (This applied to changes in specification 
 on reissue under the old law and does not apply under the act of 1870). 
 — O'Reillys. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 A change in the specification as filed in the first instance, on the subse- 
 quent filing for a new one, whereby a patent is still sought for the substance 
 of the invention as originally claimed, or a part of it, cannot in any wise 
 affect the sufficiency of the original application or the legal consequence 
 flowing from it. — Godfrey v. Eames, 68 U. S. 317 ; 17 L. Ed. 684. 
 
 § 903. Construction. 
 
 Specifications are to be construed liberally, in accordance with the design 
 of the constitution and patent laws, to promote the progress of the useful arts, 
 and allow inventors to retain to their own use, not anything which is matter 
 of common right, but what they have themselves created. — Winans v. 
 Denmead, 15 How. 330; 14 L. Ed. 717. 
 
 Grant v. Raymond. 6 Pet. 218: Ames v. Howard, 1 Sumn. 482; Blanchard v. 
 Sprague, 3 Sumn. 535; DavoU v. Brown, 1 Wood. & M. 53; Parker v. Haworth, 
 4 McLean, 372; LeRoy v. Tatham, 14 How. 181; Neilson v. Hartford, 1 Web. 
 P. C. 341; Russell v. Cowley, 1 Web. P. C. 470; Burden v. Winslow, 15 How. 683. 
 
 Doubtless a claim is to be construed in connection with the explanation 
 contained in the specification, and it may be so drawn as in effect to make 
 the specification an essential part of it; but since the inventor must particu- 
 larly specify and point out the part, improvement or combination which 
 he claims as his own invention or discovery, the specification and drawings 
 are usually looked at for the purpose of better understanding the meaning 
 of the claim, and certainly not for the purpose of changing it and making it
 
 §903 SPECIFICATION 831 
 
 different from what it is. — Howe v. National, 134 U. S. 388; 33 L. Ed. 
 963; 10 S. Ct. 570. 
 
 White V. Dvmbar, 119 U. S. 47. 
 
 Change through disclaimer cannot change interpretation of invention. - 
 Grant I WalteF, 148 U. S. 547; 37 L. Ed. 552; 13 b. Ct. 699. 
 
 The patent is not addressed to la^sTers, or even to the public generally, 
 but to the manufacturers of steel; and any description which is sufficient 
 to aoDrise them in the language of the art of the definite feature of the 
 mSn! and to serve as a warning to others of what the patent claims as a 
 monopoly, is sufficiently definite to sustain the patent. He may assume that 
 what was' already known in the art of rnanufacturmg steel ^^l^^-l^'^ 
 them. — Carnegie v. Cambria, 185 U. S. 403; 46 L. Ed. 968, 22 S. Ct. 698. 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 In the reissue this function of the removable cap is omitted from the de- 
 scription. The drawings remain the same, but the retention there of he 
 parts omitted from the description does not help the effect of the 
 omission. - Adee v. Mott, 55 Fed. 876; 5 C. C. A. 288. 
 
 James v. Campbell, 104 U. S. 356. 
 
 WhUe it is admitted, both as to the drawings and as to the written specifi- 
 cations that such variations in an apparatus, m form, shape and propor- 
 tions as common sense or mechanical skill would.suggest to one skilled in he 
 art are inferred still it carries the doctrine to its very verge; and, if the 
 Sawings and specifications fail to indicate the device to those conversant 
 wi?h the art and having the mechanical skill pecuhar thereto they are in- 
 rufficient and the patent does not include the device. - Michigan .. Con- 
 solidated, 67 Fed. 121; 14 C. C A. 232. 
 
 It may not be denied that the specification and the first claim of the patent 
 are couched in unskilful language; but in the case of a novel and useful 
 invention the terms employed should, if possible, receive a construction 
 Xch ;'Si uphold and nof defeat the Patentee's right to that whi^^^^ he has in 
 fact invented. - Red Jacket v. Davis, 82 Fed. 432, 2/ C. C. A. 2U4. 
 
 The lanffuage of the Booth patent which we are called upon to consider 
 is If eas> ?^mprehension. The following observations of the Supreme Court 
 
 ''" Tl^words'used are not technical, either as having a special sense^by 
 commerc^aTusagrnor as having a scientific meaning different from hei 
 popXr meaninl. Thev are the words of comrnon speech and as such their 
 fntCet'tion i1 within the iudicial kno.^edge, and therefore matter of 
 law " Marvel v. Merritt, 116 U. S. 11, 12, 6 Sup. Ct. 20/ . 
 
 In Norton v. Jensen, 49 Fed. 859, the circuit court of appeals for the Ninth 
 
 '"'' n tlif reaioiis given by the expert witness are deemed reasonable and 
 satisfactory the court may adopt them; but, if they are unsatisfactory, the 
 rfurtwm discard ?hrtestim act upon its own knowledge and judg- 
 
 ment It is always the duty of the courts to construe the patent by reference 
 Tote language irthe claims and an examination of the specification and 
 
 '^rNSirnT/^lS m" 8^ this court speaking by Judge Butler, 
 in refusing to gix^ controlling effect to the testimony of a competent me- 
 chanic ^^o stated that, by following the directions of an earlier patent, he 
 had mkde a device identical with the one in controversy, said.
 
 832 THE FIXED LAW OF PATENTS § 904 
 
 " If a valuable patent might be overthrown in this manner by the testi- 
 mony of an expert, without careful inquiry into, and virtual demonstra- 
 tion of, its correctness, the rights of patentees would rest upon the testi- 
 mony of suh witnesses, rather than the judgment of the court." — 
 Hanifen v. Godshalk, 84 Fed. 649; 28 C. C. A. 507. 
 
 It is well settled that a description in a specification of details which the 
 claim does not make elements of the combination, and which are not essen- 
 tial to it, is to be held as only pointing out the better method of using the 
 combination. — Boston v. Allen, 91 Fed. 248; 33 C. C. A. 485. 
 
 In the construction of a patent, the omission of the patentee to point' out 
 or refer in his specifications or claims, to the special feature which he sub- 
 sequently maintains is the most important part of his invention, is very 
 significant, and should be carefully scrutinized. — MacColl v. Knowles, 95 
 Fed. 982; 37 C. C. A. 346. 
 
 Union v. Keith. 139 U. S. 530; McClain v. Ortmayer, 141 U. S. 419; 
 Bearing v. Harvester, 155 U. S. 286; White i'. Dunbar, 119 U. S. 47; Burns v. 
 Meyer, 100 U. S. 671. 
 
 A careful study of the great mass of words with which the draughtsman 
 of the patent seems to have sought to magnify the .invention, shows how 
 extremely slight is the improvement upon which complainant relies. — 
 Lyons v. Drucker, 106 Fed. 416; 45 C. C. A. 368. 
 
 The suggestion that the description commencing with the words " in 
 carrying out my process practically I proceed as follows," is only one specific 
 example of the invention is not to be accepted. There is nothing in the patent 
 to support the suggestion. Undoubtedly the specification, as a whole, evinces 
 that the invention is limited to the para product. We cannot see that 
 Matheson v. Campbell, 78 Fed. 910, decides anything favorable to the con- 
 tention of this appellant. The facts there differed radically from the facts 
 in this case. The patent (in suit) unlike the patent involved in Matheson v. 
 Campbell is distinctly Umited to one individual product, fully described and 
 unmistakably identified. — Maurer v. Dickerson, 113 Fed. 870; 51 C. C. A, 
 494. 
 
 Where an alleged element or characteristic feature of an invention is not 
 necessarily inherent in the invention itself, the failure of the patentee to 
 refer to such alleged feature is persuasive evidence that it is not within the 
 scope of his invention, and, not being disclosed to the public, it should not be 
 read into the patent. — Edison v. Grouse, 152 Fed. 437; 81 C. C. A. 579. 
 
 As he describes only one organization of means for that purpose, he is 
 restricted to that, or substantially that. The liberality of construction 
 which we think may be given to his claim for the purpose of interpreting it 
 cannot be extended to include all means which might be devised to accom- 
 plish even a like result, without such a perversion of the rule applied as would 
 disturb other well-settled doctrines of the patent law. — American v. Cleve- 
 land, 158 Fed. 978; 86 C. C. A. 182. 
 
 § 904. Defective. 
 
 The principle is this : the omission to mention in the specification something 
 which contributes only to the degree of benefit, providing the apparatus 
 would work beneficially and be worth adopting without it, is not fatal,
 
 § 904 SPECIFICATION 833 
 
 while the omission of what is known to be necessary to the enjoyment of 
 the invention is fatal. — Sewall v. Jones, 91 U. S. 171 ; 23 L. Ed. 275. 
 Curtis, sec. 248. 
 
 If this were a blunder of an ignorant solicitor, they had ample opportunity 
 to correct it by reissue; but, having allowed it to stand in their patent, they 
 must be held to their declaration that reducing agents will produce this re- 
 sult. It has been suggested that since the evidence shows that alpha- 
 naphthaline would not be formed out of the product of the patent by re- 
 ducing agents, and that persons skilled in the art would know that fact, 
 the entire test may be rejected as nonsensical surplusage. But there must be 
 some hmit to a court's functions in rewriting patents. Assuming that all 
 the imperfections in this patent were due to an ignorant solicitor, remote 
 from his clients, — and it may be noted that there is no evidence of this, — 
 it does not follow that all should be disregarded. We held, as to the error and 
 omission of paragraph 4, that the omission was really supplied elsewhere 
 in the patent; that the error was harmless, since the skilled workman 
 would himself substitute " nitrite " for " nitrate; " and that, although the 
 error must stand in the patent where the patentee's careless solicitor had 
 placed it, we would not infer from its presence that it was due to a fraudulent 
 design to mislead, formed and carried out by the patentees. But here there 
 has been an identif\ing test put into the patent by the solicitor; the patentee 
 accepts such patent, and applies for no reissue, alleging no mistake; and 
 the court is asked to strike out the test altogether, as ridiculous surplusage. 
 In the absence of any authority for such action, we are unwilling to establish 
 the precedent. But what their solicitors do, patentees should abide. If 
 they are dissatisfied with the letters patent their solicitors obtain, they may, 
 in proper cases, apply for a reissue; but when they accept their origmal 
 patents without objection, they must be assumed to have assented to such 
 changes as were made by their solicitors in specification or claim while their 
 application was on its way through the patent office. — Matheson v. Campbell, 
 78 Fed. 910; 24C. C. A.284. 
 
 The applicants for this patent were in Europe and their solicitor here 
 evidently knew little, if anything, about the chemistry of azo products; 
 and there is nothing in the record to suggest that the changes which the so- 
 licitor made were due to anything except his own ignorance, or that he had 
 any intent to mislead or to conceal. It is not doubted that an apphcant 
 is bound by the acts of his solicitor, but this contention seems to go beyond 
 this wholesome rule when it seeks to void a patent, upon the theory of a 
 fraudulent conceahnent or fraudulent misrepresentation because, through 
 the solicitor's ignorance, the specifications, when describing the process of 
 manufacture, contain some immaterial error or omission, which could not 
 mislead a person skilled in the art. — Matheson v. Campbell, 78 Fed. 910; 
 24 C. C. A. 284. 
 
 An immaterial error in the specification of a patent which would not mis- 
 lead one skilled in the art will not invalidate the patent. — Matheson v. 
 Campbell, 78 Fed. 910; 24 C. C. A. 284. 
 
 There is alack of anything in the record showing what is the pith of the 
 alleged invention or what was the real advance in the art, if any, which it 
 accomplished. The specification of the patent was equally lacking. In 
 holding the patent bad, the court said: whether these changes cover anything 
 of a substantial character, or whether they relate to mere detail of form 
 or to mere convenience, or to mere matter of fancy, the proofs in this record 
 do not show. — Nutter v. Brown. 98 Fed. 892; 39 C. C. A. 332.
 
 334 THE FIXED LAW OF PATENTS § 905 
 
 Mfg. Co. V. Holtzer, 67 Fed. 907; Hasten v. Hunt, 55 Fed. 78; Fastener Co. 
 V. Edgarton, 96 Fed. 489. 
 
 No proportions are given, and, indeed, not a word is said in the patent 
 from which any one desiring to use the process described thereui can deter- 
 mine the " definite quantity " or the " exact quantity " referred to in the 
 claims. In the absence of specific information upon the subject, the desired 
 quantity can, in the nature of things, be determined only by experiment. — 
 De Lamar v. De Lamar, 117 Fed. 240: 54 C. C. A. 272. 
 
 MitcheU v. Tilghman, 19 Wall. 287; Bene v. Jeantet, 129 I^ S. 683; Howard 
 V Stove Works, 150 U. S. 164; Schneider v. Lovell, 10 Fed. 666; Welling v. 
 Crane, 14 Fed. 571; Lockwood v. Faber, 27 Fed. 63; Chemical v. Raymond, 71 
 Fed. 179. 
 
 Note: On this proposition, as applied, both Gilbert and Morrow, JJ. 
 dissented from the opinion of Ross, J. There is not the slightest doubt but 
 that the dissent was well founded. 
 
 If this information (the volume of air required and what is meant by a 
 practically closed grate) can be obtained only by experiment, as the experts 
 all agree, the defect is fatal to the claim. — Germer v. Art, 150 Fed. 141; 80 
 C. C. A. 9. 
 
 Incandescent Lamp Pat. 159 U. S. 465; Goodyear v. Rubber, 110 Fed. 363. 
 
 If his had been the first of such burners, perhaps this would have been 
 sufficient. But in the then state of the art he was bound to differentiate his 
 structure from those which preceded him; and especially is this so when the 
 whole merit of his invention depends upon some peculiaiily in the elements 
 he employs. We think it may be affirmed as a rule resting upon the funda- 
 mental principles of patent law that, when the essence (^f the invention is 
 the location, form, size, or any other characteristic of the means employed, 
 the patentee must distinctly specify the peculiarities in which his invention 
 is to be found. — American v. Steward, 155 Fed. 731 ; 84 C. C. A. 157. 
 
 Store Co. v. Store Co. 150 Fed. 141; BuUock v. Gen. Elect. 149 Fed. 409. 
 
 Note: A questionable decision — refusing to follow C. C. A. 2nd Circ. 
 128 Fed. 599. 
 
 § 905. Sufliiciency — Accuracy. 
 
 There are some further and laudable objects in having exactness, to this 
 extent, so as, when the specification is presented, to enable the commissioner 
 of patents to judge correctly whether the matter claimed is new or too 
 broad; to enable courts, when it is contested afterwards before them, to 
 form a like judgement; that the public may be able to understand what 
 the patent is and refrain from its use. — Hogg v. Emerson, 6 How. 437; 12 
 L. Ed. 505. 
 
 3 Wheat. 454; 3 Brod. & Bingh, 5; 1 Starkie N. P. 199; 1 Starkie N. P. 192; 
 Web. on Pat. 86; 11 East. 105; 3 Merivale, 161; Evans v. Eaton, 3 Wash. 453; 
 4 Wash. 9; Bovill v. Moore, Davis Cas. 361; Lowell v. Lewis, 1 Mas. 182. 
 
 When a man supposes he has made an invention or discovery useful in the 
 arts and, therefore, the proper subject of a patent, it is, nine times out of 
 ten, an improvement on some existing article, process or machine, and is 
 useful only in connection with it. It is necesssary, therefore, for him, in his 
 application to the Patent Office to describe that upon which he engrafts 
 his invention, as well as the invention itself; and, in cases where the inv^ention 
 is a new combination of old devices, he is bound to describe with particu- 
 larity all these old devices, and then the new mode of combining them, for 
 which he desires a patent. It thus occurs that, in every application for a
 
 S 905 SPECIFICATION 835 
 
 patent, the descriptive part is necessarily largely occupied with what is 
 not new, in order to an understanding of what is new. — Merrill v. Yeomans. 
 94U. S. 568; 24 L. Ed. 235. 
 
 Inventors, before they can receive a patent, are required to file in the 
 Patent Office a written description of their invention, and of the manner and 
 process of making and using the same, in such full, clear, concise and exact 
 terms as to enable a person skilled in the art to make, construct and use the 
 same. — Bates v. Coe, 98 U. S. 31 ; 25 L. Ed. 68. 
 
 Accurate description of the invention is required by law for several im- 
 portant purposes. (1) That the government may know what is granted and 
 what will become public property when the monopoly expires. (2) That 
 licensed persons desiring to practise the invention may know, during the 
 term, how to make, construct and use the invention . (3) That other inventors 
 may know what part of the field of invention is unoccupied. — Bates v. Coe, 
 98U. S. 31; 25 L.Ed. 68. 
 
 GiU V. Wells, 22 Wall. 27. 
 
 WTien the question is whether a thing can be done or not, it is always easy 
 to find persons ready to show how not to do it. But it stands composed 
 that the thing has been done ; that is to say, the contrivance which Webster 
 claims in his patent has been applied and very successfully so. If the thing 
 could not be understood without the exercise of inventive power, it is a little 
 strange that it should have been so easily adapted to looms on which it has 
 been used and produced such striking results. — Loom Co. v. Higgins, 105 
 U.S. 580; 26L. Ed. 1177. 
 
 The direction given in the patent is, that the flange or lip is to be sepa- 
 rated from the valve seat by about one sixty-fourth of an inch for an ordi- 
 nary spring, with less space for a strong spring and more space for a weak 
 spring, to regulate the escape of the steam, as required. As matter of Ir-w, 
 this description is sufficient within the rule laid down in Wood v. Underbill, 
 5 How. 1, and it is not shown to be insufficient, as a matter of fact. — Con- 
 soHdated v. Crosby, 113 U. S. 157; 28 L. Ed. 939; 5 S. Ct. 513. 
 
 The provisions of the law regulating the granting of patents, which require 
 an inventor to advise the world of his invention by a specific description 
 thereof, and, by a definite claim, to obtain property in just so much of the 
 invention as he seeks to appropriate, are essential that it may be known how 
 much he has acquired as his own, and how far the public are to be restricted 
 in the use of the invention. This specific description is open to be examined 
 by all having occasion to enter that field of use or invention. — Ross-Moyer 
 V. Randall, 104 Fed. 355; 43 C. C. A. 578. 
 
 Fay V. Cordesman, 109 U. S. 420. 
 
 That in the description of a basic electrical process, mere relative state- 
 ments of the amount of power required are sufficient, see — Electric v. Pitfs- 
 burg, 125 Fed. 926; 20 C. C. A. 636. 
 
 Inasmuch as the term " fire-brick,/' if used in the patent, would not have 
 sufficiently identified the peculiar product to enable one skilled in the art 
 to produce the patented product, but would have obliged him to experiment 
 with various materials known under said name, we think the patentee was 
 justified in the use of the said v/ord (chamotte); that it may even have been 
 necessary to a full disclosure of his alleged invention ; and that, in view of 
 the evidence, the court correctly found that fire-brick was not necessarily
 
 836 THE FIXED LAW OF PATENTS §§ 906-908 
 
 the equivalent of chamotte. — Paiizl v. Battle Island, 138 Fed. 48; 70 C. C. A. 
 474. 
 
 § 906. Sufficiency — Alternative Constructions. 
 
 Accordingly when the inventor says, " I recommend the folhnving method " 
 he does not thereby constitute such method a portion of his patent. His 
 patent may be infringed though the party does not follow his recommenda- 
 tion but accomplishes the same end and by another method. — Sewall v. 
 Jones, 91 U. S. 171 ; 23 L. Ed. 275. 
 
 The fact that the inventor said he preferred one of two methods de- 
 scribed and claimed "does not limit him to that one method. — Telephone 
 Cases, 126 U. S. 1 ; 31 L. Ed. 863; 8 S. Ct. 778. 
 
 It seems to have been the effort of the draftsman to frame the specifica- 
 tions and claims so that any desirable limited or broad construction may be 
 placed upon several of the claims, and thus defeat a defense of anticipation 
 or of noninfringement (a multiplicity of constructions are shown in the 
 drawings). If their enumeration serves any purpose except to point out the 
 adaptability of the cap to use with such parts, it can only be to so restrict 
 the claim that the making of the cap, or its use without them, would not 
 infringe the patent. — Crown v. Standard, 136 Fed. 841 ; 69 C. C. A. 200. 
 
 § 907. Sufficiency — Ambiguity. 
 
 Although the specification may describe the invention in technical terms 
 which would be understood only by one skilled in that particular art, and 
 although the specification presupposes a familiarity with the class of machines 
 to which the invention belongs, and does not describe the elements or func- 
 tions of such machine so long as the specification is technically intelligible 
 it is not open to the attack of ambiguity or insufficiency. — Loom Co. v. 
 Higgins, 105 U. S. 580; 27 L. Ed. 1177. 
 
 § 908. Sufficiency — Distinguishing New from Old. 
 
 In all cases where his claim is for an improvement on a machine it will 
 be incumbent on him to show the extent of his improvement, so that a person 
 understanding the subject may comprehend distinctly in what it consists. 
 — Evans v. Eaton, 3 Wheat. 454; 4 L. Ed. 433. 
 
 While it is true that the patentee is not required to point out and describe 
 in express language what he has invented that is new, or the principle of his 
 invention, and that it is sufficient if. they can be gathered by implication 
 from what is not set forth, yet the implications ought to be clear, so that 
 it may not be left in obscurity and doubt whether the patentee has in reality 
 invented and produced something new if nothing appears by express dec- 
 laration or reasonably clear implication, to show that the patentee has made 
 some new and valuable discovery, has thrown a light into a place which before 
 was dark, and illumined what was inert, there is nothing in the patent law 
 to give him any stancUng. — Wells v. Curtis, 66 Fed. 318; 13 C. C. A. 494. 
 
 Rob. Pat. sec. 79. 
 
 A fatal defect in claim 2 arises out of the w^ords " at or near." We have 
 seen that there is nothing in the specification to limit the indefinite nature 
 of these words. Consequently, there is not enough in the patent to meet 
 the requirements of the statute, pointing out the method by which a success- 
 ful last can be made in accordance with the claim, and no useful last without
 
 $§909-911 SPECIFICATION 837 
 
 a holder was ever made until the respondent came into the field- — Miller v. 
 Mawhinney, 105 Fed. 523; 44 C C. A. 581. 
 
 It is the duty of the patentee to disclose his invention, that the public may 
 be able to practise it when the monopoly expires. This disclosure should 
 include the mode of operation as well as a method of construction. — Good- 
 year V. Rubber, 116 Fed. 363 ; 53 C. C. A. 583. 
 
 Bates V. Coe, 98 U. S. 31; Wells v. Curtis, 66 Fed. 318; Kelly r. Clow, S9 Fed. 
 297. 
 
 If it was an essential part of his invention to so weaken the enclosing 
 head that the entire head will yield, it was his duty under the statute to 
 distinctly so state. — Neptune v. National, 127 Fed. 563 ; 62 C. C. A. 345. 
 
 Incandescent Lamp Pat. 159 U. S. 465; Chemical v. Raymond, 71 Fed. 179. 
 
 Suppose the artisan wishes to construct a device and does not wish to 
 use that of the patent, how shall he know in what manner he shall avoid 
 the patent? Or suppose a purchaser wishes to buy one. He must look 
 out for the patent. By what test or com.parison shall he be guided? These 
 inquiries enforce the rule that the patentee must describe with sufficient cer- 
 tainty the particulars of his invention so that the artisan and the public 
 may know the character and limits of it, and how it is to be distinguished 
 from others which the one mav name, or the other purchase in safety. — 
 Bullock V. General, 149 Fed. 409; 79 C. C. A. 229. 
 
 Guidet V. Brookh-n, 105 U. S. 550; Preston v. Manard, 116 U. S. 661: Howard 
 V. Detroit, 150 U. S. 168; Incandescent Lamp Pat. 159 U. S. 465. 
 
 § 909. SuflEiciency — Equivalents. 
 
 An inventor cannot " speculate on the equivalents of his claimed invention, 
 and thereby oblige the public to resort to experiments in order to determine 
 the scope of the claims of his patent." — Panzl v. Battle Island, 138 Fed. 
 48; 70C. C. A.474. 
 
 Matheson v. Campbell, 69 Fed. 597; Matheson v. Campbell, 78 Fed. 910. 
 
 The patentee took pains to point out that " the specific construction of 
 the mechanism shown is not essential." This was unnecessary precaution; 
 the law gave him ample protection in this regard. — International v. Dey, 
 142 Fed. 736; 74 C. C. A. 68. 
 
 Machine v. Murphy, 97 U. S. 120. 
 
 § 910. Sufficiency — Excessive. 
 
 An excessive description does not injure the patent imless the addition 
 be fraudulent. — Sewall v. Jones, 91 U. S. 171 ; 23 L. Ed. 275. 
 Curtis, sec. 248. 
 
 § 91 1. Sufficiency — Function. 
 
 If any separate function had been performed by the combination it should 
 have been pointed out in the specification. — Union v. Keith 139 U. S. 
 530; 35 L. Ed. 261; 11 S. Ct. 621. 
 
 It is not material that Gorham did not describe in full all the beneficial 
 functions to be performed by the parts of his machine, if those functions 
 are evident in the practical operation thereof, and are seen to contribute 
 to the success of his de\nce. It is difficult to believe that a man of Gorham's 
 inventive genius did not perceive the useful functions which the parts of
 
 838 THE FIXED LAW OF PATENTS §§ 912-914 
 
 his machine so well performed, even though he did not specifically mention 
 them all. — McCormick v. Aultman, 69 Fed. 371 ; 16 C. C. A. 259. 
 Eames v. Andrews, 122 U. S. 40. 
 
 It is not material that the inventor did not describe in full all the beneficial 
 functions to be performed by the parts of his machine, if those functions 
 are evident in the practical operation thereof, and are seen to contribute 
 to the succesd of his device. — McCormick v. Aultman, 69 Fed. 371 ; 16 
 C. C. A. 259. 
 
 Eames v, Andrews, 122 U. S. 40. 
 
 An inventor is not required to describe in full all the beneficial functions 
 to be performed by his machine. If the thing accomplished is a necessary 
 consequence of the improvement made and described, making it obvious 
 that the inventor intended the thing accomplished, though not specifically 
 pointed out, he is entitled to the benefit thereof in construing his patent 
 — Stilwell-Bierce v. Eufaula, 117 Fed. 410; 54 C. C. A. 584. 
 
 Goshen v. Bissell, 72 Fed. 67; Dowagiac v. Superior, 115 Fed. 886. 
 
 It is objected that there is no reference in the specification to the fact 
 that the object of the invention was to produce a fabric capable of being 
 fleeced. But it is well settled that the patentee is not obliged to state all 
 the objects of his invention, and that he is protected in all the beneficial 
 uses thereof within its scope ; and here no statement as to fleecing was 
 necessary. — Scott v. Fisher, 145 Fed. 915; 76 C. C. A. 447. 
 
 § 912. Sufficiency — Immaterial Error. 
 
 If the current moves and escapes just as the inventor provided it should, 
 and by the means he had provided, and produces the useful result he intended, 
 can it make any difference in the validity of the patent that he was mis- 
 taken in his explanation of the physical causes of the downward direction 
 of the currents? — Emerson v. Nimocks, 99 Fed. 737; 40 C. C. A. 87. 
 
 § 913. Sufficiency — Old Parts. 
 
 He need not describe particularly and disclaim all the old parts. — Hogg 
 V. Emerson, 6 How. 437; 12 L. Ed. 505. 
 
 There is nothing in the patent law which compels the applicant to point 
 out what elements are or are not new in the combination claimed. — 
 Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 § 914. Sufficiency — Process. 
 
 The specification must be in such full, clear and exact terms as to enable 
 one skilled in the art to which it appertains to compound and use the inven- 
 tion ; that is to say, to compound and use it without making any experiments 
 of his own. — Wood v. Underbill, 5 How. 1 ; 12 L. Ed. 23. 
 
 Now, a machine which consists of a combination of devices is the subject 
 of invention, and its effects may be calculated a priori; while a discovery 
 of a new substance by means of chemical combinations of known materials 
 is empirical, and discovered by experiment. Where patent is claimed for 
 such discovery, it should state the component parts of the new manufacture 
 claimed with clearness and precision, and not leave the person attempting to 
 use the discovery to find out by experiment. — Tyler v. Boston, 74 U. S. 327: 
 19 L. Ed. 93.
 
 J 915 SPECIFICATION 839 
 
 A Drocess though new and useful, in order that the patent thereon may be 
 vaM mSlescTibe the steps in such full and exact terms, avoiding unneces- 
 lary p'o'lxity as to enable a person skilled in the art to employ the same. - 
 Mowry V. Whitney, 81 U. S. 20 ; 620 L. Ed. 860. 
 
 Fverv oatent for a product or composition of matter must identify it so 
 
 thatTtTan be recognize^d aside from the description of the process for making 
 
 ' 1; el?e nothing'can be held to infringe the Patent winch .s not mad by 
 
 that process. — Cochrane v. Badische, 111 U. S. 293, 28 L. M. 4dd, ^ d. ^t.. 
 
 455. 
 
 It is immaterial that the philosophy of this P^«f ^^^^^ be*te;und^^^^^^^^^ 
 tn fiflv thin it was when the patent was issued, so long as the requirements 
 SthjXi -ullnot be c'omplied with by one sk'lM - the ar^unle^ 
 he did in fact so use the process. - Edison v. U. S. 52 Fed. 300, 3 C. ^. a. 
 83. 
 
 P.+pnt., fsnch as this) should be so plain under the statute as that an 
 
 ryXtStti'"„f.;i rfpa'tent to carry out successfully .ts processes. - 
 Matheson v. Campbell, 78 Fed. 910; 24 C. 0. A. 284. 
 
 CCA. 341. 
 'xhe patentee -saving Mly described -^^^^^ rt^ul^f ht "4^ 
 
 to any other methods of practising it. - Electric v. CarDorunaun , 
 618; 42 C. C. A. 537. 
 
 Tilghman v. Proctor, 102 U. S. 707. 
 
 It is we,, settled that when g Pa|ent contains^^^^^^^^^^^^ ^^ 
 
 rz-^ard^^ttiror^Lt'-^.J^^^^^ 
 
 grant. - Hemolin v. Hardway, 138 Fed. 64, 70 O. t. A. 4SU. 
 
 Inasmuch as the discovery of a new -bsta.^ by mea^ °I qtrS' thaX 
 
 S!;?iirsT;:L-th5»^^^ 
 
 ^t^TtZ^^ s'rf S„r. Fi*e, . Mason, U2; Matheson . 
 Campbell, 69 Fed. 597. 
 
 5 ois. Sufficiency - Rules for Determining. 
 
 w! do not say that the P-ty i^b"™d » desc"be the old maotae ; b^^^ 
 
 ::,Z tirr prt'S: Snrov^S^nt^'Evans . EaL, 7 Wheat. 
 356; 5 L. Ed. 472.
 
 840 THE FIXED LAW OF PATENTS § 915 
 
 The specification has two objects: one is to make known the manner of 
 construction so as to enable the artisans to make and use it, and thus to give 
 the pubhc the full benefit of the discovery after the expiration of the patent. 
 The other is to put the public in possession of what the party claims as his 
 invention, so as to ascertain if he claims anything that is in common use, 
 or is already known, and to guard against prejudice or injury from the use 
 of an invention, which the party may otherwise innocently suppose not to 
 be patented. It is therefore, for the purpose of warning an innocent pur- 
 chaser, or other persons using a machine, of his infringement of the patent; 
 and at the same time taking from the inventor the means of practising upon 
 credulity, or the fears of other persons by pretending that his invention is 
 for more' than what it really is, or different from its ostensible objects. — 
 Evans v. Eaton, 7 Wheat. 356; 5 L. Ed. 472. 
 
 The specification is an integral part of the letters patent under our system. 
 — Hogg t;. Emerson, 6 How. 437 ; 12 L. Ed. 505. 
 
 Whoever discovers that a certain useful result will be produced, in ariy 
 art, machine, manufacture or composition of matter, by the use of certain 
 means, is entitled to a patent for it ; provided he specifies the means he uses in 
 a manner so full and exact that anyone skilled in the science to which it 
 appertains, can, by using the means he specifies, without any addition to 
 or subtraction from them, produce precisely the results he describes. And if 
 this cannot be done by the means he describes, the patent is void. — O'Reilly 
 V. Morse, 15 How. 62; 14 L. Ed. 601. 
 
 It is evident that the definiteness of a specification must vary with the 
 nature of its subject. Addressed as it is to those skilled in the art, it may 
 leave something to their skill in applying the invention, but it should not 
 mislead them.' — Mowry v. Whitney, 81 U. S. 620; 20 L. Ed. 860. 
 
 It is required by R. S. 4888 that the application shall contain " a written 
 description of the device and of the manner and process of making, con- 
 structing, 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 apper- 
 tains or with which it is most nearly connected, to make, construct, com- 
 pound and use the same." The object of this is to apprise the public of 
 what the patentee claims as his own, the courts of what they are called upon to 
 construe, and competing manufacturers and dealers of what they are bound 
 to avoid. If the description be so vague and uncertain that no one can tell, 
 except by independent experiments, how to construct the patented device, 
 the patent is void. — Incandescent Lamp Pat. 159 U. S. 465; 40 L. Ed. 221 ; 
 16 S. Ct. 75. 
 
 Grant v. Raymond, 31 U. S. 218; Wood v. Underhill, 46 U. S. 1; Tyler v. 
 Boston, 74 U. S. 327; Bene v. Jeantet, 129 U. S. 683; Howard v. Detroit, 150 
 U. S. 164; Schneider v. Lovell, 10 Fed. 666; Welling v. Crane, 14 Fed. 571. 
 
 It is true that by a practice which seems to have somewhat gained favor 
 in the courts, and which appears to be preferred by some patent solicitors, 
 a description is held sufficient, if from it, aided by the drawings, the model, 
 and the other parts of the application, the invention can be fully ascertained. 
 Rob. Pat. sec. 489, n. 1. In other words, the position seems to be that what 
 can be made certain by any reasonable amount of skill is of itself certain. — 
 B. & S. Fastener v. B. G. Fastener, 58 Fed. 818; 7 C. C. A. 498. 
 
 He had not, perhaps, discovered all the materials or all the matter, or all 
 the compositions which contained this force, and which were capable of 
 performing the necessary functions, but as to such as he had discovered and
 
 916-917 SPECIFICATION 
 
 841 
 
 put in operative form, and such as he could describe with reasonable clear- 
 ness, he was entitled to protection. Some of these compositions stood the 
 test better, made better linings and did the work more successfully than 
 others; and as to such as he used, such as he described, and such as those 
 skilled in the art could understand, he is entitled to protection. - American 
 V. Rowland, 80 Fed. 395; 25 C. C A. 500- 
 
 § 916. Sufficiency — Scientific Knowledge. 
 
 An inventor may be ignorant of the scientific P^^^^'P^^V^J^^f^^^^ .^^j^^ 
 he knows it and yet be uncertain, or he may be confident as to what it is 
 and Xrs may think differently. All this is immaterial, if by the specifica- 
 tion ?he thing to be done is so set forth that it can be reproduced. - Eames .. 
 Andrews, 122 U. S. 40; 30 L. Ed. 1064; 7 S. Ct. 1073. 
 
 The improvement consisted in a successful attempt to simplify the ma- 
 chinerv and lessen the large amount of breakage. It is perfectly true that 
 the de^scr^ption in the specification is confined to the purely rnechanical 
 eature of construction, and other operative mechanisms, and that the 
 patentee nowhere told why his improvement diminished breakage He 
 dfd not know, or he did not tell, why the new method woud produce better 
 results He simply told how to construct a machine which accomplished 
 the end- but Kught not to lose the statutory benefits which would cer- 
 
 anly belong to ll, if he had seen and .f -ribed the philo^^^^^^^ 
 machine accurately. - Dixon-Woods i;. Pfeifer, 55 Fed. 390,5 C.C.A.14«. 
 
 If the fact be that his construction does effect the results, and they are 
 benefidal he is none the less entitled to the benefit of his invention though 
 he maTnotiave correctly understood the principles of its operation. - 
 cLvela^nd .. Detroit, 131 Fed. 853; 68 C. C. A. 233. 
 
 Andrews v. Cross, 19 Blatchf. 294; Eames v. Andrews, 122 U. b. 40. 
 
 ThP laneuage of the patent fails to state any theory of the patentee as 
 to^e prS of air below the screen-plates. But where a patent discloses 
 r^eans bv which a novel and successful result is secured, it is immate al 
 whether the patentee understands or correctly states the theory or philo- 
 Tophical princVes of the mechanism which produces the new result. - Van 
 Edds V United, 143 Fed. 869; 75 C C. A. 77. . 
 
 Waller on Pat. sec. 175; Dixon-Woods .. Pfeifer, 55 Fed. 390; National ^,. 
 Thomson, 106 Fed. 531. 
 
 § 917. Sufficiency — Unambiguousness. 
 
 In natents for machines the sufficiency of the description must in general, 
 be ^question of f"ct to be determined by the 3 ury, and this -ust a so be the 
 cie hi compositions of matter. - Wood v. Underbill, 5 How. 1 , 12 L. Ed. 
 23. 
 
 Modern inventions very often consist merely of a new combination of old 
 ■ .u^Pntro^devices where nothing is or can be claimed except the new com- 
 bSn Such a comtoation is sufficiently described to constitute a compli- 
 ance w^?h th^letter and spirit of the Act of Congress if the devices of which it 
 rmmnosed are specifically named, their mode of operation given, and the 
 newZl usefSlresult to be accomplished is pointed out, so that those ^skilled 
 rnTheartTnd the public may know the extent and nature of the claim and 
 wha^ the parts are^hich coWate to do the work claimed for the mven- 
 tion. - Parks v. Booth, 102 U. S. 96; 26 L. Ed. 54.
 
 g42 THE FIXED LAW OF PATENTS §§918-919 
 
 Sufficiently clear and descriptive when expressed in t^rms intelligible 
 to persons skilled in the art. - Seabury v. Am. Ende, 152 U. S. 561, 38 
 L.Ed. 553; 14S.Ct.683. 
 
 A specification is sufficiently clear and descriptive when expressed in 
 terms intelligible to a person skilled in the art to which it relates. — Dowagiac 
 V Superior, 115 Fed. 886; 53 C. C. A. 36. 
 
 Loom Co. V. Higgins, 105 U. S. 680; Telephone Cases, 126 U. S. 1. 
 
 It is not necessary that the description should be clear to one not skilled 
 in the art. - Wolff v. Du Pont, 134 Fed. 862 ; 67 C. C. A. 488. 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 § 918. Two Inventions, One Patent. 
 
 That an inventor may include several separate inventions in a single patent 
 — see Evans v. Eaton, 3 Wheat. 454; 4 L. Ed. 433. 
 
 A patent embracing more than one invention, if the inventions are kindred, 
 is not void. — Hogg v. Emerson, 11 How. 587 ; 13 L. Ed. 824. 
 
 § 919. Miscellaneous Rules. 
 
 The invention claimed is an improvement on an old machine, and it is 
 properly taken for granted that the practical mechanic is acquainted with 
 the machine in which the improvement is made. — Ives v. Hamilton, 92 
 U. S. 426; 23 L. Ed. 494. 
 
 The patentee did not show the court the real advantages and extent of 
 his alleged improvement, and therefore the court was unable to find in- 
 fringement in anything which did not respond precisely to the form and 
 letter of the patent. — B. & S. Fastener v. Edgarton, 96 Fed. 489 ; 37 C. C. A. 
 523. 
 
 An inventor is not called upon to state in his specifications or claims 
 for a patent all the functions of his device, or all the uses to which his in- 
 vention may be put. When he has plainly described and claimed his machme 
 or combination, and has secured a patent for it, he has the right to every use 
 to which his device can be applied, and to every way in which it can be 
 utilized to perform its function, whether or not he was aware of all these uses 
 or methods of use when he claimed and secured his monopoly. — National 
 V. Interchangeable, 106 Fed. 693; 45 C. C. A. 544. 
 
 Roberts v. Ryer, 91 U. S. 150; Miller v. Mfg. Co. 151 U. S. 186; Goshen v. 
 Bissell, 72 Fed. 67; Stearns v. Russell, 85 Fed. 218; Mfg. Co. v. Neal, 90 Fed. 
 725; Tire Co. v. Lozier, 90 Fed. 732. 
 
 The specification fails to express the state of the art or the nature or 
 purpose of the invention in any comprehensible manner. It deals with 
 numerous small details of machinery, and points out the purpose in such 
 general terms as not to be practically useful. The record also fails to explain 
 in a clear manner what is thus omitted from the specification. (The patent 
 was held substantially bad). — U. S. Peg-Wood v. Sturtevant, 125 Fed. 
 378; 60C.C. A. 244. 
 
 The brevity and simplicity of his specification and claim do not detract 
 from the merit and validity of his patent, and are a refreshing contrast to 
 the verbosity of the patent in suit. — Crown v. Standard, 136 Fed. 841 ; 
 69 C. C. A. 200.
 
 § 920 STATE STATUTES AFFECTING PATENT RIGHTS 843 
 
 An inventor is not called upon to describe every use to which l^i^ jJ^Tf/^^j J" 
 maVbe put If he discloses it fully and clearly in one envnonme^ the 
 Sge requiring no inventive skill, cannot^escape nafnngement.- Saiutaiy 
 V. Sprickerhoff, 139 Fed. 801 ; 71 C. C. A. 565. 
 
 It does not follow that, because the patentee ^id not stat^ all the adv^^^ 
 
 '^ioX conSbut to Vsucrs'of the invention. - General .. Bullock, 
 152 Fed. 427; 81 C C. A^ 569^ ^ Dowagiac 
 
 . f:Xr:'nh'T^S^'SoI^^^^^^^^ Stilwell. Eufaula, 
 
 117 Fed. 410. 
 
 STATE STATUTES AND REGULATIONS AFFECTING PATENT 
 
 RIGHTS. ^ , . D , , w 
 
 Genera. Statement and Decisions, P^ S^^'^ '^ "' '"^ 
 
 See"— Jurisdiction § 724; Letters I 
 
 s 020. General Statement and Decisions. 
 
 Since the ri.ht to issue ^^^ Zff^'S^'^^^^ 
 
 that the Supreme Court is g^f J,f j^ X?c?m^ effecting the 
 
 tures and courts the ^^nactment and enforcen^ent o^ of business and morals, 
 
 TlSir afsi'ch a;^n S^l^U^ ^tested rights and the exercise 
 of legitimate activity. 
 
 rSd^o^v:;:^^^^^^^ 
 
 lations which a state has establishecl. l^^^^^^^^^^ tangible personal 
 
 intended to authorize or regulate ^^e f le withm a state ot t . P^^^^ 
 property which the state dec a^^^^ ,,^ limits. 
 
 statute has prohibited i^o'^,P,^''^|„ tj o 501 • 24 L, Ed. 1115. 
 _ Patterson t;. Commonwealth, 97 U.S. 5U1, ^4 1. ^4. Oilman t). Phila- 
 Gibbons .. Ogden 9 Wheat. 1; L-nse Ca^es 5 How. 50^, ^^'^:^"Husen, 95 
 delphia. 3 Wall. 713; Henderson ^. ^^sug^- Hewitt, 9 Wall. 41; Com. v. 
 U. S. 465; Beer Co. v. Mass. 9o U. S-,25, U. ft. ^. - Gladding, 17 How. 
 
 Commonwealth, 97 V. S. 501 ; 24 L. Ed. 1115. 
 
 It is only the right to.the invention or dijovery the in^^^^^^^ 
 ;St \ts'ruS;l':lLr;onc:''poJe°:?f the sta.s, meaning by that
 
 844 THE FIXED LAW OF PATENTS § 920 
 
 term those powers by which the health, good order, peace and general wel- 
 fare of the community are promoted. Whatever rights are secured to in- 
 ventors must be enjoyed in subordination to this general authority of the 
 State over all property within its limits. — Webber v. Virginia, 103 U. S. 
 344; 26 L. Ed. 565. 
 
 Patterson v. Kentucky, 97 U. S. 501. 
 
 The right conferred by the patent laws to inventors to sell their inven- 
 tions and discoveries does not take the tangible property, in which the in- 
 vention or discovery may be exhibited or carried into effect, from the opera- 
 tion of the tax and license laws of the State. The combination of different 
 materials so as to produce a new and valuable product or result, or to pro- 
 duce a well known product or result more rapidly and better than before, 
 which constitutes the invention or discovery, cannot be forbidden by the 
 State, nor can the sale of the article or machine produced be restricted, ex- 
 cept as the production and sale of other articles for the manufacture of which 
 no invention or discovery is patented or claimed, may be forbidden or re- 
 stricted. — Webber v. Virginia, 103 U. S. 344; 26 L, Ed. 565. 
 
 We can find no objection to the legislation of Virginia in requiring 
 a license for the sale of sewing machines, by reason of the grant of letters 
 patent for the invention; but there is no objection arising from its discrim- 
 inating against non-resident merchants and their agents. — Webber v. 
 Virginia, 103 U. S. 344; 26 L. Ed. 565. 
 
 We think the state has the power (certainly until Congress legislates 
 on the subject) with regard to the provision which shall accompany the 
 sale or assignment of rights arising under a patent, to make reasonable 
 regulations concerning the subject calculated to protect its citizens from 
 fraud. And we think Congress has not so legislated by the provisions regard- 
 ing an assignment contained in the acts referred to. (R. S. 4898.) If there 
 is a special evil, unusually frequent and easily perpetrated when parties are 
 dealing in the sale of rights existing or claimed to exist under a patent, 
 we do not see why a state may not, in the bona fide exercise of its powers^ 
 enact some special statutory provision which may tend to arrest such evil' 
 and may omit to enact the same provision concerning the disposal of other 
 property. There is no discrimination which can be properly so-called, against 
 property in patent rights, exercised in such legislation. It is simply an at- 
 tempt to protect the citizen against frauds and impositions, which can be 
 more readily perpetrated in such cases than in cases of the sale or assign- 
 ment of ordinary property. — Allen v. Riley, 203 U. S. 347; 51 L. Ed. 216; 
 27 S. Ct. 95. 
 
 Pinney t^ Bank 68 Kan. 223; Brechbill v. Randall, 102 Ind. 528: New v. 
 
 Walker, 108 Ind. 365; Tod v. Wick. 36 Ohio 370: Haskell v. Jones. 86 Pa. 173- 
 
 JJfi'$^ ^- ^^«^lej: 109 N. Y. 27; Wyatt v. Wallace. 67 Ark. 575; State v. Cook 
 
 Aenn. 499. btates m which similar legislation has been held unconstitutional, 
 
 see, HoUiday v. Hunt 70 111. 109; Cranson v. Smith, 37 Mich. 309; Wilch v. 
 
 Q7 Tr« rfni^^w ii^' ^H^ "": Lockwood, 43 Wis. 405; Patterson v. Kentucky, 
 97 U. S. 501; Webber v. Virginia, 103 U. S. 344. 
 
 That a state has power to enact laws regulating the sale of patent rights 
 
 tt"" Q orF^r'i^x^^^T^^^'^^^^ of indebtedness therefor, see — Woods v. Carl. 203 
 U. S. 358 ; 51 L. Ed. 219 ; 27 S. Ct. 99. 
 Allen V. Riley, 203 U. S. 347.
 
 §921 STATUTE OF LIMITATIONS 845 
 
 That the provisions of a state law cannot affect rights acquired under a 
 patent of the United States, is too plain to require discussion. — U . b. Con- 
 solidated V. Griffin, 126 Fed. 364; 61 C. C. A. 334. 
 
 Columbia v. Freeman, 71 Fed. 302. 
 
 A state cannot subtract from the right conferred upon a patentee and his 
 assigns by the Federal laws. Columbia v. Freeman, 71 Fed. 302; U. te. i-. 
 Griffin l'>6 Fed 364. For the protection of the physical or moral health ot its 
 citizens a state may restrain the use of " the corporeal thing or article brought 
 into existence by the application of the patented discovery. Patterson i;. 
 Kentucky, 97 U. S. 501, but such a laying on of hands does not tmch the 
 monopoly of the Federal grant. — Rubber Tire v. Milwaukee, 154 Fed. 358, 
 83 C. C. A. 336. 
 
 STATUTE OF LIMITATIONS. 
 
 General Statement and Decisions I See — Damages I 27S; Profits ^ S25 
 §921 
 
 § 921. General Statement and Decisions. 
 
 Prior to Jan. 1, 1898, there was no statutory limitation as to the time of 
 recovery of profits or dWages. By the act of Mar. 3, 1897, in effect Jan. 1, 
 1898, the following was added to sec. 4921 : 
 
 But in any suit or action brought for the infringement of any patent there 
 shall be no recovery of profits or damages for any infringement committed 
 more than six years before the filing of the bill of comp aint or the issuing 
 of the .vTit in such suit or action, and this provision shall apply to existing 
 causes of action. 
 
 The patent had some twelve years to run after the date of this contract. 
 The substance of this contract is, that the defendants are to pay in money 
 a certain proportion of the ascertained value of tiie fuel sawd at sta ed 
 fntervals throughout the period of twelve years, if he boat to which the 
 cut off is attached should last as long. The result is that the contract is 
 void not being in writing. It is a contract not to be performed within the 
 ;:ar; subject tS a defeasance by the happening of a -rtalne^^nt which m^^^^^^ 
 or might not occur within that time. — Packet Co. v. Sickles, 72 U. b. 580, 
 18 L. Ed. 550. 
 
 When there is an alleged promise or contract set up a delay of 15 years 
 brin-s the case Tsnthin the statute. — Leggett v. Standard, 149 U. b. 287, 
 
 37 L.Ed. 737; 13 S. Ct. 902. 
 
 McLean v. Fleming, 96 U. S. 245; Speidel v. Henrici, 120 U. S. 377; GaUiher 
 V. CadweU, 145 U. S. 368. 
 
 State statutes of limitations apply to an action ^\ l^^.^^^.*;^/;^?^^^^ 
 This case is the leading case upon this subject and for the f^rst time^is 
 question has been settled in the affirmative by the Supreme Court. - Camp- 
 bell V. Haverhill, 155 U. S. 601 ; 39 L. Ed. 280; lo S. Ct. 217. 
 
 Hayden .. Oriental, 15 Fed. 605; Bricknall - Hartford 49 Fed 372; Bau^er- 
 mnn V Rlnnt 147 U S 647; Metcalf v. W aterto^\Ti. 153 U. b. b71 BaiKam v. 
 Woodstock 154 US 177;' Rudd .. Burrows. 91 U. S 426; Indianapolis t, 
 Sorst 93 U. S 291; Phelps v. Oaks, 117 U. S. 236. Keshkonong ..Burton 104 
 US '^8; Wheele; .. Jackson 137 U. ^^245 Adams «. Woods, g U. |. ^^g 
 RpII V Morrison 26 U. S. 351; Vance v. Campbell, 66 U. b. 4.^7, llaussKencm 
 ? ClaypoS Sru. S. 431; Wright .. Bales, 67 U. S^ 535; McElmojde ^'- Coehn, 
 
 38 U.'S. Sl2; Andrea ^.'Redfield. 98 U. S, 225; Barney .. Oelrichs 138 U^^ 
 629- Barton v. White, 144 Mass. 281; Re Reach, 14 R. I. 571, Beatty v. Bumes.
 
 846 THE FIXED LAW OF PATENTS §§ 922-924 
 
 12 U. S. 98; M'Cluny v. Silliman, 28 U. S. 270; Patterson v. Kentucky. 97 V. S. 
 501; Webber v. Virginia, lOS U. S. 344; Agar v. Murray, 105 U. S. 126; Ash- 
 croft V. Walworth, 1 Holmes, 152. 
 
 We are of opinion that the Court of Claims ruled correctly that the statute 
 of limitations was a bar to any recovery for the use of the patented invention 
 prior to six years before the action was commenced. — U. S. v. Berdan, 156 
 U. S. 552; 39 L. Ed. 530; 15 S. Ct. 420. 
 
 STATUTES RELATING TO PATENTS — THE PATENT STATUTE. 
 
 General Statement § 922 
 
 Decisions Relating to the Statutes 
 
 § 923 
 
 See — The Patent Statute Digested 
 and Provided With the Patent Office 
 Annotations, page 849 
 
 § 922. General Statement. 
 
 An elaborate history of the Patent Act will be found in Root v. Railway, 
 105 U. S. 189. While all the more important sections which have been con- 
 nected with appellate decisions are quoted at the beginning of the several 
 titles, the entire Act has been digested and arranged on the same lines as the 
 decisions, provided with the Patent Office annotations, and added as a 
 separate chapter. 
 
 § 923. Decisions Relating to the Statutes. 
 
 The object of 4917 is to enable the patentee to disclaim what he has not 
 invented; and 4922 is to legalize and uphold suits brought on patents men- 
 tioned in 4917. — Hailes v. Albany, 123 U. S. 582; 31 L. Ed. 284; 8 S. Ct. 
 262. 
 
 A patent statute cannot be judicially settled until passed upon by the 
 Supreme Court. — Andrews v. Hovey, 124 U. S. 694; 31 L. Ed. 557; 8 S. Ct. 
 676. 
 
 Wilson V. City, 84 U. S. 473; Ex Parte Wilson, 114 U. S. 417. 
 
 Sec. 4887 fully discussed historically and construed in Bate v. Sulzberger, 
 157 U. S. 1 ; 39 L. Ed. 601 ; 15 S. Ct. 508. 
 See also Bate v. Hammond, 129 U. S. 151. 
 
 To hold that a treaty could not abrogate a prior statute regarding patents 
 because this particular legislative power is committed to Congress could not 
 be permitted so long as the general rule as to statutes superseding treaties, 
 and vice versa, declared by the Supreme Court in the way we have pointed 
 out exists. The rules which we have explained with reference to the relation 
 of treaties to statutes, and as to treaties becoming immediately effective are 
 the necessary sequence of the decisions explained in U. S. v. Lee, 185 U. S. 
 213. — United v. Duplessis, 155 Fed. 842; 84 C. C. A. 76. 
 
 THREATS. 
 
 General Statement § 924 
 
 § 924. General Statement. 
 
 Notice is one thing, a threat quite another. A threat is never justifiable; 
 a notice may be justifiable or it may amount to a threat. See Adriance v. 
 National, 121 Fed. 827, under § 516.
 
 §§ 925-926 TITLE 847 
 
 Where notices are given or circulars distributed in good faith to warn 
 against infringement, no wrong whatever is committed ; but where as is here 
 averred, they are not made or issued with such intent, but in bad faith, 
 and solely for the purpose of destroying the business of another, a very dif- 
 ferent case is presented. In such a case property rights are fraudulently 
 assailed, and a court of chancery, whose interposition is invoked for their 
 protection, should not refuse to accord it. — Farquhar v. National, 102 
 Fed. 714; 42 C. C. A. 600. 
 
 Emack v. Kane, 34 Fed. 46; Kelly v. Mfg. Co. 44 Fed. 23; Casey v. Union, 45 
 Fed. 135; Toledo v. Penn. 54 Fed. 730; Computing v. National. 79 Fed. 962; 
 Lewin v. Light Co. 81 Fed. 904; Railway v. McConnell, 82 Fed. 65; Adriance v. 
 National, 98 Fed. 118; In re Debs, 158 U. S. 564; Herbert v. Rainey, 54 Fed. 248. 
 
 TITLE. 
 
 General Statement § 925 
 Actionable § 926 
 Miscellaneous Rules § 927 
 See — Abatement § 21; Assignment 
 § 149; Bankruptcy § 182; Corpora- 
 tions § 271; Defenses § 306; Injunc- 
 
 tion § 571; Letters Patent § 746; 
 License § 749; Licensor and Licensee 
 § 766; Mortgage § 778; Pleading and 
 Practice §§ 801, 806; Sale of Patented 
 Article § 899 
 
 § 925. General Statement. 
 
 It has been shown under Assignment and License (§§ 150 and 750) what 
 constitutes a title interest in a patent and what constitutes a license interest 
 under a patent. The rule in the Waterman Case there quoted is definitive. 
 The statute makes no specific provision on the subject. Joint owners are 
 tenants in common, and an accounting does not lie between them. — Black- 
 ledge V. Weir, 108 Fed. 71, infra, and cases cited thereunder. 
 
 § 926. Actionable. 
 
 The holder of the legal title only can maintain an action against a third 
 party who commits an infringement upon it. — Gayler v. Wilder, 10 How, 
 477;"^ 13 L. Ed. 504. 
 
 Nemo dat quod non habet applies to titles to patent interests. — Mitchell 
 V. Hawley, 83 U. S. 544; 21 L. Ed. 322. 
 
 Foxley's case, 5 Co. 109; 2 Black. Com. 449; 2 Kent's Com. 224; 
 Williams v. Merle, 11 Wend. 80; Syone v. Marsh, 6 B. & C. 551; Marsh v. 
 Keating, 1 Bing. N. C. 198; Benj. Sales, 4; White v. Spettigue, 13 Mus & W. 603. 
 
 Inasmuch as four years have elapsed since the assignment was executed, 
 and the corporation has shown no disposition to question its validity, and 
 inasmuch as the assignment under which the complainant derives title is good 
 and sufficient in form to transfer a legal title to the patent, we think that no 
 third party — not even a person who has a lien on certain stock of the cor- 
 poration — should be permitted to challenge the validity of the assignment 
 in a collateral proceeding. — Kansas City v. Devol, 81 Fed. 726; 26 C. C. A. 
 578. 
 
 2 Morr. Corp. sec. 619, 626 and 631. 
 
 In view of the fact that the infringers have no interest or claim to said 
 patent, and that they do not assert any legal or equitable title to said patent 
 is asserted by any one else, or is in fact now outstanding in any one else, it 
 might be sufficient to hold for the purpose of this case, and as against mere 
 infringers the prima facie record title should be sufficient to warrant a 
 decree. — Goss v. Scott, 108 Fed. 253; 47 C. C. A. 302.
 
 g48 THE FIXED LAW OF PATENTS §927 
 
 The assignor was sole patentee. It will be noticed that the assignor is 
 one of the assignees. But no criticism is made upon that circumstance. 
 We think the objection stated is hypercritical, and that the intent and effect 
 of the assignment was to transfer a one-half interest to the other partner, 
 nothing appearing to show that the partners stood upon unequal terms. — 
 Canda v. Michigan, 124 Fed. 486; 61 C. C. A. 194. 
 
 Suit by an assignee for infringement is authorized only when the assign- 
 ment is complete within the statutory requirement. The rights of the pa- 
 tentees cannot be adjudicated in their absence, and the claimant of an equi- 
 table title or interest cannot maintain suit for infringement upon such title 
 alone. — Milwaukee v. Brunswick-Balke, 126 Fed. 171 ; 61 C. C. A. 175. 
 
 Rob. Pat. sec. 771; Curt. Pat. sees. 171-2; Regan v. Pacific, 49 Fed. 68; 
 Waterman v. Mackenzie, 138 U. S. 252; Pope v. GormuUy, 144 U. S. 248; Rob. 
 Pat. sec. 1099; Stimpson v. Rogers, 4 Blatchf. 333. 
 
 Whether the transfer of a title to a patent as a pledge for a debt is such 
 alienation as will prevent the patentee from maintaining an action for 
 infringement, see — Westmoreland v. Hogan, 167 Fed. 327; C. C. A. 
 
 § 927. Miscellaneous Rules. 
 
 The commissioner should decide upon the sufficiency of the title of the 
 applicant, and having done so, the right of applicant to compel issue is by 
 appeal and not mandamus. — HoUoway v. Whiteley, 71 U. S. 522; 18 L. Ed. 
 335. 
 
 Difference between right to vend and right to use. Rule (old) stated in 
 Mitchell V. Hawley, 83 U. S. 544; 21 L. Ed. 322. 
 
 Bloomer v. McQuewan, 14 How. 549; Chaffee v. Beltmg Co. 22 How. 223. 
 
 In the nature of things lawful purchase of a patented article carries with it 
 the lawful right to use without restriction of time or place. — Adams v. 
 Burks, 84 U. S. 453; 21 L. Ed. 700. 
 
 Bloomer v. McQuewan, 14 How. 549; Mitchell v. Hawley, 83 U. S. 544. 
 
 It does not lie in the mouth of an alleged infringer to set up the right of 
 the assignee as against a title from the bankrupt acquired with the consent 
 of such assignee. — Sessions v. Romadka, 145 U. S. 29; 36 L. Ed. 609; 
 12 S. Ct. 799. 
 
 When the patentee has not parted, by assignment, with any of his original 
 right but chooses himself to make and vend a patented article of manufac- 
 ture, it is obvious that a purchaser can use tbe article in any part of the 
 United States, and, unless restrained by contract with the patentee, can 
 sell and dispose of the same. It has passed outside of the monopoly, and is 
 no longer under the peculiar protection granted to patented rights. — Keeler 
 V. Standard, 157 U. S. 659; 39 L. Ed. 848; 15 S. Ct. 738. 
 
 Goodyear v. Beverly, 1 Cliff. 348. 
 
 The sale of a patent right contains an implied warranty as to title, and 
 an after acquired title obtained by the vendor inures to the vendee. — 
 Brush V. California, 52 Fed. 945; 3 C. C. A. 368. 
 
 Faulks V. Kamp, 3 Fed. 989; Curran v. Burdsall, 20 Fed. 835; Gottfried v. 
 Miller, 104 U. S. 520; Smith v. Sheley, 12 Wall. 358. 
 
 That a legal title acquired with notice of a prior equitable title, is inferior 
 thereto, see — Carroll v. Goldschmidt, 83 Fed. 508; 27 C. C. A. 566.
 
 § 928 TRADEMARKS 849 
 
 That the acquirement of a title which would protect a defendant against a 
 charge of infringement committed subsequent thereto, cannot be made to 
 relate back to acts done prior to such acquisition, see — Keene v. Barratt, 100 
 Fed. 590; 40 C. C. A. 571. 
 
 Now, it is certainly settled that partners may acquire legal title to personal 
 property under a purchase made in the firm name; and it is not material 
 whether such firm name is wholly fanciful or whether it contains the names 
 of one or more of the members of the firm. — Fresno v. Fruit, 101 Fed. 826 ; 
 42 C. C. A. 43. 
 
 Manghaum v. Sharpe, 17 C. B. (N. S.) 443. 
 
 It was stipulated between the parties that if, on the reference, it appeared 
 that the complainant had the full legal title, the balance of the royalty should 
 be then paid. A hearing was had before the referee and he decided, in sub- 
 stance, as the court below held, that the title was not an absolutely perfect 
 title, but was a perfectly good marketable title. Held: sufficient. — Deer- 
 ing V. Kelly, 103 Fed. 261 ; 43 C. C. A. 225. 
 
 The use of an invention by one of co-owners or by his licensees is not the 
 exercise of the entire monopoly conferred by the patent. That can be 
 effected only by the joint or concurrent action of all owners. The separate 
 action of any one owner or his licensees can be an exercise or use only of his 
 individual right, which, though exclusive of all besides, is not exclusive 
 of the other patentees, their assignees or licensees. On principle, therefore, 
 there can be no accountability on the part of a part owner of an invention 
 to other owners for profits made by the exercise of his individual right, 
 whether it be by engaging in the manufacture and sale, or by granting 
 to others licenses, or by assigning interests in the patent. — Blackledge v. 
 Weir, 108 Fed. 71 ; 47 C. C. A. 212. 
 
 Clum V. Brewer, Fed. Cas. 2,909; Mfg. Co. v. Gill, 32 Fed. 697; Bloomer v. 
 McQuewan, 14 How. 539; Mathers v. Green, 34 Beav. 170; Steers v. Rogers, 62 
 Law. J. Ch. 671; Vose v. Singer, 4 Allen, 226; Dunham v. Railroad, Fed. Cas. 
 4,151. (See also long list of cases cited in the briefs.) 
 
 Joint owners of a patent are at the mercy of each other. Each may use 
 or license others to use the invention without the consent of his fellows 
 and without responsibility to such fellows for the profits arising from such 
 use or license. — McDuffee v. Hestonville, 162 Fed. 36; 89 C. C. A. 76. 
 
 Clum V. Brewer, 2 Curt. 523; AspinwaU v. GiU, 32 Fed. 697; Walk Pat. § 294. 
 
 TRADEMARKS. 
 
 General Statement and Cases Relating to Patents § 928 
 
 § 928. General Statement and Cases relating to Patents. 
 
 The trademark right is one which arises by occupation under the common 
 law, and is a right wholly distinct from the right to a patent, which arises 
 only under the statute and in contravention of the common law right. The 
 Federal law with reference to the registration of trademarks creates no 
 monopoly, but gives the registrant certain advantages in the protection 
 of his right, all being matters with which the patent law is not concerned. 
 
 General rule, held: The generic right to trademark founded on a patent 
 expires with the patent; but another using it must distinguish his mark 
 to avoid unfair trade. — Singer v. June, 163 U. S. 169; 41 L. Ed. 118; 16 
 S. Ct. 1002.
 
 850 THE FIXED LAW OF PATENTS § 929 
 
 That the right to a trademark founded upon a patent expires with the 
 patent, see — Holzapfels v. Rahtjens, 183 U. S. 51; 46 L.Ed. 49; 22 S.Ct.6. 
 
 It is true that during the Hfe of the patent the name of the thing may also 
 be indicative of the manufacturer, because the thing can then be manu- 
 factured only by the single person ; but when the right to manufacture and 
 sell becomes universal, the right to the use of the name by which the name is 
 known becomes equally universal. It matters not that the inventor coined 
 the word by which the thing has become known. It is enough that the 
 public has accepted that word as the name of the thing, for thereby the word 
 has become incorporated as a noun into the English language, and the com- 
 mon property to all. Whatever doubts may theretofore have existed orl this 
 proposition have been, for the federal courts, put at rest by the recent 
 decision of the Supreme Court in the case of Singer v. June, 163 U. S. 169. — 
 Centaur v. Heinsfurter, 84 Fed. 955 ; 28 C. C. A. 581. 
 
 Canal Co. v. Clark, 13 Wall. 311; Chemical Co. v. Meyer, 139 U. S. 540; Mfg. 
 Co. V. Nairn, 7 Ch. Div. 834; Mfg. Co. v. Shakespear, 39 Law. J. Ch. 36. 
 
 That the right to use a trade name or designation specifically indicating 
 the article made under the patent, terminates with the licensee see — Stimpson 
 V. Stimpson, 104 Fed. 893; 44 C. C. A. 241. 
 
 The designers of articles of manufacture not otherwise entitled to receive 
 design patents cannot justify the issuance of such patents on any theory 
 that the design is a trade-mark. — Rowe v. Blodgett, 112 Fed. 61 ; 50 C. C A. 
 120. 
 
 In an action for unfair competition and infringement of trademark the 
 facts were that defendant, while connected with complainant, had obtained 
 a patent relating to the product trademarked by the name of the inventor, 
 but that he had made no assignment of the patent, and that complainant 
 had secured no rights thereunder. The court held that, defendant having 
 established an independent business, complainant could not mark its articles 
 " patented " or " owned by " as referring to such patent, but could use the 
 mark. — Hygienic v. Way, 137 Fed. 592; 70 C. C. A. 553. 
 
 That a mere assignment of a patent does not carry with it a trade-mark 
 formerly used to advertise the patented article, and that when the patentee's 
 name is some part of such mark, in using his name in connection with sub- 
 sequent patents on similar articles, he must clearly distinguish from the pre- 
 vious mark, see — Reed v. Frew 162 Fed. 887; 89 C. C A. 577. 
 
 UNFAIR TRADE. 
 
 General Statement and Cases § 929 | See — Pleading § 794 
 
 § 929. General Statement and Cases. 
 
 As will be seen from the following cases, this subject is a recent one in 
 connection with patents. Much law is yet to be made upon the subject. 
 It would seem to the writer that it must be decided ultimately that, as in 
 the case of a trademark which is the designation of a patented article, the 
 right to that which relates to appearance must expire with the patent. It 
 would seem, also, that a bill for infringement and for unfair trade would be 
 multifarious, notwithstanding the ruling in Adam v. Folger, 120 Fed. 260 
 (see § 795).
 
 § 930 UNPATENTED INVENTIONS 851 
 
 But the trial judge seems to put his conclusion on another ground — unfair 
 competition in trade. What is above said applies to this point in the opin- 
 ion. Defendants seem to be acting in good faith, and allege their ability 
 to respond in damages, which is not questioned. Bouchat believes he has 
 made an improvement in coat pads entitling him to a patent. He has 
 obtained letters patent therefor. This cost something, and a company has 
 been organized to manufacture coat pads under these letters patent. Is this 
 unfair competition in trade? If so, no improvement in a patented article 
 could ever be made by one versed in the art. Bouchat had worked at the 
 trade of making coat pads, became familiar with the art, experienced in the 
 business, and knew the demands of the trade. True, this was when he was a 
 stockholder, owning one share, and an employee of a corporation using the 
 Goldman patent, when he probably saw the defects in the coat pads manu- 
 factured under the patent, and devised what he conceived to be an improve- 
 ment in coat pads. Is the fact that he was such stockholder and employee 
 of a corporation using a patent to deprive him of the benefit of supposed 
 inventive genius? If so no one would probably ever make any improvements 
 on patented articles. — American v. Phoenix, 113 Fed. 629; 51 C C. A. 339. 
 
 Upon the claim made for the appellant, it would be impossible, without 
 'invading complainant's right, to construct and sell a book-case having the 
 most desirable characteristics. Nor is it competent for one person to ap- 
 propriate to his own purposes any common and general characteristics 
 of the goods he manufactures to such an extent that another shall be im- 
 pleaded or embarrassed in his free right to the use of such characteristics. 
 (The claim was unfair trade in making sectional book-cases which could be 
 used in stack with those of the complainant). — Globe-Wernicke v. Macey, 
 119 Fed. 696; 56 C. C. A. 304. 
 
 The name " Victor " was adopted to denote the heater manufactured in 
 accordance with the specifications of the patent. It would be a fraud upon 
 the public, during the life of the patent, to permit a stranger to palm off a 
 spurious article for the patented article by means of the identifying and gen- 
 eric name of the latter. — Adam v. Folger, 120 Fed. 260; 56 C. C. A. 540. 
 
 Singer v. June, 163 U. S. 169; Holzapfel's v. Rahtjens, 183 U. S. 1; Centaur v. 
 Heinsfurter, 84 Fed. 955; Gaily v. Mfg. Co. 30 Fed. 118; Stimpson v. Stimpson, 
 104 Fed. 893. 
 
 Of course in this suit for infringement of a patent we cannot inquire into 
 the apparently unfair devices in the way of get up, ornamentation, etc., by 
 which it is suggested that the defendants are seeking to deceive the public into 
 a belief that their bells are those of the complainant. — New Departure v. 
 Sargent, 127 Fed. 152; 62 C. C. A. 266. 
 
 UNPATENTED INVENTIONS. 
 
 Statutory Provision § 930 
 
 Assignment § 931 
 
 Construction or Sale Before Patent 
 
 § 932 
 
 Employee § 933 
 
 Non- Assignable § 934 
 Miscellaneous § 935 
 See — Abandonment § 1; License 
 § 756; Secret Process or Machine 
 5 898 
 
 § 930. Statutory Provision. 
 
 Every person who purchases of the inventor or discoverer, or, with his 
 knowledge and consent, constructs any newly invented or discovered machine, 
 or other patentable article, prior to the application by the inventor or dis- 
 coverer for a patent, 'or who sells or uses one so constructed, shall have the
 
 852 THE FIXED LAW OF PATENTS §§ 931-934 
 
 right to use, and vend to others to be used, the specific thing so made or 
 purchased, without HabiUty therefor. R. S. 4899. 
 
 In addition to the foregoing certain rights in the nature of shop hcenses 
 or impHed hcenses may arise out of conditions of employment. See § 756, 
 also § 366. 
 
 § 931. Assignment. 
 
 While it is, perhaps, not necessary to decide whether in any case a sale of 
 an invention which is never patented carries with it anything of value, 
 we are of opinion that the rights growing out of an invention may be sold, 
 and that in the present case the sale, with the right to use it in connection 
 with the existing patent and its reissues or renewals, protects defendants 
 from Uability. — Hammond v. Mason, 92 U. S. 724; 23 L. Ed. 767. 
 
 A court of chancery cannot decree specific performance of an agreement 
 to convey property which has no existence or to which defendant has no 
 title. — Kennedy v. Hazleton, 128 U. S. 667; 32 L. Ed. 576; 9 S. Ct. 202. 
 
 § 932. Construction or Sale Before Patent. 
 
 Under section 4899 the following have an implied license to a machine made 
 before patent : (1) every person " who purchases of the inventor" the machine 
 before his application for a patent; (2) every person who " with his knowl- 
 edge and consent constructs " the machine before application ; (3) every 
 person who sells a machine " so constructed," that is to say, which has been 
 constructed with the knowledge and consent of the inventor by another 
 person; (4) every person "who uses one so constructed," that is to say, 
 constructed with the inventor's knowledge and consent by another person. 
 
 In order to entitle a person to any of these four classes to use and vend 
 the machine, under this section, the machine must originally have been either 
 purchased from the inventor or else constructed with his knowledge and 
 consent before his application for a patent ; and it may well be that a fraud- 
 ulent or surreptitious purchase or construction is insufficient. — Wade v. 
 Metcalf, 129 U. S. 202; 32 L. Ed. 661 ; 9 S. Ct. 271. 
 
 Kendall v. Winsor, 62 U. S. 522; Andrews v. Hovey, 124 U. S. 694. 
 
 When machine was constructed by partnership, of which inventor was a 
 member, an implied license arises in favor of the machine as constructed. 
 Quaere. — Wade v. Metcalf, 129 U. S. 202; 32 L. Ed. 661 ; 9 S. Ct. 271. 
 
 § 933. Employee. 
 
 Where the inventor in employ of defendant allowed his unpatented in- 
 vention to be used with his knowledge and consent, according to the terms 
 of the statute defendant has a right to continue to use those machines with- 
 out compensation. — D able r. Flint, 137 U. S. 41; 34 L. Ed. 618; 11 
 S. Ct. 8. 
 
 § 934. Non- Assignable. 
 
 The inventor of a new and useful improvement certainly has no exclusive 
 right to it, until he obtains a patent. This right is created by the patent, 
 and no suit can be maintained by the inventor against anyone, for using it 
 before the patent is issued. But the discoverer of a new and useful im- 
 provement is vested by law vAih an inchoate right to its exclusive use, 
 and which he may perfect and make absolute bv proceeding in the manner 
 which the law requires. — Gayler v. Wilder, 10 How. 477; 13 L. Ed. 504.
 
 §§ 935-937 
 
 WORDS AND PHRASES 
 
 853 
 
 The inventor who designedly and with a view to applying it indefinitely 
 and exclusively for his own benefit withholds his invention from the public 
 comes not within the policy or objects of the Constitution. Hence, if, during 
 such concealment, an invention similar to or identical with his own should 
 be made or patented or brought into use without a patent, the latter could 
 not be inhibited nor restricted. Moreover, that which is once given to or 
 is invested in the public cannot be recalled nor taken from them. — Kendall 
 V. Winsor, 62 U. S. 322; 16 L. Ed. 165. 
 
 In the absence of protection by patent, no person can monopolize or ap- 
 propriate to the exclusion of others elements of mechanical construction 
 which are essential to the successful practical operation of a manufacture, 
 or which primarily serve to promote its efficiency for the purpose to which it is 
 devoted. Unfair competition is not established by proof of similarity of form, 
 dimensions, or general appearance alone. — Marvel v. Pearl, 133 Fed. 160- 
 66 C. C. A. 226. 
 
 § 935. Miscellaneous. 
 
 The right of Duncan to the inventions, if they were inventions, existed 
 prior to, and continued independently of, the issuing of the patents. — 
 Siemens-Halske v. Duncan, 142 Fed. 157; 73 C. C. A. 375. 
 
 Fuller V. Berger, 120 Fed. 274; Victor v. The Fair 123 Fed. 424. 
 
 WORDS AND PHRASES. 
 
 " Means " § 936 
 
 " Substantially," etc. § 937 
 
 " Whereby " Clause § 938 
 
 See — Claims §§ 214. 229; Equiva- 
 lents § 373; Specification § 900 
 
 § 936. " Means." 
 
 Of course an inventor cannot by the mere use of the word " means," in 
 reference to the accomplishment of a designated function in a combination 
 claim, appropriate any and all kinds of mechanism or devices which may per- 
 form the specified function, or any other mechanism or device than that 
 which is described in the patent, or which is its equivalent. Reference must 
 be had to the specifications to ascertain the means which are made an ele- 
 ment of the claim and are protected by the patent. — American v. Hickmott, 
 142 Fed. 141 ; 73 C. C. A. 359. 
 
 Jones V. Munger, 49 Fed. 61; Williams v. Steam, 47 Fed. 322. 
 
 While the claims specify the physical elements of the combinations, they 
 do not specify the means whereby those elements perform their intended 
 functions, but call for " means " generally for performing them. By this 
 is not meant all possible means for accomplishing the result. Such compre- 
 hensiveness of claim would not be patentable. The claims in question by 
 direct terms refer to the specification for the means by which the function, 
 purpose, or object of the invention is to be accomplished, and to that we 
 must look for them. — Union v. Diamond, 162 Fed. 148; 89 C. C. A. 172. 
 
 Dryfoos v. Wiese, 124 U. S. 32. 
 
 § 937' " Substantially," etc. 
 
 The words " substantially as set forth," " substantially as described " 
 refer to the specification, and tend to make the claim specific. — Seymour 
 V. Osborne, 78 U. S. 516; 20 L. Ed. 33.
 
 854 THE FIXED LAW OF PATENTS § ^37 
 
 Expressions such as " substantially as described " refer to the specifica- 
 tion and make the claim specific. — Railroad v. DuBois, 79 U. S. 47; 20 
 L. Ed. 265. 
 
 Qualifies the claim in the light of the specification to the means pointed 
 out. — Brown v. Guild, 90 U. S. 181 ; 23 L. Ed. 161. 
 
 The words " substantially as described " found in each of the first two 
 claims of the original patent, properly confined those claims to the shifting 
 mechanism described. — Brown v. Davis, 116 U. S. 237; 29 L. Ed. 659; 
 6 S. Ct. 379. 
 
 The clause " substantially as described " are words of limitation, limiting 
 the combination to the specific elements described. — Pope v. GormuUy, 
 144 U. S. 248; 36 L. Ed. 423; 12 S. Ct. 641. 
 
 Without determining what particular meaning, if any, should be given 
 to these words (" substantially as described or set forth ") we are of opinion 
 that they are not to be construed as limiting the patentee to the exact 
 mechanism described; but that he is still entitled to the benefit of the doc- 
 trine of equivalents. — Hobbs t;. Beach, 180 U. S. 383; 45 L. Ed. 586; 21 S. 
 Ct. 409. 
 
 Morley V. Lancaster, 129 U. S. 263; Discussing, Seymour i?. Osborne, 11 Wall. 
 516; Cornplanter Pat. 23 Wall. 181; Westinghouse v. Boyden, 170 U. S. 537; 
 Mitchell V. Tilghman, 19 Wall. 287. 
 
 The words " substantially as described," do not w^arrant the insertion of 
 an additional element in the claim. The words must relate to the matter 
 designated. — Boynton v. Morris, 87 Fed. 225; 30 C. C. A. 617. 
 
 Lake Shore v. National, 110 U. S. 229. 
 
 The use of the words " to operate substantially as described " did not serve 
 to read into this claim every element of the entire structure set forth in the 
 specification precisely as described, and thus limit the patentee to the 
 exact mechanism described therein. — General v. International, 126 Fed. 
 755; 61 C. C. A. 329. 
 
 Hobbs V. Beach, 180 U. S. 383; Penfield v. Potts, 126 Fed. 475; McCarty v. 
 Lehigh, 160 U. S. 110. 
 
 The " spacing members " are not described in the claims except by refer- 
 ence to the specifications by the words " substantially as described " at 
 the end of each claim. This carries to the claims the description of the speci- 
 fication. — Sanders v. Hancock, 128 Fed. 424; 63 C. C. A. 166. 
 
 Soehner v. Favorite, 84 Fed. 182; Stilwell-Bierce v. Eufaula, 117 Fed. 410; 
 Lamb v. Lamb, 120 Fed. 267; Cauda v. Michigan, 124 Fed. 486. 
 
 Claims 3 and 8 close with the words " substantially as set forth " and 
 " substantially as described," respectively. This language brings into the 
 claim the particular description of the structure contained in the specifi- 
 cations, and the drawings to which they refer. — Lackawanna v. Davis- 
 Colby, 131 Fed. 68; 65 C. C. A. 306. 
 
 The words " as set forth " in the claims may grammatically refer to any- 
 thing which precedes them. Therefore, in view of the just and liberal rules 
 of construction stated in Reece v. Globe, 61 Fed. 958, they should not be held 
 as restrictive, or as limiting anything in the claims, so as to render ineffectual
 
 §938 WORDS AND PHRASES 855 
 
 any part of the conception involved in the portion of the specification which 
 we have quoted. — Westinghouse v. Stanley, 133 Fed. 167; 68 C. C. A. 523. 
 
 Where there are two claims in a patent for two distinct improvements 
 invented to accomplish different results, the words " substantially as speci- 
 fied " mean substantially as specified relative to the subject matter of the 
 claim, and do not necessarily import the description or claim of either im- 
 provement into the claim for the other. Lake Shore v. Car-Brake, 110 U. S. 
 229; Page v. Land, 49 Fed. 936. But these words ordinarily refer back to 
 and point out elements in the combination claimed which have sub- 
 stantially the construction and operation described in the specifica- 
 tion. Westinghouse v. Boyden, 170 U. S. 537; Singer v. Cramer, 
 192 U. S. 265. Cases may be found where an element described in the speci- 
 fication which is essential to the operation, in the way portrayed in the speci- 
 fication, of a combination or device claimed, has been read into the claim 
 from the specification. Westinghouse v. Boyden, supra; Wellman v. Mid- 
 land, 106 Fed. 221. The converse of this proposition, that elements or de- 
 vices described in the specification may not be imported into the claim, is 
 equally well established. Boynton v. Morris, 87 Fed. 227; General v. Inter- 
 national, 126 Fed. 755; Walker on Pat. sec. 182; Temple v. Mfg. Co., 30 
 Fed. 442. Nor are decisions wanting which have limited the general lan- 
 guage of a claim to an element or device, its construction, and operation as 
 set forth in the specification. White v. Dunbar, 119 U. S. 47; Vance v. 
 Campbell, 1 Black, 427; Stirrat v. Mfg. Co., 61 Fed. 980; Adams v. Lindell, 
 77 Fed. 432. — Jewell v. Jackson, 140 Fed. 340; 72 C. C. A. 304. 
 
 These words refer to the whole claim, and import nothing into it not 
 already there, either to narrow it, so as to escape anticipation, or to broaden 
 it so as to establish infringement. The words mean " substantially as speci- 
 fied " in regard to the combination which is the subject of the claim. — 
 American v. Hickmott, 142 Fed. 141 ; 73 C. C. A. 359. 
 
 Lake Shore v. Car-Brake, 110 U. S. 229. 
 
 These words are sometimes used to limit a claim and sometimes to enlarge 
 its operation, but seldom to practically defeat what was the real invention 
 of the patentee. — Draper v. American, 161 Fed. 728; 88 C. C A. 588. 
 
 §938. "Whereby" Clause. 
 
 On referring to the specification we find it there expressly declared that 
 the invention consisted " in the construction and combination of parts herein- 
 after fully described and claimed, reference being had to accompanying draw- 
 ing." Nowhere, either expressly or by reasonable inference, is it asserted 
 that simply the best or preferable construction of the whole or any part 
 of the combination is what is described. — Singer v. Cramer, 192 U. S. 265; 
 48L. Ed. 437; 24 S. Ct. 291. 
 
 Note: It would seem that this holding carries the rule of words of limita- 
 tion farther than any other case, making it include the stock phrases above 
 quoted. 
 
 The evidence demonstrates — and quite likely Russell understood — that 
 some cement mixtures, commercially speaking, were more desirable than 
 others; and the word " cement," used in the claims must be understood 
 when considered in connection with the statutory description as referring 
 generally to cementitious mixtures having the qualities which he describes. 
 — American v. Rowland, 80 Fed. 395; 25 C. C. A. 500.
 
 856 THE FIXED LAW OF PATENTS { 938 
 
 We are not permitted in litigations of this character, to give any word 
 a particular interpretation when it is fairly capable of another one which 
 will enable the patent to cover the actual invention. — Hatch v. Electric, 
 100 Fed. 975; 41 C. C. A. 133. 
 
 To ignore the express functional limitation of the claim, viz. " whereby 
 they are enabled to fold back into the case side by side," would be to create 
 a new claim; not interpret one granted. — Anthony v. Ginnert, 108 F'ed. 
 396; 47 C. C. A. 426. 
 
 The specification states that they are " preferably " of the same area, 
 and that they are " preferably " to overlap completely, in order to eliminate 
 any limitation that might be implied if these terms had not been used and 
 thus to save the claim from being narrowed so that a can otherwise like that 
 described would not be covered by its terms. — Ironclad v. Dairyman's, 143 
 Fed. 512; 74 C. C. A. 372.
 
 CROSS-REFERENCE TABLE OF PATENT LAWS 
 
 nivine sections and amendments to U. S. Revised Statutes and sections of 
 TnHi.?.^ rode in first column, page references to this work m the second column 
 inf ;ie re?erenc?8 tST S.^^^^^^ Statutes and Supplement m the third 
 column. 
 
 U. S. R. S. Sec. In here, page U. S. Cornp^ Stat. 
 
 441 906 252 
 
 475 906 270 
 
 476 907 270 
 
 479 869 271 
 
 481 869 
 
 87S 
 
 483 
 
 478 907 271 
 
 480 877 271 
 
 "- lii - i 
 
 f«t Im 27I 
 
 i i i 
 
 490 909 St 
 
 .^V onq 275 
 
 i - 
 
 Sub. 496, Sec. 7. Act Mar. 3, 1897 864 3385 
 
 892 878 
 
 893 |7| 673 
 973 870 J — 
 
 8^J 870 703 
 
 973 870 
 
 ]^l 87? 1141 
 
 i8l 900 Supp.U^^ 
 
 4886 889 ^^^^ 
 Sub. 4886, Act Mar. 3, 1883 877 
 
 4887 |82 PP 3383 
 
 87fi 3383 
 
 4889 f.^ 3383 
 
 4890 »^ 3383 
 
 4891 ^ Supp. 1454 
 
 4892 905 PP ggg^ 
 
 4893 «^^ 3384 
 
 4894 8«5 3385 
 
 4895 l^ Supp. 1455 
 
 4896 879 » PP ^^^^ 
 
 4897 l^ 3387 
 
 4898 °1l 3387 
 
 4899 Xio 3388 
 
 4900 ^X^ 3388 
 
 4901 ** 
 856*
 
 856** CROSS-REFERENCE TABLE OF PATENT LAWS 
 
 U. S. R. S. 
 
 Sec. 
 
 
 In 
 
 here, page 
 
 U.S. ( 
 
 Zlomp. Stat. 
 
 4903 
 
 
 
 
 864 
 
 
 3389 
 
 4904 
 
 
 
 
 887 
 
 
 3389 
 
 4905 
 
 
 
 
 887 
 
 
 3390 
 
 4906 
 
 
 
 
 887 
 
 
 3390 
 
 4907 
 
 
 
 
 887 
 
 
 3390 
 
 4908 
 
 
 
 
 887 
 
 
 3390 
 
 4909 
 
 
 
 
 888 
 
 
 3390 
 
 4910 
 
 
 
 
 888 
 
 
 3390 
 
 4912 
 
 
 
 
 888 
 
 
 3391 
 
 4913 
 
 
 
 
 888 
 
 
 3391 
 
 4914 
 
 
 
 
 888 
 
 
 3392 
 
 4915 
 
 
 
 
 858 
 
 
 3392 
 
 Sub. 4915, 
 
 Sec. 9, R. S. 
 
 D. C. 
 
 §780 
 
 860 
 
 
 3391 
 
 4916 
 
 
 
 
 910 
 
 
 3393 
 
 4917 
 
 
 
 
 876 
 
 
 3393 
 
 4918 
 
 
 
 
 889 
 
 
 3394 
 
 4919 
 
 
 
 
 871 
 
 
 3394 
 
 4920 
 
 
 
 
 873 
 
 
 3394 
 
 4921 
 
 (see Jud. Code, Sec. 
 
 264) 
 
 907 
 
 Supp. 
 
 236 
 
 4921, 
 
 Sec. 2, Act Feb. 16 
 
 , 1875 
 
 908 
 
 
 526 
 
 4922 
 
 
 
 
 885 
 
 
 3396 
 
 4923 
 
 
 
 
 882 
 
 
 3396 
 
 4929 
 
 
 
 
 874 
 
 Supp. 
 
 1457 
 
 4930 
 
 
 
 
 875 
 
 
 3399 
 
 4931 
 
 
 
 
 875 
 
 
 3399 
 
 4933 
 
 
 
 
 875 
 
 
 3399 
 
 Sub. 4933, 
 
 Act Feb. 4, 
 
 1887 
 
 
 875 
 
 
 3398 
 
 Sub. 4933, 
 
 Ibid., Sec. 2 
 
 
 
 875 
 
 
 3399 
 
 4934 
 
 (amended) 
 
 
 
 880 
 
 Supp. 
 
 1458 
 
 4934 
 
 (orig.) 
 
 
 
 880 
 
 
 3400 
 
 4935 
 
 
 
 
 881 
 
 
 3400 
 
 4936 
 
 
 
 
 881 
 
 
 3400 
 
 Sub. 5046, 
 
 Act July 1, : 
 
 1898, Sec. 70 
 
 866 
 
 Supp. 
 
 1511 
 
 
 Act June 25; 
 
 ,1910 
 
 
 883 
 
 Supp. 
 
 1457 
 
 Fed. Jud. Code, Sec. 
 
 
 
 
 
 
 9 
 
 
 
 
 894 
 
 Supp. 
 
 131 
 
 11 
 
 
 
 
 895 
 
 Supp. 
 
 131 
 
 24 
 
 
 
 
 896 
 
 Supp. 
 
 135 
 
 •48 
 
 
 
 
 897 
 
 Supp. 
 
 149 
 
 50 
 
 
 
 
 897 
 
 Supp. 
 
 149 
 
 116 
 
 
 
 
 893 
 
 Supp. 
 
 190 
 
 117 
 
 
 
 
 893 
 
 Supp. 
 
 190 
 
 128 
 
 
 
 
 894 
 
 Supp. 
 
 193 
 
 129 
 
 
 
 
 893 
 
 Supp. 
 
 194 
 
 239 
 
 
 
 
 893 
 
 Supp. 
 
 228 
 
 240 
 
 
 
 
 898 
 
 Supp. 
 
 228 
 
 250 
 
 
 
 
 892 
 
 Supp. 
 
 231 
 
 251 
 
 
 
 
 898 
 
 Supp. 
 
 232 
 
 256 
 
 
 
 
 896 
 
 - Supp. 
 
 233 
 
 263 
 
 
 
 
 896 
 
 Supp. 
 
 235 
 
 264 
 
 
 
 
 895 
 
 Supp. 
 
 236 
 
 267 
 
 
 
 
 896 
 
 Supp. 
 
 237 
 
 289 
 
 
 
 
 892 
 
 Supp. 
 
 243 
 
 291 
 
 
 
 
 893 
 
 Supp. 
 
 243 
 
 292 
 
 
 
 
 897 
 
 Supp. 
 
 244 
 
 293 
 
 
 
 
 894 
 
 Supp. 
 
 244 
 
 294 
 
 
 
 
 894 
 
 Supp. 
 
 244 
 
 295 
 
 
 
 
 894 
 
 Supp. 
 
 244 
 
 296 
 
 
 
 
 898 
 
 Supp. 
 
 244 
 
 297 
 
 
 
 
 897 
 
 Supp. 
 
 244
 
 THE PATENT STATUTE DIGESTED 
 
 AND PROVIDED WITH THE PATENT OFFICE ANNO- 
 TATIONS. 
 
 ABANDONMENT 
 Application — Delay for One Year. 
 
 All applications for patents shall be completed and prepared 
 for examination within one year after the filing of the application, 
 and in default thereof, or upon failure of the applicant to prosecute 
 the same within one year after an action therein of which notice 
 shall have been given to the applicant, they shall be regarded as 
 abandoned by the parties thereto, unless it be shown to the satis- 
 faction of the Commissioner of Patents that the delay was unavoid- 
 able. — R. S. 4894 (Amend. Mar. 3, 1897). • , r .• 
 
 Note: The Act of Mar. 3, 1897, changed the period of time 
 from " two years " to one year. 
 
 Bar to Patent. 
 
 Any person who has invented * * * unless the same is proved 
 to have been abandoned, may * * * obtam a patent therefor. - 
 R. S. 4886 (Amend. Mar. 3, 1897). 
 
 Delay for One Year — Unavoidable — Excuses. 
 
 (In sound discretion of Commissioner). — R. S. 4894. 
 
 Renewal Applications — Question of Fact. 
 
 * * * \nd upon the hearing of renewed applications preferred 
 under this section, abandonment shall be considered as a question 
 of fact. — R. S. 4897. 
 
 ACTIONS 
 Equity — Questions of Fact — Trial by Jury. 
 
 Sec 2. That said courts (U. S. district courts) when sitting m 
 eouitv for the trial of patent causes, may empanel a jury ot not less 
 than five and not more than twelve persons, subject to such general 
 rules in the premises as may, from time to time, be made by the 
 Supreme Court, and submit to them such questions of fact arising 
 in such causes as such circuit court shall deem expedient. 
 
 And the verdict of such jury shall be treated and_ proceeded 
 upon in the same manner and with the same effect as in the case
 
 858 
 
 THE FIXED LAW OF PATENTS 
 
 of issues sent from chancery to a court of law and returned with 
 such findings. — R. S. 4921 (Amend. Mar. 3, 1897). 
 
 Equity — To Compel Issue of Patent. 
 
 Whenever a patent on application is refused, either by the 
 Commissioner of Patents 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 pro- 
 ceedings had, may adjudge that such applicant is entitled, according 
 to law, to receive a patent for his invention, 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 Commissioner to issue such patent on the appli- 
 cant filing in the Patent Office a copy of the adjudication, and other- 
 wise complying with the requirements of law. 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. — R. S. 4915. See Jud. Code, Sec. 24. 
 
 In ivhat district the bill should be 
 brought considered. — Butterworth v. 
 Hill, 114 U. S., 128-133. 
 
 On what questions bill in equity is 
 appropriate. — Butterworth v. Hoe, 
 112 U. S., 50-60. 
 
 Bill in equity is governed by the rides 
 of delay specified in sec. 4894. — Gandy 
 V. Marble, 122 U. S., 432-440. 
 
 Invention must be patentable to get 
 favorable decision. — Hill v. Wooster, 
 132 U. S., 693. 
 
 May raise new questions. — Christie 
 V. Seybold, 55 F. R., 69. 
 
 Canceled claims, burden of proof of 
 invention. — Durham, 6 App. D. C, 
 78; 71 O. G., 601. 
 
 Expedition of — By Heads of Departments of Government. 
 
 (See Application — Expedition of) — (Act Mar. 3, 1897). 
 
 Infringement — Action on the Case. 
 
 Damages for the infringement of any patent may be recovered 
 by action on the case, in the name of the party interested either 
 as patentee, assignee, or grantee. And whenever in any such action 
 a verdict is rendered for the plaintiff, the court may enter judgment 
 thereon for any sum above the amount found by the verdict as 
 the actual damages sustained, according to the circumstances of 
 the case, not exceeding three times the amount of such verdict, 
 together with the costs. — R. S. 4919. 
 
 Infringement — Plea. 
 (See Defenses, R. S. 4920). 
 
 Interfering Patents. 
 
 (See Interfering Patents, R. S. 4918). 
 
 Qui Tarn Actions — Jurisdiction — Penalty. 
 (See Marking Articles Patented, R. S. 4901).
 
 THE PATENT STATUTE DIGESTED 859 
 
 ADMINISTRATOR 
 Oath by. 
 
 (See Executor). 
 
 AFFIDAVITS AND DEPOSITIONS 
 (See Interferences, R. S. 4905). 
 
 AMENDMENT 
 
 Application — Reissue. 
 
 (See Reissue, R. S. 4916). 
 
 Disclaimer. 
 
 R. S. 4917. 
 
 Duty of Commissioner. 
 R. S. 481. 
 
 Examination of Application. 
 
 R. S. 4893. 
 
 Requirement — General. 
 
 R. S. 4888. 
 
 Rules for Patent Office Practice. 
 
 R. S. 483. 
 
 When to be Made. * 
 
 R. S. 4894. 
 
 ANNUAL REPORT 
 
 Commissioner of Patents. 
 
 (See Commissioner of Patents). 
 
 ANTICIPATION 
 General Provision. 
 
 R. S. 4886. 
 
 Prior Foreign Invention — When Not. 
 
 Whenever it appears that a patentee, at the time of making 
 his application 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 publication. — R. S. 4923.
 
 860 THE FIXED LAW OF PATENTS 
 
 APPEALS 
 Applications — Examiners-in-Chief . 
 
 Every applicant for a patent or for the reissue of a patent, anj^ 
 of the claims of which have been twice rejected, and every party 
 to an interference, may appeal from the decision of the primary 
 examiner, or of the examiner in charge of interferences in such case, 
 to the board of examiners-in-chief; having once paid the fee for 
 such appeal. — R. S. 4909. 
 
 Certification — To Supreme Court. 
 (See Judicial Code, Sees. 239, 251). 
 
 Certiorari — Supreme Court. 
 
 (See Judicial Code, Sec. 240). 
 
 Circuit Court of Appeals. 
 
 (See Judicial Code, Sees. 116, 117, 128, 129). 
 
 Court of Appeals, D. C. 
 
 That the determination of appeals from the decision of the 
 Commissioner of Patents, now vested in the general term of the 
 Supreme Court, of the District of Columbia, in pursuance of the 
 provisions of section 780 of the Revised Statutes of the United 
 States relating to the District of Columbia, shall hereafter be and 
 the same is hereby vested in the court of appeals created by this act. 
 
 And in addition any party aggrieved by a decision of the Com- 
 missioner of Patents in any interference case may appeal there- 
 from to said court of appeals. — Sec. 9, Act of Feb. 9, 1893. 
 
 Court of Appeals, D. C. — Notice of to Commissioner. 
 
 When an appeal is taken to the Court of Appeals of the District 
 of Columbia, the appellant shall give notite to the Commissioner, 
 and file in the Patent Office within such time as the Commissioner 
 shall appoint, his reasons of appeal, specifically set forth in writing. 
 — R. S. 4912. (See R. S. D. C. 780). 
 
 Court of Appeals, D. C. — Notice — Proceedings — Evidence. 
 
 The court shall, before hearing such appeal, give notice to the 
 Commissioner of the time and place of the hearing, and on receiving 
 such notice the Commissioner shall give notice of such time and 
 place in such manner as the court may prescribe, to all parties who 
 appear to be interested therein. The party appealing shall lay 
 before the court certified copies of all the original papers and evi- 
 dence in the case, and the Commissioner shall furnish the court 
 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 prin- 
 ciples of the thing for which a patent is demanded. — R. S. 4913. 
 
 Court of Appeals, D. C. — Return — Certificate entered in P. O. 
 The court, on petition, shall hear and determine such appeal, 
 and revise the decision appealed from in a summary way, on the
 
 THE PATENT STATUTE DIGESTED 861 
 
 evidence produced before the Commissioner, at such early and con- 
 venient time as the court may appoint; and the revision shall be 
 confined to the points set forth in the reasons of appeal. After 
 hearing the case the court shall return to the Commissioner a cer- 
 tificate of its proceedings and decision, which shall be entered of 
 record in the Patent Office, and shall govern the further proceed- 
 ings in the case. But no opinion or decision of the court in any 
 such case shall preclude any person interested from the right to 
 contest the validity of such patent in any court wherein the same 
 may be called in question. — R. S. 4914, 
 
 Examiners-in-Chief — Duties of. 
 
 * * * On the written petition of the appellant, to revise and 
 determine upon the valicUty of the adverse decisions of examiners 
 upon applications for patents, and for reissues of patents, and in 
 interference cases * * * — R. S. 482. 
 
 Eyaminers-in-Chief to Commissioner of Patents. 
 
 If such party is dissatisfied wdth the decision of the Examiners- 
 in-Chief, he may, on payment of the fee prescribed, appeal to the 
 Commissioner in person. — R. S. 4920. 
 
 Interferences — From Examiner of Interferences — From Ex- 
 aminers-in-Chief. 
 
 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 deter- 
 mine the question of priority of invention. And the Commissioner 
 may issue a patent to the party who is adjudged the prior inventor, 
 unless the adverse party appeals 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. — R. S. 4904, 
 
 Interferences — To Examiners-in-Chief. 
 
 Every applicant for a patent or for the reissue of a patent, any 
 of the claims which have been twice rejected, and every party to 
 an interference, may appeal from the decision of the primary exam- 
 iner, or of the examiner in charge of interferences in such case, to 
 the board of examiners-in-chief, having once paid the fee for such 
 appeal. — R. S. 4909. 
 
 Interferences — Time Allowed. 
 
 (See R. S. 4904). 
 
 APPLICANT 
 Notice to — Of Interference. 
 
 (See Interference — Notice of, R. S. 4904).
 
 862 
 
 THE FIXED LAW OF PATENTS 
 
 Oath of — Before whom Taken. 
 
 (See Oath, R. S. 4892). 
 
 APPLICATION 
 General Provisions — Requirements. 
 
 Before any inventor or discoverer shall receive a patent for his 
 invention or discovery, he shall make application therefor, in writing, 
 to the Commissioner of Patents, and shall file in the Patent Office 
 a written description of the same, and of the manner and process 
 of making, constructing, compounding, and using it, in such fjjll, 
 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 contemplated applying 
 that principle, so as to distinguish it from other inventions; and 
 he shall particularly point out and distinctly claim the part, improve- 
 ment, or combination which he claims as his invention or discovery. 
 The specification and claim shall be signed by the inventor and 
 attested by two witnesses. — R. S. 4888. 
 
 Application must he made by the in- 
 ventor. — Kennedy v. Hazelton, 128 
 U. S., 667. 
 
 Claim limited by description. — Mit- 
 chell V. Tilghman, 19 Wall., 287 
 Hailes v. Van- Womer, 29 Wall., 353 
 Fuller V. Yentzer, 94 U. S., 288, 299 
 Merrill v. Yeomans, 94 U. ,S., 568 
 R. R. Co. V. Mellon, 104 U. S., 112; 
 Yale V. Greenleaf, 117 U. S., 554; White 
 V. Dunbar, 119 U. S., 47; Snow v. Lake 
 Shore, 121 U. S., 617; Haines v. Mc- 
 Laughlin, 135 U. S., 584; Howe v. 
 National, 134 U. S., 388; McClain v. 
 Ortmayer, 141 U. S., 419; Knapp v. 
 Morss, 150 U. S., 221; Am. Fibre v. 
 Port Huron, 72 F. R., 516; Gould v. 
 Trojan, 74 F. R., 794; Groth v. Inter- 
 national, 61 F. R., 284. 
 
 Composition of matter; how identified 
 in claim. — Cochrane v. Badische, 
 111 U. S., 293. 
 
 Claims defined and construed. — Estey 
 V. Burdett, 109 U. S., 633-640; Bus- 
 sey V. Excelsior, 110 U. S., 131; Rail- 
 way V. Car Brake, 110 U. S., 229; Con- 
 solidated V. Kunkle, 119 U. S., 45; 
 Drvfoos V. Wiese, 124 U. S., 32; Bragg 
 V. Fitch, 121 U. S., 478; Plummer v. 
 Sargent, 120 U. S., 442. Joyce v. 
 Chillicotho, 127 U. S., 557; Sargent v. 
 Burgess, 129 U. S., 19; Crescent v. 
 Gottfried, 128 U. S., 158; Boyden v. 
 Westinghouse, 70 F. R., 816; McCor- 
 mick V. Aultman, 73 O. G., 1999. Na- 
 tional V. Am., 53 F. R., 367; Sayre v. 
 Scott, 55 F. R., 971; Judd v. Fowler, 61 
 
 F. R., 821; Le Favour v. Rice, 62 
 F. R., 393; Kilbourne v. Bingham, 50 
 F. R., 697; Norton v. Jensen, 49 F. R., 
 859; Illinois v. Robbins, 52 F. R., 215. 
 
 Claims to pioneer invention con- 
 strued. — Morley v. Lancaster, 129 
 U. S., 263; Tuttle v. Claflin, 76 F. R., 
 227; Dederick v. Siegmund, 51 F. R., 
 233. 
 
 Claims construed by prior art. — 
 Washing Mach. v. Tool Co., 20 Wall., 
 342. Zane v. Soffe, 110 U. S., 200; 
 Thompson v. Boisselier, 114 U. S., 1; 
 Grier v. Wilt, 120 U. S., 412; Wollen- 
 sack V. Reiher, 115 U. S., 87; Deoring 
 V. Winona, 155 U. S., 286; Schuvler v. 
 Elec, 66 F. R., 313; Fox v. Perkins, 
 
 52 F. R., 205; West. Elec. ;•. Sperrv, 
 58 F. R., 186; Blount v. Bardsley, 75 
 F. R., 674. 
 
 Definiteness of Specification. — 
 Mowry v. Whitney, 14 Wall., 620; 
 Sewall v: Jones, 91 U. S., 171; Eames 
 V. Andrews, 122 U. S., 40; Telephone 
 Ca.ses, 126 U. S., 1; Bene v. Jeantet, 
 129 U. S., 683; Western v. Ansonia, 
 114 U. S., 447: Lawther v. Hamilton, 
 124 U. S., 1; Lalance v. Habermann, 
 
 53 F. R., 375; Dixon Woods v. Pfeifer, 
 55 F. R., 390; Long v. Pope, 75 F T?., 
 835; Edison v. U. S., 52 F. R., 3-O.j. 
 
 Deceptive patent void. — Carlton v. 
 Bokee, 17 Wall., 463. 
 
 Effect of words " substantially as 
 described " considered. — Brown v. 
 Davis, 116 U. S., 237; Columbus v. 
 Robbins, 64 F. R., 384; Westinghouse
 
 THE PATENT STATUTE DIGESTED 
 
 863 
 
 V. Edison, 63 F. R., 588; Campbell v. 
 Richardson, 76 F. R., 576. 
 
 Effect of words ''for the purpose set 
 forth " considered. — Day v. Fair 
 Haven, 132 U. S., 98. 
 
 Elements not imported into a claim 
 by construction to make out a case of 
 novelty or infringement. — Wollensack 
 V. Sargent, 151 U. S., 221; McCartv v. 
 Lehigh, 160 U. S., 110. 
 
 Element positively included in the 
 claim is made essential. — Fay v 
 Cordesman, 109 U. S., 408; Yale v. 
 Sargent, 117 U. S., 373; Watson v. 
 Cincinnati, 132 U. S., 161; Wright v. 
 Yuengling, 155 U. S., 47; Coupe v. 
 Royer, 155 U. S., 565. 
 
 Indefinite claim, patent invalid. — 
 Electric v. McKeesport, 159 U. S., 
 465. 
 
 Interpretation of specification and 
 drawing. — Caverly v. Deere, 66 F. R., 
 305. 
 
 Limitations in patent resulting from 
 answer to requirement of Office. — Sar- 
 gent V. Hall, 114 U. S., 63; Sutter v. 
 Robinson, 119 U. S., 530; Shepard v. 
 Carrigan, 116 U. S., 593; McCormick 
 V. Graham, 129 U. S., 1; Phcenix i'. 
 Spiegel, 133 U. S., 360; Roemer v. 
 Peddie, 132 U. S., 313; Morgan v. 
 Albany, 152 U. S., 425; Lehigh v. 
 Kearney, 158 U. S., 461; American v. 
 Pennock, 17 S. C. Reporter, 1; Reecey. 
 Globe, 61 F. R., 958. 
 
 Must be claimed as well as shown. — 
 Roemer v. Bernheim, 132 U. S., 103. 
 
 New matter introduced by amendment 
 condemned. — Eagleton v. Mfg. Co 
 111 U. S., 490; Chicago v. Sayles, 97 
 U. S., 554; Michigan f. Consolidated, 
 67 F. R., 121; Long v. Pope, 75 F. R., 
 835.^ 
 
 Useful application test of a patent's 
 validity. — Klein v. Russell, 19 Wall., 
 433. 
 
 Completion of. 
 
 All appHcations for patents shall be completed and prepared 
 for examination within one year after the filing of the application, 
 and in default thereof, or upon failure of the applicant to prosecute 
 the same within one year after any action therein, of which notice 
 shall have been given to the applicant, they shall be regarded as 
 abandoned by the parties thereto, unless it be showTi to the satis- 
 faction of the Commissioner of Patents that such delay was un- 
 avoidable. — R. S. 4894. 
 
 Statutes in regard to delay apply to 
 bill in equity under sec. 4915. — Gandy 
 V. Marble, 122 U. S., 432-440. 
 
 Decision of Office final. — West. Elec. 
 V. Sperry, 58 F. R., 186. 
 
 Drawings — When Required. 
 
 When the nature of the case admits of drawings, the applicant 
 shall furnish one copy signed by the inventor or by his attorney 
 in fact, and attested by two witnesses, which shall be filed in the 
 Patent Office; and a copy of the drawing, to be furnished by the 
 Patent Office, shall be attached to the patent as a part of the speci- 
 fication. — R. S. 4889. 
 
 Examination of — Novelty — Utility — Importance. 
 
 On the filing of any such application and the payment of the 
 fees required by law, the Commissioner of Patents 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 entitled to a patent under the law, and that the same is suffi- 
 ciently useful and important, the Commissioner shall issue a patent 
 therefor. — R. S. 4893. 
 
 Mandamus to compel Commissioner 
 to sign patent, if his judgment and dis- 
 cretion are to issue it — Supervision of 
 
 Secretary of Interior not applicable to 
 this matter. — Butterworth v. Hoe, 112 
 U. S., 50-60.
 
 354 THE FIXED LAW OF PATENTS 
 
 Examination and Rejection — Reconsideration. 
 
 Whenever, on examination, any claim for a patent is rejected, 
 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 persists in his claim for a 
 patent, with or without altering his specifications, the Commissioner 
 shall order a re-examination of the case. — R. S. 4903. 
 
 Amendment may be made by attorney l v. Featherstone, 147 U. S., 209. 
 after inventor's death. — De la Vergne I 
 
 Executor or Administrator — When and How Made. 
 
 (See Executor and Administrator, R. S. 4896). 
 
 Execution of — Oath. 
 
 (See Oath. — By Inventor if Living, R. S. 4895). 
 
 Expedition of — Request by Head of Department of Government. 
 
 That in every case where the head of any Department of the 
 Government shall request the Commissioner of Patents to expedite 
 the consideration of an application for a patent it shall be the duty 
 of such head of a Department to be represented before the Com- 
 missioner in order to prevent the improper issue of a patent. — 
 Sec. 7 of Act of Mar. 3, 1897. 
 
 Lapse of — Failure to Pay Final Fee. 
 
 * * * If the final fee is not paid within that period (six months 
 from the time at which it was passed and allowed and notice thereof 
 was sent to the applicant or his agent) the patent shall be with- 
 held. — R. S. 4885. 
 
 Oath — By Inventor. 
 
 * * * And in all cases of an application by an assignee for the 
 issue of a patent, the application shall be made and the specifica- 
 tion sworn to by the inventor or discoverer, and in all cases of an 
 application for a reissue of any patent, the application must be 
 made and the corrected specification signed by the inventor or 
 discoverer, if he is living * * * — R. S. 4895. 
 
 Reissue — By Whom Made. 
 
 * * * And in all cases of an application for a reissue of any 
 patent, the application must be made and the corrected specifi- 
 cation signed by the inventor or discoverer, if he is living * * * — ■ 
 R. S. 4895. 
 
 Renewal — Failure to Pay Final Fee. 
 
 Any person who has an interest in an invention or discovery, 
 whether as inventor, discoverer, or assignee, for which a patent 
 was ordered to issue upon the payment of the final fee, but who 
 fails to make payment thereof within six months from the time at 
 which it was passed and allowed, and notice thereof was sent to
 
 THE PATENT STATUTE DIGESTED 865 
 
 the applicant or his agent, shall have a right to make an application 
 for a patent for such invention or discovery the same as in the case 
 of an original application. But such second application must be 
 made within two years after the allowance of the original appli- 
 cation. But no person shall be held responsible in damages for the 
 manufacture or use of any article or thing for which a patent was 
 ordered to issue under such renewed application prior to the issue 
 of the patent. And upon the hearing of renewed applications pre- 
 ferred under this section, abandonment shall be considered as a 
 question of fact. — R. S. 4897. 
 
 Requirements Regarding — Specifications and Claims. 
 
 (See Specifications — Requirements, R. S. 4888). 
 
 Right of Purchaser — Before Application is Made. 
 
 Every person who purchases of the inventor or discoverer, or, 
 with his knowledge and consent, constructs any newly invented 
 or discovered machine, or other patentable article, prior to the 
 application by the inventor or discoverer for a patent, or who sells 
 or uses one so constructed, shall have the right to use, and to vend 
 to others to be used, the specific thing so made or purchased, with- 
 out liability therefor. — R. S. 4899. 
 
 Who May Make — Assignment Before Issue. 
 
 * * * In all cases of an application by an assignee for the issue 
 of a patent, the application shall be made and the specification 
 sworn to by the inventor or discoverer; and in all cases of an appli- 
 cation for a reissue for any patent, the application must be made 
 and the corrected specification signed by the inventor or discoverer 
 if he is living. * * * — R. S. 4895. ' 
 
 ART 
 Patentability of. 
 R. S. 4886. 
 
 ASSIGNEES 
 
 Renewal Applications — Default in Paying Final Fee. 
 
 (May make such application under restrictions and limitations, 
 R. S. 4897). 
 
 ASSIGNMENT 
 General Provision. 
 
 Every patent or any interest therein shall be assignable in law 
 by an instrument in writing, and the patentee or his assigns or 
 legal representatives may in like manner grant and convey an 
 exclusive right under his patent to the whole or any specified part 
 of the United States. An assignment, grant, or conveyance shall 
 be void as against any subsequent purchaser or mortgagee for a 
 valuable consideration, without notice, unless it is recorded in the 
 Patent Office within three months from the date thereof. 
 
 If any such assignment, grant, or conveyance of any patent 
 shall be acknowledged before any notary public of the several States
 
 866 
 
 THE FIXED LAW OF PATENTS 
 
 or Territories or the District of Columbia, or any commissioner 
 of the United States circuit court, or before any secretary of legation 
 or consular officer authorized to administer oaths or perform no- 
 tarial acts under section seventeen hundred and fifty of the Revised 
 Statutes, the certificate of such acknowledgment, under the hand 
 and official seal of such notary or other officer, shall be prnna facie 
 evidence of the execution of such assignment, grant, or conveyance. 
 — R. S. 4898. 
 
 Assignment and license defined. — 
 Nicholson v. Jenkins, 14 Wall., 452; 
 Adams v. Burks, 17 Wall., 453; Little- 
 field V. Perry, 21 Wall., 205; Burdell v. 
 Denig, 92 U. S., 716. Hayward v. An- 
 drews, 106 U. S., 672; Oliver v. Chem. 
 Works, 109 U. S., 75; Laver v. Dennitt, 
 109 U. S., 90; Solomons v. U. S., 137 
 U. S., 342; Waterman v. Mackenzie, 
 138 U. S., 252; St. Paul v. Starling, 140 
 U. S., 184; Dalzell v. Watch Co., 149 
 U. S., 315; Lane v. Locke, 150 U. S., 
 193; Heaton v. Eureka, 78 O. G., 171. 
 Anderson v. Eiler, 50 F. R., 775. 
 
 Construction of contract. — National 
 V. Willcox, 74 F. R., 557. 
 
 Verbal license is void as against subse- 
 quent assignee without notice. — Gates 
 V. Frazier, 153 U. S., 332. 
 
 An agreement not to dispute the valid- 
 ity of a patent not directly involved in the 
 agreement is against public policy. — 
 Pope V. GormuUy, 144 U. S., 224 et seq. 
 
 Authority of attorney to execute assign- 
 ment. — Chauche v. Pare, 75 F. R., 
 283. 
 
 Assignment for extension. — R. R. v. 
 Trimble, 10 Wall., 367. Nicholson v. 
 Jenkins, 14 Wall., 452. 
 
 Conditional assignment. — Atkins v. 
 Parke, 61 F. R., 953. 
 
 Future invention, contract to assign. 
 — Regan v. Pacific, 49 F. R., 68. 
 
 Implied license, employer and em- 
 ployee. — Hapgood V. Hewitt, 119 
 U. S., 226-234. 
 
 Specific performance of contract to 
 assign invalid patent. — Kennedy v. 
 Hazelton, 128 U. S., 667-673. 
 
 Assignment construed. — Rude v. 
 Westcott, 130 U. S., 152. 
 
 Effect of subsequent contract on abso- 
 lute assignment. — Boesch v. Graff, 
 133 U. S., 697. 
 
 Licensee's liability. — U. S. v. Burns, 
 12 Wall., 246. Paper Bag Cases, 105 
 U. S., 766. 
 
 License, escrow. — Mellon v. R. R. 
 Co., 21 O. G., 1616. 
 
 Mortgage, notice. — Waterman v. 
 Shipman, 55 F. R., 982. 
 
 One inventor as trustee for another. — 
 Ambler v. Whipple, 20 Wall., 546. 
 
 Patented machine is purchaser's prop- 
 erty. — Mitchell V. Hawley, 16 Wall., 
 544. Paper Bag Cases, 105 U. S., 
 766. 
 
 Purchase of article may give license 
 to use process. — Vt. v. Gibson, 56 
 F. R., 143. 
 
 Right to purchase patented article. — 
 Hobble v. Jennison, 149 U. S., 355. 
 
 Recording assignments, effect of; what 
 instruments recorded. — Standard v. 
 Crane, 77 O. G., 811. 
 
 Seal. — Gottfried v. Miller, 104 U. S., 
 521. 
 
 Separate claims of a patent are not 
 assignable. — Pope v. Gormully, 144 
 U. S., 248. 
 
 Successors of assignees. — Hammond 
 v. Mason, 92 U. S., 724. 
 
 Bankruptcy — Vests Patent Property. 
 
 Sec. 70. Title to Property. The trustee of the estate of a bank- 
 rupt, upon his appointment and qualification, and his successor 
 or successors, if he shall have one or more, upon his or their appoint- 
 ment and qualification, shall in turn be vested by operation of law 
 with the title of the bankrupt, as of the date he was adjudged a 
 bankrupt, except in so far as it is to property which is exempt, 
 to all (1) documents relating to his property; (2) interests in 
 patents, patent rights, copyrights, and trade-marks. — R. S. 5046, 
 and Sec. 70, Act July 1, 1898. 
 
 Before AppHcation — Implied License. 
 
 (See R. S. 4899).
 
 THE PATENT STATUTE DIGESTED 867 
 
 Before Issue — Application to be made by Inventor. 
 
 Patents may be granted and issued or reissued to the assignee of 
 the inventor or discoverer; but the assignment must first be 
 entered of record in the Patent Office. And in all cases of an 
 application by an assignee for the issue of a patent, the application 
 shall be made and the specification sworn to by the inventor or 
 discoverer; and in all cases of an application for a reissue of any 
 patent, the application must be made and the corrected specifi- 
 cation signed by the inventor or discoverer, if he is living. * * * — ■ 
 R. S. 4895. 
 
 Fees for Recording. 
 
 (See Fees). 
 
 By Instrument in Writing — Execution and Recording. 
 
 Every patent or any interest therein shall be assignable in law 
 by an instrument in writing, and the patentee or his assigns or 
 legal representatives may in like manner grant and convey an 
 exclusive right under his patent to the whole or any specified part 
 of the United States. An assignment, grant, or conveyance shall 
 be void as against any subsequent purchaser or mortgagee for a 
 valuable consideration, without notice, unless it is recorded in 
 the Patent Office within three months from the date thereof. 
 
 If any such assignment, grant, or conveyance of any patent 
 shall be acknowledged before any notary public of the several States 
 and Territories or the District of Columbia, or any commissioner 
 of the United States circuit court, or before any secretary of legation 
 or consular officer authorized to administer oaths or perform 
 notarial acts under section 1750 of the Revised Statutes, the certif- 
 icate of such acknowledgment under the hand and official seal of 
 such notary or other officer, shall be prima facie evidence of the 
 execution of such assignment, grant, or conveyance. — R. S. 4898, 
 and Act Mar. 3, 1897. 
 
 Note : The last paragraph added by Act Mar. 3, 1897. 
 
 By Instrument in Writing — Prima Facie. 
 
 (SeeR.S. 4898 supra). 
 
 Recording — Must be Within Three Months. 
 
 (See R. S. 4898 supra). 
 
 Recording — Must be Recorded in Patent Ofl&ce — When. 
 
 (See Assignment Before Issue, R. S. 4895). 
 
 ASSISTANT COMMISSIONER 
 Appointment of. 
 (See R. S. 476).
 
 868 THE FIXED LAW OF PATENTS 
 
 ATTORNEYS 
 Recognition Refused — Gross Misconduct. 
 
 For gross misconduct the Commissioner of Patents may refuse 
 to recognize anj' 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. — R. S. 487. 
 
 BANKRUPTCY 
 Assignments in — Vests Patent Property in Assignee. 
 
 (See Assignments — Bankruptcy, Sec. 70, Act July 1, 189S;. 
 
 BILL 
 In Equity — To Compel Issue of Patent. 
 
 (See Actions — Equity, R. S. 4915). 
 
 CERTIFIED COPIES 
 Foreign Patents. 
 (See Evidence — Foreign Letters Patent, R. S. 893). 
 
 Records and Papers. — Patent Office. 
 
 (See Evidence — Copies of Patents and Records, R. S. 892). 
 
 For Court of Appeals, D. C. — Furnished by Whom. 
 
 (See Appeals — Court of Appeals, D. C). 
 
 CERTIORARI 
 Supreme Court — From Circuit Court of Appeals. 
 
 (See Judicial Code, Sec. 240). 
 
 CIRCUIT COURT OF APPEALS 
 (See Appeals). 
 
 CLAIM 
 What to Cover. 
 
 (See Application — Requirements, R. S. 4888). 
 
 CLERK OF U. S. COURT 
 Summoning Witnesses — Interference Cases. 
 
 (See Witnesses, R. S. 4906). 
 
 COMMISSIONER OF PATENTS 
 General Provision. 
 
 There shall be in the Patent Office a Commissioner of Patents, 
 one Assistant Commissioner, and three examiners-in-chief, who 
 shall be appointed by the President, by and with the advice and 
 consent of the Senate. All other officers, clerks, and employes
 
 THE PATENT STATUTE DIGESTED 
 
 869 
 
 authorized bv law for the Office shall be appointed by the Secretary 
 of the Interior, upon the nomination of the Commissioner of 
 Patents. [See § 169.] — R. S. 476. 
 
 Annual Report of — Shall Contain What. 
 
 The Commissioner of Patents shall lay before Congress, in the 
 month of January, annually, a report, giving a detailed statement 
 of all moneys received for patents, for copies of records or drawings, 
 or from any other source whatever; a detailed statement of all 
 expenditures 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 alpha- 
 betical list of all the patentees with their places of residence; a hst 
 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. — R. S. 494. 
 
 Appeal to. 
 
 If such partv is dissatisfied with the decision of the examiners- 
 in-chief, he may, on payment of the fee prescribed, appeal to the 
 Commissioner in person. — R. S. 4910. 
 
 Applications — Examination of. 
 
 (See Application— Examination of, R. S. 4893). 
 
 Bond — Chief Clerk. 
 
 The Commissioner of Patents and the 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 thou- 
 sand dollars and the latter in the sum of five thousand dollars, 
 conditioned for the faithful discharge of their respective duties, 
 and that they shall render to the proper officers of the Treasury 
 a true account of all money received by virtue of their office. — 
 R. S. 479. 
 
 Duties of. 
 
 The Commissioner of Patents, under the direction of the Secre- 
 tary of the Interior, shall superintend or perform all duties respect- 
 ing the granting and issuing of patents directed by law; and he shall 
 have charge of all books, records, papers, models, machines, and 
 other things belonging to the Patent Office. — R. S. 481.- 
 
 Duties of Commissioner. — Butterworth v. Hoe, 112 U. S. 50. 
 
 Examination Under Oath — Court of Appeals, D. C. 
 
 * * * 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 thing for which a patent is 
 demanded. — R. S. 4913. 
 
 How Appointed. 
 
 (See Patent Office — Officers, R. S. 476).
 
 870 THE FIXED LAW OF PATENTS 
 
 Notice of Hearings — Court of Appeals, D. C. 
 
 (See Appeals — Court of Appeals, D. C.)- 
 
 Rules and Regulations — Established by. 
 (See Rules and Regulations, R. S. 483). 
 
 Rules for Taking Evidence — Patent Office Cases. 
 
 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 
 officer authorized by law to take depositions to be used in the courts 
 of the United States or of the State where the officer resides. — 
 R. S. 4905. 
 
 COMPOSITION OF MATTER 
 Patentability of. 
 
 R. S. 4886. 
 
 Specimens to be Furnished — When and How. 
 
 When the invention or discovery is of a composition of matter, 
 the appUcant, if required by the Commissioner, shall furnish speci- 
 mens of ingredients and of the composition, sufficient in quantity 
 for the purpose of experiment. — R. S. 4890. 
 
 CONGRESS 
 Powers of. 
 
 [The constitutional provision. — The Congress shall have power 
 * * * to promote the progress of Science and Useful Arts, by se- 
 curing for limited Times to Authors and Inventors the exclusive 
 Right to their respective Writings and Discoveries.] — Art. I, Sec. 
 VIII. 
 
 COSTS 
 Complainants — Actions for Infringement. 
 
 (See R. S. 4919). 
 
 Defendants — Actions for Infringement. 
 
 (See R. S. 4920). 
 
 Disclaimer — Failure to File. 
 
 When judgment or decree is rendered for the plaintiff or com- 
 plainant, iiii any suit at law or in equity, for the infringement of a 
 part of a patent, in which it appears that the patentee, in his speci- 
 fication, claimed to be the original and first inventor or discov- 
 erer of any material or substantial part of the thing patented, of 
 which he was not the original and first inventor, no costs shall 
 be recovered, unless the proper disclaimer, as provided by the patent 
 laws, has been entered at the Patent Office before the suit was 
 brought. (See 4917, 4922). — R. S. 973.
 
 THE PATENT STATUTE DIGESTED 
 Failure to Disclaim — When. 
 
 871 
 
 * * * But in every sucii 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. * * * — R. S. 4922. 
 
 COURT OF APPEALS, D. C. 
 
 General Act — Jurisdiction &c. 
 
 Be it enacted, &c., That there shall be, and 'there is hereby, estab- 
 lished in the District of Columbia a court, to be known as the court 
 of appeals of the District of Columbia. 
 
 Sec. 6. That the said court of appeals shall establish a term of 
 the court during each and every month in each year excepting the 
 months of July and August. Act Feb. 9, 1893. 
 
 * * * Except as provided in the next succeeding section (as to 
 certification and certiorari), the judgments and decrees of said court 
 of appeals shall be final in all cases arising under the patent laws 
 * * *. — Jud. Code, Sec. 250. 
 
 DAMAGES 
 
 General Provision. 
 
 Damages for the infringement of any patent may be recov- 
 ered by action on the case, in the name of the party interested either 
 as patentee, assignee, or grantee. And whenever in any such action 
 a verdict is rendered for the plaintiff, the court may enter judgment 
 thereon for any sum above the amount found by the verdict as 
 the actual damages sustained, according to the circumstances of 
 the case, not exceeding three times the amount of such verdict, 
 together with the costs. — R. S. 4919. 
 
 Actual damages, rule in law actions. — 
 Birdsall v. Coolidge, 93 U. S., 64. 
 
 Anticipation, question for jury in law 
 action. — Harper & Reynolds Co. v. 
 Wilgus, 56 F. R., 587. 
 
 Conspiracy, action at law. — Ambler 
 V. Choteau, 107 U. S., 586. 
 
 Infringement. — Fermentation v. 
 Maus, 122 U. S., 413; Safety Valve v. 
 Steam Gage, 113 U. S., 157; Lake 
 Shore v. Nat'l., 110 U. S., 229; Morley 
 V. Lancaster, 129 U. S., 263; Hurlbut 
 V. Schillinger, 130 U. S., 456; Plummer 
 ;;. Sargent, 120 U. S., 442. Wollensack 
 V. Sargent, 151 U. S., 221; Deering v. 
 Winona, 155 U. S., 286; Dubois v. 
 Kirk, 158 U. S., 58; National v. 
 Boston, 156 U. S., 502; Potts v. 
 Creager, 155 U. S., 597; Belknap v. 
 Schild, 161 U. S., 10; Griswold v. 
 Harker, 62 F. R., 389; Devlin v. 
 Paynter, 64 F. R., 398; Am. v. Na- 
 tional, 51 F. R., 229; Gurney v. Oakes, 
 66 F. R., 1007; Capital v. Natl., 70 
 
 F. R., 709; Lalance v. Habermann, 53 
 F. R., 375; Celluloid v. Arlington, 52 
 F. R., 740; Adee v. Mott, 55 F. R., 
 876. 
 
 Infringement doubtful, injunction re- 
 fused. — Ertel V. Stahl, 65 F. R., 517; 
 Schwarzwalder v. N. Y., 66 F. R., 152. 
 
 Infringement of apparatus which de- 
 livers perishable article. — Morgan v. 
 Albany, 152 U. S., 425. 
 
 Infringement by purchaser from as- 
 signee. — Keeler v. Standard, 157 U. S., 
 659. 
 
 Infringement, pioneer invention. — 
 Westinghouse v. N.Y., 63 F. R., 962; 
 Norton v. Jensen, 49 F. R., 859. 
 
 Noninfringement. — Coon v. Wilson, 
 113 U. S., 268; Blake v. San Francisco, 
 
 113 U. S., 679; Thompson v. Boisselier, 
 
 114 U. S., 1; Sargent v. Hall, 114 U. S., 
 63; McMurray v. Mallory, 111 U. S., 
 97; Voss V. Fisher, 113 U. S., 213; 
 Grier v. Wilt, 120 U. S., 412; Fay v. 
 Cordesman, 109 U. S., 408; Estey v.
 
 872 
 
 THE FIXED LAW OF PATENTS 
 
 Burdett, 109 U. S., 633; Clements v. 
 Excavating, 109 U. S., 641; Bussey v. 
 Excelsior, 110 U. S., 131; Zane v. 
 Soffe, 110 U. S., 200; Shepard v. Car- 
 rigan, 116 U. S., 593; Yale v. Sargent, 
 117 U. S., 373; Consold. v. Kunkle, 119 
 .U. S., 45; California v. Schalicke, 119 
 U. S., 401; Sutter i>. Robinson, 119 
 U. S., 530; Sharp v. Riessner, 119 U. S., 
 631; Hartshorn v. Saginaw Co., 119 
 U. S., 664; Crawford v. Heysinger, 123 
 U. S., 589; Dryfoos v. Wiese, 124 U. S., 
 32; Yale o. James, 125 U. S., 447; 
 Clark V. Beecher, 115 U. S., 79; Wol- 
 lensak v. Reiher, 115 U. S., 87; Field 
 V. De Comeau, 116 U. S., 187; Brown v. 
 Davis, 116 U. S., 237; Worden v. 
 Searls, 121 U. S., 14; >IcCormick v. 
 Whitmer, 129 U. S., 1; Sargent v. Bur- 
 gess, 129 U. S., 19; Peters v. Active, 
 129 U. S., 530; Ben6 v. Jeantet, 129 
 U. S., 683; Hendy v. Golden, 127 U. S., 
 370; Cook v. Sandusky, 15 Brodix, 
 120; Wright v. Yuengling, 155 U. S., 
 47; United States v. Berdan, 156 U. S., 
 552. Miller v. Eagle, 151 U. S., 186; 
 McCarty v. Lehigh, 160 U. S., 110; 
 Elec. V. McKeesport, 159 U. S., 465; 
 Lehigh v. Kearney, 158 U. S., 461; 
 Boyd V. Janesville, 158 U. S., 260; 
 Black Diamond v. Excelsior, 156 U. S., 
 611; Roller Mil! v. Barnard, 156 U. S., 
 261; Dashiell v. Grosvenor, 162 U. S., 
 
 425; Kinzel v. Luttrell, 67 F. R., 926; 
 Wright V. Clinton, 67 F. R., 790; Bon- 
 sak V. Elliott, 69 F. R., 335; Jensen v. 
 Norton, 67 F. R., 236; Thomson-Hous- 
 ton ;;. West. 70 F. R., 69; Gould v. 
 Trojan, 74 F. R., 794; Brush v. West- 
 ern, 76 F. R., 761; Stirratt v. Excelsior, 
 61 F. R., 980; Cornell v. Bataille, 61 
 F. R., 684; Pacific v. Cons. Co., 62 
 F. R., 288. 
 
 Noninfringement — Article made by 
 particular process. — Cochrane v. Ba- 
 dische. 111 U. S., 293. 
 
 Noninfringement of combination 
 claim. — Rowcll o. Lindsay, 113 U. S., 
 97; Elec. v. Signal, 114 U. S., 87; Bragg 
 V. Fitch, 121 U. S., 478; Snow i'. Lake 
 Shore, 121 U. S., 617; Thomson- 
 Houston V. Kelsey, 75 F. R., 1005. 
 
 Evidence of novelty; discretion of 
 lower court. — St. Paul v. Starling, 140 
 U. S., 184. 
 
 Patent for improvement does not con- 
 vey right to use broad invention. — Can- 
 trell V. Wallick, 117 U. S., 689. 
 
 Patent rights reached by creditor's 
 bill. — Ager v. Murray, 105 U. S., 126. 
 
 Contributory infringement. — Heaton 
 V. Eureka, 77 F. R., 288. 
 
 Repairing patented device. — Shickle 
 v. St. Louis, 77 O. G., 2142. (Consult 
 also citations under sec. 4886.) 
 
 Designs. 
 
 (See Designs). 
 
 In Equity — Trebling Damages. 
 
 * * * The complainant shall be entitled to recover, in addition 
 to the profits to be accounted for by the defendant, the damages 
 the complainant has sustained thereby; and the court shall assess 
 the same or cause the same to be assessed under its direction. And 
 the court shall have the same power to increase such damages, 
 in its discretion, as is given to increase the damages found by 
 verdicts in actions in the nature of actions of trespass on the 
 
 case. 
 
 * * * — R. S. 4921. 
 
 Failure to Mark Articles " Patented " — When a Bar. 
 
 * * * 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 infringement, 
 and continued, after such notice, to make, use, or vend the article 
 so patented. — R. S. 4900. 
 
 Infringement — Trebling Damages. 
 
 (In actions at Law, see R. S. 4919).
 
 THE PATENT STATUTE DIGESTED 873 
 
 DEFENSES 
 General Provisions. 
 
 In any action for infringement the defendant may plead the 
 general issue, and, having given notice in writing to the plaintiff 
 or his attorney thirty days before, may prove on trial any one or 
 more of the following special matters : 
 
 First. That for the purpose of deceiving the public the descrip- 
 tion 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 io produce the desired 
 
 effect; or, • , i 
 
 Second. That he had surreptitiously or unjustly obtamed 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 discovery thereof, 
 or more than two years prim- to his application for a patent therefor; 
 
 or, 
 
 Fourth. That he was not the original and first myentor or dis- 
 coverer of any material and substantial part of the thing patented; 
 or. 
 
 Fifth. That it had been in public use or on sale in this country 
 for more than two years 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 
 the 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 defenses may be 
 pleaded in any suit in equity for relief against an alleged infringe- 
 ment; and proofs of the same may be given upon like notice in the 
 answer of the defendant, and with the like effect. — R. S. 4920. 
 
 Note: Amendment of Mar. 3, 1897, in italics. 
 
 Complainants must prove infringe- 
 ment. — Fuller V. Yentzer, 94 U. S., 
 288, 299; Bates v. Coe, 98 U. S., 31. 
 
 Damages must be proved. — Robert- 
 son V. Blake, 94 U. S., 728. 
 
 Defenses to suit not confined to those 
 mentioned in this statute. — Gardiner 
 V. Herz, 118 U. S., 180. 
 
 Defense of priority. — Clark v. Wil- 
 limantic, 140 U. S., 481. 
 
 Defense of prior patent must he made 
 below. — Andrews v. Thum, 67 F. R., 
 911. 
 
 Defense that complainant has no in- 
 terest. — Paine v. Trask, 56 F. R., 233. 
 
 Delay as an estoppel. — Thorne Co. v. 
 Washburn, 159 U. S., 423. 
 
 Denial of utility. — Gandy v. Belt 
 Co., 143 U. S., 587. 
 
 Denial of validity. — Western t'. 
 La Rue, 139 U. S., 601. 
 
 Estoppel by former recovery. — Rus- 
 sell V. Place, 94 U. S., 606. 
 
 Estoppel by decree pro confesso. — 
 Thomson v. Wooster, 114 U. S., 104. 
 
 Estoppel by assignment. — Babcock 
 V. Clarkson, 63 F. R.. 607. 
 
 Estoppel of assignor. — Martin v. 
 Martin, 67 F. R., 786. 
 
 No estoppel by application for patent. 
 — Haughey v. Lee, 151 U. S., 282. 
 
 Exceptions to judge's charge to the 
 jury. — Haines v. McLaughhn, 135 
 U. S.. 584.
 
 874 
 
 THE FIXED LAW OF PATENTS 
 
 Expert testimony necessary. — Water- 
 man V. Shipman, 55 F. R., 982. 
 
 Estoppel by interference proceedings 
 in Office. — Shoemaker v. Merrow, 61 
 F. R., 945; Fassett v. Ewart, 62 F. R., 
 404. 
 
 Fraudulent patents. — Railroad v. 
 Dubois, 12 Wall., 47. 
 
 General purpose of the statute. — Root 
 V. Ry., 105 U. S., 189; Albright v. Teas, 
 106 U. S., 613; Dolan v. Jennings, 139 
 U. S., 385; White v. Rankin, 144 U. S., 
 628. 
 
 Government needs no defense. — Cam- 
 meyer v. Newton, 94 U. S., 225; U. S. 
 V. Burns, 12 Wall., 246. U. S. v. 
 McKeever, 23 O. G., 1525-1530. Hol- 
 lister V. Benedict, 113 U. S., 59. 
 United States v. Palmer, 128 U. S., 
 262. Solomons v. United States, 137 
 U. S., 342; Schillinger v. United States, 
 
 155 U. S., 163; Belknap v. Schild, 161 
 U. S., 10. 
 
 Judicial notice. — Brown v. Piper, 
 91 U. S., 37; Terhune v. Phillips, 99 
 U. S., 592. Slawson v. R. R., 107 U. 
 S., 649; Black Diamond v. Excelsior, 
 
 156 U. S., 611; Richards v. Chase, 159 
 U. S., 477; Am. Fibre v. Buckskin, 
 72 F. R., 508. Butte City v. Pacific, 
 60 F. R., 410. 
 
 Jurisdiction in equity, general de- 
 murrer. — McCoy V. Nelson, 121 U. S., 
 484. 
 
 Infringement is question for jury. — 
 Tucker v. Spaulding, 13 Wall., 453. 
 
 Licensee estoppel. — Dueber v. Rob- 
 bins, 75 F. R., 17. 
 
 Law or equity procedure. — Cochrane 
 V. Deener, 94 U. S., 780; Hayward v. 
 Andrews, 106 U. S., 672; Clark v. 
 Wooster, 119 U. S., 322; Germain v. 
 Wilgus, 67 F. R., 597. 
 
 New matter in patent need not be spe- 
 cifically set forth in the answer. — 
 Eagleton v. Mfg. Co., Ill U. S., 490. 
 
 No suit under original after reissue. — 
 Reedy v. Scott, 23 Wall., 352. 
 
 Ownership. — Cammeyer v. Newton, 
 94 U. S., 225. 
 
 Patentee need not notify intending 
 infringer. — Railroad v. Dubois, 12 
 Wall., 47. 
 
 DESIGNS 
 General Provisions. 
 
 Any person who has invented any new, original, and orna- 
 mental design for an article of manufacture, not known or used by 
 others in this country before his invention thereof, and not patented 
 or described in any printed publication in this or any foreign country 
 before his invention thereof, or more than two years prior to his 
 application, and not in public use or on sale in this country for more 
 
 Patentee the original inventor. — Sew- 
 all V. Jones, 91 U. S., 171; Loom Co. 
 V. Higgins, 105 U. S., 580; Atlantic 
 V. Brady, 107 U. S., 192. 
 
 Patentee bound by his patent. — Key- 
 stone V. Phccnix, 95 U. S., 274. 
 
 Patents not set up in answer may be 
 introduced to aid in construction of 
 claims. — Grier v. Wilt, 120 U. S., 412. 
 
 Poitit of void reissue must be made in 
 lower court (Klein v. Russell, 19 Wall., 
 433), and must be by defendant. — 
 Smith V. Goodvear, 93 U. S., 486; Bates 
 «;. Coe, 98U. S., 31. 
 
 Proof of invalidity upon defendants. — 
 Seymour v. Osborne, 11 Wall., 516; 
 Reckendorfer i'. Faber, 92 U. S., 347; 
 Roemer v. Simon, 95 U. S., 214; Im- 
 haeuser v. Buerk, 101 U. S., 647. 
 
 Questions for court and those for jury 
 considered. — Market v. Rowley, 155 
 U. S., 621; Coupe v. Royer, 155 U. S., 
 565; Lumber v. Rodgors, 112 U. S., 
 659; Keyes v. Grant, 118 U. S., 25; 
 Humiston v. Wood, 124 U. S., 12. 
 Rover v. Schultz, 135 U. S., 319; 
 Miller v. Eagle, 151 U. S., 186. 
 
 Res adjiidicata. — Johnson v. Whar- 
 ton, 152 U. S., 252; Lyon v. Perrin, 
 125 U. S., 698; Bradley v. Eagle, 58 
 F. R., 721; Elec. v. Brush, 52 F. R., 
 130. 
 
 Reconstruction may be infringement. 
 
 — Am. V. Simmons, 106 U. S., 89. 
 Statutes of limitations of the several 
 
 States apply to patent suits. — Campbell 
 V. Haverhill, 155 U. S., 610. 
 
 Under general denial prior knowledge 
 may be shown. — Zane v. Soffe, 110 
 U. S., 200. 
 
 Validity and infringement must be 
 clear to ivarrant preliminary injunction. 
 
 — Stand. V. Crane, 56 F. R., 718. 
 Want of patentability need not be 
 
 specifically pleaded. — May v. Juneau, 
 137 U. S., 408; Hendy v. Golden, 127 
 U. S., 370; Richards v. Chase, 158 
 U. S., 299. 
 
 Technical questions can not be raised 
 on appeal where not raised below. — 
 Tuttle V. Claflin, 76 F. R., 227; Smith 
 V. Mellon, 58 F. R., 705.
 
 THE PATENT STATUTE DIGESTED 
 
 875 
 
 than two years prior to his appUcation, ^^^^^f ^f . ^s ^Tred 
 to have been abandoned, may, upon payment of ^^e fees required 
 by law and other due proceedings had, ^^e same as m cases ot^^^ 
 vention or discoveries covered by section fort>-eight hundred ana 
 eighty-six, obtain a patent therefor. — K. fe. ^J-y. 
 
 Doubtful patentability. — '^. Y. v. 
 N. J., 137 TI. S, 445. 
 
 Utility in designs. — Smith v. Whit- 
 man, 148 U. S., 674. 
 
 tiovelty determined by ocular compan- 
 gon. — Braddock v. Macbeth, 64 t . K., 
 
 118 
 
 Double use not patentable. — Un 
 
 termeyer v. Freund, 58 F. R., 205. 
 /M^en/ion. — Caldwell v. Powell, 73 
 
 F. R., 488. ^_ , , 
 
 Lack of invention. — Krick v. Jan- 
 sen 61 F. R., 847; Paine v. Snowden, 
 50 F. R., 776. 
 
 Must be ornamental. — Kowe v. 
 Blodgett, 98 O. G., 1286. 
 
 The Commissioner may dispense with models of designs when 
 thJ desSn cTbe" sufficiLtly V^^ by drawings or photo- 
 
 Tatn^for designs may be granted ^or the term of th^^^^^^^ 
 and six months, or for seven years or for fourte^en> ears, 
 
 ^te SiJi o'li: Td'^^rsiot^th-i^h^a^^^^^^^^^^ obtaining or 
 
 drtEii^ s thr?s;e-a sr«-=ss^ 
 
 rl^ SHs:fce5^ — :S-f^ma:i!;?a= 
 
 ^ fift, HnUflrc; and the full amount ot such habihty may be 
 J^covered by the' owner of Jhe letters patent, to his own use m 
 rnvrircuit court of the United States havmg jurisdiction ot the 
 pStiese" hereby action at law or upon a bill in equity for an in- 
 
 ^TJJ°2*°Stth"S taSTttntained shall prevent, lessen, 
 
 ment. — Act Feb. 4, 1887. 
 
 Profit meant is total profit. -Vnievmeyev v. Freund, 58 F. R., 205.
 
 878 
 
 THE FIXED LAW OF PATENTS 
 
 EQUITY ACTIONS 
 Jury Trials. 
 
 (See Sec. 2, R. S. 4921). 
 
 EVIDENCE 
 
 Copies of Patents and Records — Certified Copies. 
 
 Written or printed copies of any records, books, papers, or 
 drawings belonging to the Patent Office, and of letters patent 
 authenticated by the seal and certified by the Commissioner or 
 Acting Commissioner thereof, shall be 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. — R. S. 892. 
 
 Certified copy of patent as evidence. — 
 Oregon v. Excelsior, 132 U. S., 215- 
 216. 
 
 Certified copy of record of assignment 
 as evidence. — Am. v. Mayor, 60 F. R., 
 1016. 
 
 Foreign Letters Patent. — Evidence of What. 
 
 Copies of the specifications and drawings of foreign letters patent 
 certified as provided in the preceding section, shall be prima facie 
 evidence of the fact of the granting of such letters patent, and of 
 the date and contents thereof. — R. S. 893. 
 
 Printed Copies of Specifications and Drawings — Certified and 
 gratuitously Distributed. 
 
 The printed copies of specifications and drawings of patents, 
 which the Commissioner of Patents,^ is authorized to print for 
 gratuitous distribution and to deposit In the capitols of the States 
 and Territories, and in the Clerk's offices of the district courts, 
 shall, when certified by him and authenticated by the seal of his 
 office, be received in all courts as evidence of all matters therein 
 contained. — R. S. 894. 
 
 Required by Patent Office — Method of Taking. 
 
 The Commissioner of Patents may estabhsh rules for taking 
 affidavits and depositions required in cases pending in the Patent 
 Office, and such affidavits and depositions may be taken before 
 any officer authorized by law to take depositions to be used in the 
 courts of the United States, or of the State where the officer 
 resides. — R. S. 4905. 
 
 EXAMINATION 
 
 (See AppHcation). 
 
 EXAMINERS-IN-CHIEF 
 
 Qualifications — Duties. 
 
 The examincrs-in-chicf shall be persons of competent legal knowl- 
 edge and scientific ability, whose duty it shall be, on the written 
 application of the appellant, to revise and determine upon the
 
 THE PATENT STATUTE DIGESTED 
 
 879 
 
 validity of the adverse decisions of examiners upon applications 
 for patents, and for reissue 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 to them. — R. S. 482. 
 
 EXECUTOR, ADMINISTRATOR, OR GUARDIAN 
 Application by and Oath of. 
 
 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 
 1-aw of the deceased, in case he shall have died intestate; or if he 
 shall have left a will disposing of the same, then in trust for his 
 devisees, in as full manner and on the same terms and conditions 
 as the same might have been claimed or enjoj^ed by him in his 
 lifetime; and when the application is mada by such legal represent- 
 atives, the oath or affirmation required to be made shall be so 
 varied in form that it can be made by them. The executor or ad- 
 ministrator duly authorized under the law of any foreign country 
 to administer upon the estate of the deceased inventor shall, in 
 case the said inventor was not domiciled in the United States at 
 the time of his death, have the right to apply for and obtain the 
 patent. The authority of such foreign executor or administrator 
 shall be proved by certificate of a diplomatic or consular officer 
 of the United States. — R. S. 4896. 
 
 Authority of attorney after death of 
 inventor. — Eagleton v. Mfg. Co., Ill 
 U. S., 490. 
 
 Patent to deceased inventor goes to his 
 heirs. — De la Vergne v. Featherstone, 
 147 U. S., 209. 
 
 The above as amended May 23, 1908. 
 
 An act to amend section forty-eight hundred and ninety-six of 
 the Revised Statutes. 
 
 Be it enacted by the Senate and House of Representatives of 
 the United States of America in Congress assembled, That section 
 forty-eight hundred and ninety-six of the Revised Statutes be, and 
 the same is hereby, amended so that the section shall read as fol- 
 lows: 
 
 " Sec. 4896. 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 heiis-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 any person having made any new inven- 
 tion or discovery for which a patent rnight have been granted be- 
 comes insane before a patent is granted the right of applying for 
 and obtaining the patent shall devolve on his legally-appointed
 
 880 THE FIXED LAW OF PATENTS 
 
 guardian, conservator, or representative in trust for his estate in 
 as full manner and on the same terms and conditions as the same 
 might have been claimed or enjoyed by him while sane; and when 
 the application is 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. The executor or administrator duly 
 authorized under the law of any foreign country to administer 
 upon the estate of the deceased inventor shall, in case the said 
 inventor was not domiciled in the United States at the time of his 
 death, have the right to apply for and obtain the patent. The 
 authority of such foreign executor or administrator shall be proved 
 by certificate of a diplomatic or consular officer of the United States. 
 
 '* The foregoing section, as to insane persons, is to cover all ap- 
 plications now on file in the Patent Office or which may be hereafter 
 Tnade." 
 
 Approved, May 23, 1908. 
 
 FALSE MARKING 
 
 Action for and Penalty. 
 
 Every person who, in any manner, marks upon anything made, 
 used, or sold by him for which he has not obtained a patent, the 
 name or any imitation of the name of anyJperson who has obtained 
 a patent therefor, without the consent of such patentee, or his 
 assigns or legal representatives; or 
 
 Who, in any manner, marks upon or afiixes 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 coun- 
 terfeit the mark or device of the patentee, without having the 
 license or consent'of such patentee or his assigns or legal represent- 
 atives ; or 
 
 Who, in any manner, marks upon or affixes to any unpatented 
 article the word " patent " or any word importing that the same 
 is patented, for the purpose of deceiving the public, shall be liable, 
 for every such offense, to a penalty of not less than one hundred 
 dollars, with costs; one-half 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 offense may have been committed. — 
 R. S. 4901. 
 
 FEES 
 
 General Patent Office. 
 
 The following shall be the rates for patent fees: 
 
 On filing each original application for a patent, except in design 
 cases, fifteen dollars. 
 
 On issuing each original patent, except in design cases, twenty 
 dollars. 
 
 In design cases: For three years and six months, ten dollars; 
 for seven years, fifteen dollars; for fourteen years, thirty dollars.
 
 THE PATENT STATUTE DIGESTED 881 
 
 On every application for the reissue of a patent, thirty dollars. 
 On filing each disclaimer, ten 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-ehief to the Commis- 
 sioner, twenty dollars. 
 
 For certified copies of patents and other papers, including certified 
 printed copies, ten cents per hundred words. 
 
 For recording every assignment, agreement, power of attorney, 
 or other paper, of three hundred words or under, one dollar; of 
 over three hundred and under one thousand words, two dollars; 
 and for each additional thousand words or fraction thereof, one 
 dollar. 
 
 Certified copies of such drawings and specifications may be 
 furnished by the Commissioner of Patents to persons applying 
 therefor upon payment of the present rates for uncertified copies, 
 and twenty-five cents additional for each certification. 
 
 For copies of drawings, the reasonable cost of making them. — 
 R. S. 4934. 
 
 Patent fees may be paid to the Commissioner of Patents, 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; and such officer shall give the depositor 
 a receipt or certificate of deposit therefor. 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. — R. S. 4935. 
 
 The Treasurer of the United States is authorized to pay back 
 any sum or sums of money to any person who has through mistake 
 paid the same into the Treasury, or to any receiver or depositary, 
 to the credit of the Treasury, as for fees accruing at the Patent 
 Office, upon a certificate thereof being made to the Treasurer by 
 the Commissioner of Patents. — R. S. 4936. 
 
 Final — When Must be Paid. 
 
 * * * If the final fee is not paid within that period (six months 
 from the time at which it was passed and allowed and notice thereof 
 sent to the applicant or his agent) the patent shall be withheld. — 
 R. S. 4885. 
 
 Required to be Paid — As a Condition to the Grant. 
 
 (See R. S. 4886). 
 
 Witnesses. 
 
 (See Witnesses, R. S. 4907). 
 
 FEIGNED ISSUES 
 Questions of Fact — Special Jury. 
 (See sec. 2, R. S. 4921).
 
 882 
 
 THE FIXED LAW OF PATENTS 
 
 FOREIGN PATENT 
 General Provision — When Not a Bar. 
 
 No person otherwise entitled thereto shall be debarred from 
 receiving a patent for his invention or discovery, nor shall any 
 patent be declared invalid by reason of its having been first patented 
 or caused to be patented by the inventor or his legal representa- 
 tives or assigns in a foreign country, unless the application for 
 said foreign patent was filed more than twelve months, in cases 
 within the provisions of section forty-eight hundred and eighty- 
 six of the Revised Statutes, and four months in cases of designs, 
 prior to the filing of the application in this country, in which case 
 no patent shall be granted in this country. 
 
 An application for patent for an invention or discovery or for 
 a design filed in this country by any person who has previously 
 regularly filed an application for a patent for the same invention, 
 discovery, or design in a foreign country which, by treaty, conven- 
 tion, or law, affords similar privileges to citizens of the United 
 States shall have the same force and effect as the same application 
 would have if filed in this country on the date on which the applica- 
 tion for patent for the same invention, discovery, or design was first 
 filed in such foreign country, provided the application in this 
 country is filed within twelve months in cases within the provisions 
 of section forty-eight hundred and eighty-six of the Revised 
 Statutes, and within four months in cases of designs, from the 
 earliest date on which any such foreign application was filed. But 
 no patent shall be granted on an application for patent for an 
 invention or discovery or a design which had been patented or 
 described in a printed publication in this or any foreign country 
 more than two years before the date of the actual filing of the ap- 
 plication in this country, or which had been in public use or on 
 sale in this country for more than two years prior to such filing. — 
 R. S. 4887. 
 
 Identity of the inventions considered. 
 — Siemens v. Sellers, 123 U. S., 276; 
 Commercial v. Fairbank, 135 U. S., 176; 
 Elec. V. Brush, 52 F. R., 130. 
 
 Effect of prior foreign patent. — Tele- 
 phone Cases, 126 U. S., 1-584. 
 
 Term of foreign patent. — Bate v. 
 Hammond, 129 U. S., 151; Fohl v. 
 Anchor, 134 U. S., 381-387. 
 
 A U. S. patent granted for an inven- 
 tion previously patented abroad, but 
 
 which foreign patent has expired, is 
 without validity. — Huber v. Nelson, 
 148 U. S., 270. 
 
 Term of foreign patent — Limitation 
 on face of U. S. patent unnecessary — 
 Certificate of correction. — Edison v. 
 U. S., 52 F. R., 300. 
 
 The meaning of " previously pa- 
 tented " considered. — Bate v. Sulz- 
 berger, 157 U. S., 1. 
 
 When a Bar to Domestic Patent. 
 
 (See Invention — Patentable, R. S. 4886). 
 
 FOREIGN USE 
 Not Bar to Patent. 
 
 Whenever it appears that a patentee, at the time of making his 
 application for the patent, believed himself to be the original and
 
 THE PATENT STATUTE DIGESTED 883 
 
 first inventor or discoverer of the thing patented, the same shall 
 not be held to be void on account of the nwention or discovery, 
 or Lv nart thereof having been known or used in a foreign country 
 IXI h'S invttTon Ir discovery thereof, if it had not been patented 
 or described in a printed publication. — K. b. 4y^d 
 
 FORFEITED APPLICATION 
 Renewal of. 
 (See Application — Renewal, R. S. 4897). 
 
 FRAUD 
 Defense of. 
 (See Defenses, R. S. 4920). 
 
 GOVERNMENT 
 
 Employees of Patent Office not to Hold Patents. 
 
 All officers and employes of the Patent Office shall be incapable, 
 duHngThe period for which they hold their appom ments, to acquire 
 or ake di'rectly or indirectly, except by mheritance or bequest, 
 any right or interest in any patent issued by the Office. - R. S. 4«U. 
 
 Employees Need Not Pay Fees for Patenting - When. 
 
 The Secretary of the Interior and the Commissioner of Patents 
 are authorTzed\o grant any officer of the Government, except 
 oScerf and emp oyls of the Patent Office, a patent for any inven- 
 Sn of the classes mentioned in section forty-eight hundred and 
 ekhty-six of the Revised Statutes when such invention is used or 
 to be used in the public service, without the payment of any fee 
 Provided Th^i the applicant in his application shall state that the 
 kiventioA described therein, if patented, may be used by the Govern- 
 mlnt or any of its officers or employes in prosecution of work for 
 ?he Government, or by any other person in the Umted States, 
 without the paj-iient to him of any royalty thereon, which stipu- 
 ktion shall be included in the patent. - Amendment of Mar. 3, 
 1883, to Sec. 4886. 
 
 Infringement by. 
 
 That whenever an invention described in and covered by a patent 
 of the United States shall hereafter be used by the United States 
 without license of the owner thereof or lawful right to use the same 
 such owner may recover reasonable compensation for such use b> 
 suit in the Court of Claims: Provided, however, That said Court ot 
 Claims shall not entertain a suit or award compensation under the 
 provisions of this Act where the claim for compensation is based 
 on the use by the United States of any article heretofore owned, 
 leased used bv, or in the possession of, the United States: Provided 
 further ThaUk any such suit the United States may avail itself of 
 anv and all defenses, general or special, which -^M be plea^^^^^^ 
 a defendant in an action for infringement, as set forth in Title Sixty
 
 884 
 
 THE FIXED LAW OF PATENTS 
 
 of the Revised Statutes or otherwise: And provided, further, That 
 the benefits of this Act shall not inure to any patentee, who, when 
 he makes such claim, is in the employment or service of the Gov- 
 ernment of the United States; or the assignee of any such patentee; 
 nor shall this Act apply to any device discovered or invented by 
 such employee during the time of his employment or service. — Act 
 June 25, 1910, U. S. Comp. Stat. Supp. p. 1457. 
 
 See Crozier v. Krupp, 224 U. S., 290. 
 
 Royalties Not to be Paid by. 
 
 No royalty shall be paid by the United States to any one of its 
 officers or employes for the use of any patent for the system, or 
 any part thereof, mentioned in the preceding section, nor for any 
 such patent in which said officers or employes may be directly or 
 indirectly interested. — R. S. 1G73. 
 
 IMPROVEMENT 
 
 Patentability of. 
 
 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 * * * — R. S. 4886. 
 
 INFRINGEMENT 
 General Provision — Jurisdiction. 
 
 The district courts shall have original jurisdiction as follows: 
 
 Seventh. Of all suits at law or in equity arising under the patent, 
 the copyright, and the trade-mark laws. — Jud. Code, Sec. 24. 
 
 Supreme Court of the District of Co- 
 lumbia in patent causes has circuit court 
 jurisdiction. — Cochrane v. Deener, 94 
 U. S., 780. 
 
 Jurisdiction. — Kartell v. Tilghman, 
 99 U. S., 547. Albright v. Teas, 106 
 U. S., 613; OUver v. Chem. Works, 
 109 U. S., 75; Marsh v. Nichols, 140 
 U. S., 344; White v. Rankin, 144 U. S., 
 628. 
 
 Court ^ of Claims. — U. S. v. Mc- 
 
 Keever, 23 O. G., 1530. U. S. v. 
 Palmer, 128 U. S., 262-372. Hollister 
 V. Benedict, 113 U. S., 59-73. Schil- 
 linger v. U. S., 155 U. S., 163; U. S. v. 
 Berdan Mfg. Co., 156 U. S., 552. 
 
 Jurisdiction of circuit court. — St. 
 Paul V. Starling, 127 U. S., 376-378. 
 
 Jurisdiction to annul patents. — 
 U. S. V. Bell Telephone, 128 U. S., 315- 
 373; Mowry v. Whitney, 14 Wall., 343. 
 
 Actions at Law. 
 
 Damages for the infringement of any patent may be recovered by 
 action on the case. * * * — R-. S. 4919. 
 
 Article Made or Purchased Before Application with the Consent 
 of the Inventor. 
 
 Every person who purchases of the inventor or discoverer, or, 
 with his knowledge and consent, constructs any newly invented or
 
 THE PATENT STATUTE DIGESTED 
 
 885 
 
 discovered machine, or other patentable article, prior to the appli- 
 cation by the inventor or discoverer for a patent, or who sells or 
 uses one so constructed, shall have the right to use, and vend to 
 others to be used, the specific thing so made or purchased, with- 
 out liability therefor. — R. S. 4899. 
 
 Claims too Broad — Recovery when — Costs. 
 
 Whenever, through inadvertence, accident, or mistake, and 
 without any willful default or intent to defraud or mislead the 
 public, a patentee has, in his specification, claimed to be the 
 original and first inventor or discoverer of any material or sub- 
 stantial part of the thing patented, of which he was not the original 
 and first inventor or discoverer, every such patentee, his executors, 
 administrators, and assigns, whether of the whole or any sectional 
 interest in the patent, may maintain a suit at law or in equity, 
 for the infringement of any part thereof, which was bona fide his 
 own, if it is a material and substantial part of the thing patented, 
 and definitely distinguishable from the parts claimed without right, 
 notwithstanding the specifications may embrace more than that of 
 which the patentee was the 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 dis- 
 claimer has been entered at the Patent Office before the commence- 
 ment of the suit. But no patentee shall be entitled to the benefits 
 of this section if he has unreasonably neglected or delayed to enter 
 a disclaimer. [See sees. 973, 4917.] — R. S. 4922. 
 
 Disclaimer filed before rehearing con- 
 sidered. — Roemer v. Bemheim, 132 
 U. S., 103. 
 
 Costs — Disclaimer. 
 
 (See Costs, R. S. 973). 
 
 Damages. 
 
 (See Damages, R. S. 4919). 
 
 Disclaimer filed after suit begun will 
 prevent recovery of costs. — Sessions v. 
 Romadka, 145 U. S., 29. 
 
 Profits. 
 
 (See Profits, R. S. 4921). 
 
 Defenses. 
 
 (See Defenses, R. S. 4920) 
 
 Laches. 
 
 (See Laches, R. S. 4897). 
 
 Designs. 
 
 * * * That hereafter, during the term of letters patent for a 
 design, it shall be unlawful for any person other than the owner 
 of said letters patent, without the license of such owner, to apply
 
 886 THE FIXED LAW OF PATENTS 
 
 the design secured by such letters patent, or any colorable imitation 
 thereof, to any article of manufacture for the purpose of sale, or 
 to sell or expose for sale any article of manufacture to which such 
 design, or colorable imitation shall, without the license of the owner, 
 have been applied, knowing that the same has been so applied. 
 * * * — R. S. sub. 4933, Act Feb. 4, 1881. 
 
 Disclaimer. 
 
 (See Disclaimer, R. S. 4917). 
 
 Pleas — Statutory. 
 
 (See Defenses, R. S. 4920). 
 
 Renewal Applications — Prior to Issue of Patent. 
 
 * * * But no person shall be held responsible in damages for 
 the manufacture or use of any article or thing for which a patent 
 was ordered to issue under such renewed application prior to the 
 issue of the patent. * * * — R. S. 4897. 
 
 Rights Secured Before Application. 
 
 (See Unpatented Invention, R. S. 4899). 
 
 INJUNCTIONS 
 Power of Equity to Grant — Damages and Accountings. 
 
 The several courts vested with jurisdiction of cases arising 
 under the patent laws shall have power to grant injunctions ac- 
 cording to the course and principles of courts of equity to prevent 
 the violation of any right secured by patent, on such terms as the 
 court may deem reasonable; and upon a decree being rendered in 
 any such case for an infringement the complainant shall be entitled 
 to recover, in addition to the profits to be accounted for by the 
 defendant, the damages the complainant has sustained thereby; 
 and the court shall assess the same or cause the same to be assessed 
 under its direction. And the court shall have the same power to 
 increase the damages, in its discretion, as is given to increase the 
 damages found by verdicts in actions in the nature of actions of 
 trespass upon the case. 
 
 But in any suit or action brought for the infringement of any 
 patent there shall be no recovery of profits or damages for any 
 infringement committed more than six years before the filing of 
 the bill of complaint or the issuing of the writ in such suit or action, 
 and this provision shall apply to existing causes of action. — R. S. 
 4921. 
 
 See Jud. Code, Sees. 263, 264. 
 
 INSANE INVENTOR 
 Application by Committee. 
 
 (See Executor, R. S. 4896).
 
 THE PATENT STATUTE DIGESTED 
 
 887 
 
 INTERFERENCES 
 
 General Provisions. 
 
 Whenever an application is made for a patent which, in the 
 opinion of the Commissioner, would interfere with any pendmg 
 appUcation, 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 is adjudged the prior inventor, 
 unless the adverse party appeals 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 Commis- 
 sioner shall prescribe. — R. S. 4904. 
 
 Diligence discussed. — Christie v. 
 Seybold, 55 F. R., 69; Yates v. Huson, 
 74 O. G., 1732. 
 
 Patentee and applicant. — Burr v. 
 Ford, 70 O. G., 275. Porter v. Louden, 
 73 O. G., 1551. 
 
 Conception and reduction to practice. 
 — Colhoun V. Hodgson, 5 App. D. C, 
 21; Soley v. Hebbard, 70 O. G., 921. 
 
 Constructive reduction to practice. — 
 Porter v. Louden, 73 O. G., 1551; 
 Croskey v. Atterbury, 76 O. G., 163. 
 
 Inoperative invention, priority. — 
 Glidden v. Noble, 5 App. D. C, 480; 
 Hisey v. Peters, 6 App. D. C, 68; 
 
 Northal v. Bernardin, 74 O. G., 655; 
 Carty v. Kellogg, 74 O. G., 657; Draw- 
 baugh V. Seymour, 77 O. G., 1313. 
 
 Abandonment. — La Flare v. Chase, 
 74 0. G., 1735. 
 
 Priority. — Shellaberger v. Sommer, 
 
 74 O. G., 1897. 
 
 Foreign patent. — Preliminary state- 
 ment amended. — Parker v. Appert, 75 
 O. G., 1201. 
 
 Partnership. — Milton v. Kingsley, 
 
 75 O. G., 2193. 
 
 Presumption as to inventorship. — 
 Hill V. Parmelee, 78 O. G., 170. 
 
 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 officer authorized by law to take depositions to be used in the 
 courts of the United States or the State where the officer resides. — 
 R. S. 4905. . , ^ ^ ^. _ 
 
 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 of his agent or attorney, issue a subpoena for 
 any witness residing or being within such district or Territory, 
 commanding him to appear and testify before any officer in such 
 district or Territory authorized to take depositions and affidavits, 
 at any time and place in the supcena stated. 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. — R. S. 4906. 
 
 Every witness duly subpoenaed and in attendance shall be 
 allowed the same fees as are allowed to witnesses attending the 
 courts of the United States. — R. S. 4907. 
 
 Whenever any witness, after being duly served with such sub- 
 poena, neglects or refuses to appear, or after appearing refuses 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,
 
 388 THE FIXED LAW OF PATENTS 
 
 or punish the disobedience, as in other' like cases. But no witness 
 shall be deemed guilty of contempt for disobeying such subpoena, 
 unless his fees and traveling expenses in going to, returnmg 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 disclose any secret invention or discovery made or owned 
 by himself. — R. S. 4908. 
 
 Every applicant for a patent or for the reissue of a patent, any 
 of the claims of which have been twice rejected, and every party 
 to an interference, may appeal from the decision of the primary 
 examiner, or of the examiner in charge of interferences in such 
 case, to the board of examiners-in-chief; having once paid the fee for 
 such appeal. — R. S. 4909. 
 
 If such party is dissatisfied with the decision of the examiners- 
 in-chief, he may, on payment of the fee prescribed, appeal to the 
 Commissioner in person. — R. S. 4910. 
 
 Appeal under this section discussed. — Butterworth v. Hoe, 112 U. S., 50-60. 
 
 When an appeal is taken to the Court of Appeals of the District 
 of Columbia, the appellant shall give notice thereof to the Commis- 
 sioner, and file in the Patent Office within such time as the Commis- 
 sioner' shall appoint, his reasons of appeal, specifically set forth in 
 writing. — R. S. 4912. 
 
 The court shall, before hearing such appeal, give notice to the 
 Commissioner of the time and place of the hearing, and on receiving 
 such notice the Commissioner shall give notice of such time and 
 place in such manner as the court may prescribe, to all parties who 
 appear to be interested therein. The party appealing shall lay 
 before the court certified copies of all the original papers and evi- 
 dence in the case, and the Commissioner shall furnish the court 
 with the grounds of his decision, fully set forth in writing, touching 
 all the points involved by the reasons of appeal. And at the re- 
 quest 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 thing for which a patent is demanded. — 
 R. S. 4913. 
 
 The court, on petition, shall hear and determine such appeal, 
 and 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; and the revision shall be 
 confined to the points set forth in the reasons of appeal. After 
 hearing the case the court shall return to the Commissioner a cer- 
 tificate of its proceedings and decision, which shall be entered of 
 record in the Patent Office, and shall govern the further proceed- 
 ings in the case. But no opinion or decision of the court in any such 
 case shall preclude any person interested from the right to contest 
 the validity of such patent in any court wherein the same may be 
 called in question. — R. S. 4914. 
 
 Review confined to point raised. — Forg, 2 App. D. C, 58.
 
 THE PATENT STATUTE DIGESTED 
 
 889 
 
 Appeals — Examiners-in-chief . 
 
 * * * On the written petition of appellant, to revise and deter- 
 mine upon the adverse decisions of the examiners * * * in inter- 
 ference cases. * * * — R. S, 482. 
 
 INTERFERING PATENTS 
 Suits Affecting — Adjudication in Equity. 
 
 Whenever there are interfering patents, any person interested 
 in any one of them, or in the working of the invention claimed 
 under either of them, may have relief against the interfering 
 patentee, and all parties interested under him, by suit in equity 
 against the owners of the interfering patent; and the court, on 
 notice to adverse parties, and other due proceedings had according 
 to the course of equity, may adjudge and declare either of the pa- 
 tents 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 right of any person except 
 the parties to the suit and those deriving title under them subse- 
 quent to the rendition of such judgment. — R. S. 4918. 
 
 — Appleton V. Ecaubert, 67 F. R., 917. 
 Devices actually made as well as face 
 of patent should be considered in deter- 
 mining interference. — Thomson-Hous- 
 ton V. Western, 72 F. R., 530. 
 
 Relation of improvements to original 
 invention. — Cantrell v. Wallick, 117 
 U. S., 689; Robertson v. Blake, 94 
 U. S., 728. 
 
 Decision of Patent Office, effect in suit. 
 
 INVENTION 
 Patentable — General Provision. 
 
 Any person who has invented or discovered any new and useful 
 art, machine, manufacture, or composition of matter, or any new and 
 useful improvements thereof, not known or used by others in this 
 country, before his invention or discovery thereof, and not patented 
 or described in any printed publication in this or any foreign country, 
 before his invention or discovery thereof, or more than two years 
 prior to his application, and not in public use or on sale in this 
 country for more than two years prior to his application, unless 
 the same is proved to have been abandoned, may, upon payment of 
 the fees required by law, and other due proceeding had, obtain a 
 patent therefor. — R. S. 4886. 
 
 Abandoned experiments. — Seymour 
 V. Osborne, 11 Wall., 516. Corn Plan- 
 ter Patent, 23 Wall., 181; W^ood Paper 
 Pat., 23 Wall., 566. Deering v. Wi- 
 nona Works, 155 U. S.,-286; West. 
 V. Sperry, 58 F. R., 186. 
 
 Abandonment of invention. — Rifle v. 
 Whitney, 118 U. S., 22. 
 
 Act of invention. — Wells v. Curtis, 
 66 F. R., 318. 
 
 Aggregation. — Hailes v. Van Wor- 
 mer, 20 Wall., 353. Reckendorfer v. 
 
 Faber, 92 U. S., 347; Rubber v. Well- 
 ing, 97 U. S., 7; Bussey v. Excelsior, 
 110 U.S., 131; Beecher y. Atwater, 114 
 U. S., 523; Hendy v. Golden, 127 U. S 
 370; Thatcher v. Burtis, 121 U. S., 286; 
 Union v. Keith, 139 U. S., 530. Cluett 
 V. Claflin, 140 U. S., 180; Patent v. 
 Glover, 141 U. S., 560; Derby v. 
 Thompson, 146 U. S., 476; Ide v. Ball, 
 149 U. S., 550; Giles v. He3^singer, 150 
 U. S., 627. Richards v. Chase, 158 
 U. S., 299; Richards v. Chase, 159
 
 890 
 
 THE FIXED LAW OF PATENTS 
 
 U. S., 477; Palmer v. Corning, 156 
 U S 342; Deere v. Case, 56 F. R., 841; 
 Griswold, 78 O. G., 482. 
 
 Aggregation and combination dis- 
 tinguished. — Stephenson V. Brooklyn 
 Co , 114 U. S., 149; Snyder, 78 O. G., 
 
 485. , . , ■ 
 
 Anticipation of combination claim. — 
 Cantrell v. Wallick, 117 U. S., 689; 
 Sutter V. Robinson, 119 U. S., 530; 
 Flower v. City, 127 U. S., 563; Wollen- 
 sak V. Sargent, 151 U. S., 221; Cons. 
 V. Barnard, 156 U. S., 261; American 
 V. Pennock, 17 S. C. Reporter, 1; Coch- 
 rane V. Deener, 94 U. S., 780; Roemer 
 V. Simon, 95 U. S., 214; Illinois v. Rob- 
 bins, 52 F. R., 215. 
 
 Art, machine, manufacture or compo- 
 sition of matter —fiouble use — Aggre- 
 gation. — Fond du Lac v. May, 137 
 U. S., 395. 
 
 Article of manufacture. — Union v. 
 Van Dusen, 23 Wall., 530; Cohn v. 
 U. S., 93 U. S., 366; Andrews v. Thum, 
 67 F. R., 911. 
 
 Article distinguished from method of 
 making. — Cochrane v. Badische, 111 
 U. S., 293. 
 
 Change of material. — Hicks v. Kel- 
 sey, 18 Wall., 670. Smith v. Good- 
 year, 93 U. S., 486; Terhune v. Phil- 
 Hps, 99 U. S., 592. Brown v. District 
 of Columbia, 130 U. S., 87; Florsheim 
 V. SchilUng, 137 U. S., 64; Cheneau v. 
 Comr., 70 O. G., 924. Kilbourne v. 
 Bingham, 50 F. R., 697; Edison v. 
 U. S., 52 F. R., 300. 
 
 Change of parts. — Ives v. Hamilton, 
 92 U. S., 426; Werner v. King, 96 
 U. S., 218; Mach. v. Murphy, 97 U. S., 
 120; Thomson-Houston v. Western, 
 72 F. R., 530. 
 
 Change in shape. — Butler v. Steckel, 
 137 U. S., 21-30. 
 
 Degree. — Planing Mach. v. Keith, 
 101 U. S., 479; Ansonia v. Elec, 144 
 U. S., 11 ; Burt V. Evory, 133 U. S., 349; 
 Wright V. Yuengling, 155 U. S., 47. 
 
 Double use. — Tucker v. Spaulding, 
 13 Wall., 453. Brown v. Piper, 91 U. 
 ^., 37; Roberts v. Ryer, 91 U. S., 150; 
 Vinton v. Hamilton, 104 U. S., 465; 
 Blake v. San Francisco, 113 U. S., 679; 
 Railroad v. Safety Truck, 110 U. S., 
 490; Window Cleaner v. Bosley, 15 
 Brodix, 64. Crescent v. Gottfried, 128 
 U. S., 158; Peters v. Hanson, 129 U. 
 S., 541; St. Germain v. Brunswick, 135 
 U. S., 227; Howe v. National, 134 U. 
 S., 388-398; Marchand v. Emken, 132 
 U. S., 195-200; Day v. Fair Haven. 
 132 U. S., 98-103; Busell v. Stevens, 
 137 U. S., 423; Lovell v. Cary, 147 
 U. S., 623; Leggett v. Oil Co., 149 
 
 U. S., 287; Market v. Rowley, 155 
 U. S., 621; National v. Thompson, 65 
 F. R., 427; Beach v. Inman, 71 F. R., 
 420; New Departure v. Bevin, 73 F. R., 
 469; Steiner v. Adrian, 59 F. R., 132; 
 Zinsser v. Krueger, 48 F. R., 296. 
 
 Double use and invention distin- 
 guished. — Potts V. Creager, 155 U. S., 
 597; Taylor i-. Sawyer, 75 F. R., 301. 
 
 Equivalents. — Seymour v. Osborne, 
 11 Wall., 516. Smith v. Nichols, 21 
 Wall., 112. Gould v. Rees, 15 Wall., 
 187. Hyndman v. Roots, 97 U. S., 
 224; Mfg. Co. v. Mfg. Co., 12 Bred., 
 281. Imhaeuser v. Buerk, 101 U. S., 
 647; Goodyear v. Davis, 102 U. S., 222; 
 Wicke v. Ostrum, 103 U. S., 461; 
 Guidet V. Brooklyn, 105 U. S., 566; 
 Clough V. Gilbert, 106 U. S., 178; 
 King V. Gallun, 109 U. S., 99; Consoli- 
 dated v. Walker, 138 U. S., 124; West- 
 ern V. La Rue, 139 U. S., 601; McClain 
 v. Ortmayer, 141 U. S., 419; Myers v. 
 Shovel, 141 U. S., 674; Hoyt v. Home, 
 145 U. S., 302; Nat'l v. Hedden, 148 
 U. S., 482; Brigham v. Coffin, 149 U. 
 S., 557; Erie v. Am., 70 F. R., 58; 
 Hunt V. Cassidy, 53 F. R., 257; Briggs, 
 78 O. G., 169. McKay v. Dizer, 16 
 F. R., 102; Jones v. Munger, 49 F. R., 
 61. 
 
 Extensive use. — Magowan v. N. Y., 
 141 U. S., 332; McClain v. Ortmayer, 
 141 U. S., 419; McCreary v. Canal Co., 
 141 U. S., 459; Gandy v. Belt Co., 143 
 U. S., 587; Grant v. Walter, 148 U. S., 
 547; Krementz v. Cottle, 148 U. S., 
 556; Duer v. Corbin, 149 U. S., 216; 
 Keystone v. Adams, 151 U. S., 139; 
 Olin V. Timkin, 155 U. S., 141; Sea- 
 bury V. Am Ende, 152 U. S., 561; 
 Holmes v. Truman, 67 F. R., 542; Fox 
 V. Perkins, 52 F. R., 205; Dueber v. 
 Robbins, 75 F. R., 17; Saunders v. 
 Allen, 60 F. R., 610; Watson v. Ste- 
 vens, 51 F. R., 757. 
 
 Foreign publication. — Rosewasser v. 
 Spieth, 129 U. S., 47. 
 
 Idea not patentable. — Pencil Co. v. 
 Howard, 20 Wall., 498. 
 
 Inoperative structure. — Mitchell v. 
 Tilghman, 19 Wall., 287. 
 
 Patent covers other analogous uses. — 
 Stow V. Chicago, 104 U. S., 547; Wire 
 Cloth V. Clinton Co., 67 F. R., 790. 
 
 Lack of invention generally. — Le- 
 high v. Kearney, 158 U. S., 461. Beld- 
 ing V. Challenge, 151 U. S., 100; Mor- 
 gan V. Albany, 152 U. S., 425; Sar- 
 gent V. Covert, 152 U. S., 516; Haughey 
 v. Lee, 151 U. S., 282; Western r. An- 
 sonia, 114 U. S., 447-453; Estey v. 
 Burdett, 109 U. S.. 633; Hartshorn v. 
 Saginaw, 119 U. S., 664-679; Preston
 
 THE PATENT STATUTE DIGESTED 
 
 891 
 
 V. Manard, 116 U. S., 661-664; Weir v. 
 Morden, 125 U. S., 98-108; Hailes v 
 Albany, 123 U. S., 582-589; Holland 
 V. Shiplev, 127 U. S., 396; Peters v. 
 Active, l'30 U. S., 626; Pattee v. King- 
 man, 129 U. S., 294-305; Dreyfus v. 
 Searle, 124 U. S., 60; Munson v. Mayor, 
 124 U. S., 601-605; Goebel v. Goldman, 
 64 F. R., 787; Consolidated v. Holtzer, 
 67 F. R., 907; Andrews v. Thum, 67 
 F. R., 911; Kilmer v. Griswold, 67 
 F. R., 117; Thompson v. Walbridge, 
 67 F. R., 1021; Kilmer v. Griswold, 
 74 F. R., 561; Philadelphia v. Weeks, 
 61 F. R., 405. 
 
 Mechanical skill. — HoUister v. Bene- 
 dict, 113 U. S., 59-73. Morris v. 
 McMiUin, 112 U. S., 244; Pomace v. 
 Ferguson, 119 U. S., 335-338; Yale v. 
 Greenleaf, 117 U. S., 554-559; Aron 
 V. Manhattan, 132 U. S., 84; Shenfield 
 V. Nashawannuck, 137 U. S., 56; Phil- 
 Ups V. Detroit, 111 U. S., 604. Royer 
 V. Roth, 132 U. S., 201; French v. 
 Carter, 137 U. S., 239; Giles v. Hey- 
 singer, 150 U. S., 627; Black Diamond 
 V. Excelsior, 156 U. S., 611; Smith v. 
 Macbeth, 67 F. R., 137; Union v. 
 Waterbury, 70 F. R., 240; Merritt v. 
 Middleton, 61 F. R., 680; Westing- 
 house V. Edison, 63 F. R., 588. 
 
 Mechanical method and its relation 
 to article produced — Aggregation. — 
 Two patents to one inventor for one 
 invention. — Mosler v. Mosler, 127 
 U. S., 354. 
 
 Mechanical processes criticised. — 
 Risdon v. Medart, 158 U. S., 68; Glass 
 Co. V. Henderson, 67 F. R., 930. 
 
 Must involve invention as well as 
 novelty and utility. — Thompson v. 
 Boisselier, 114 U. S., 1; Gardner v. 
 Herz, 118 U. S., 180; Hill v. Wooster, 
 132 U. S., 693. 
 
 New and vsefid result. — Loom Co. 
 V. Higgins, 105 U. S., 580. 
 
 Operativeness and iisefulness, evi- 
 dence of. — Dashiell v. Grosvenor, 162 
 U. S., 425. 
 
 Originality of invention, employer and 
 employee. — Thompson v. Hall, 130 
 U. S., 117-122; Forgie v. Oil Well, 
 58 F. R., 871. 
 
 Particular arrangement. — Pope v. 
 Gormully, 144 U. S., 238; Topliff v. 
 Topliff, 145 U. S., 156; Dobson v. 
 Cubley, 149 U. S., 117; Corbin v. 
 Eagle, 150 U. S., 38; Knapp v. Morss, 
 150 U. S., 221; Howard v. Detroit, 150 
 U. S., 164; Magin v. Karle, 150 U. S., 
 387. 
 
 Public use or sale. — Consolidated v. 
 Wright, 94'U. S., 92. Elizabeth v. Pave- 
 ment, 97 U. S., 126. Parks v. Booth, 
 102 U. S., 96; Egbert v. Lippman, 104 
 U. S., 333; Worley v. Loker, 104 U. S., 
 340; Hall v. Macneale, 107 U. S., 90; 
 Manning v. Glue Co.. 108 U. S., 462; 
 Miller v. Foree, 116 U. S., 22; Beedle v. 
 Bennett, 122 U. S., 71; Smith v. 
 Sprague, 123 U. S., 249; Andrews v. 
 Hovey, 124 U. S., 694; Andrews v. 
 Hovey, 123 U. S., 267-276; Brush v. 
 Cond'it, 132 U. S., 39-50; Barbed Wire 
 Patent, 143 U. S., 275; (in this coun- 
 try). Gandy v. Belt Co., 143 U. S., 
 587; Root v. Third Ave., 146 U. S., 
 210; Kirk v. United States, 163 U. S., 
 49, 911. Gates v. Frazier, 153 U. S., 
 332; Smith v. Mellon, 58 F. R., 705; 
 Gamewell v. Municipal, 61 F. R., 208; 
 National v. Quick, 74 F. R., 236. 
 
 Prior knowledge or use. — Forncrook 
 V. Root, 127 U. S., 176; Collins v. Goes, 
 130 U. S., 56; Peters v. Active, 129 
 U. S., 530. 
 
 .. Prior publication. — Eames v. An- 
 drews, 122 U. S., 40. 
 
 Process defined. — Mowry v. Whit- 
 ney, 14 Wall., 620; Wood Paper Pat., 
 23 Wall., 566. Cochrane v. Deener, 94 
 U. S., 780; Downtown v. Yeager, 108 
 U. S., 466; Fermentation v. Maus, 122 
 U. S., 413-432. Lawther v. Hamilton, 
 124 U. S., 1-11; International v. Gay- 
 lord, 140 U. S., 55; Royer v. Coupe, 
 146 U. S., 524; Wells v. Henderson, 67 
 F. R., 930; Schwarzwalder v. N. Y., 66 
 F R., 152; Tannage v. Zahn, 70 F. R., 
 1003. Wall V. Leek, 66 F. R., 552; 
 Vt. V. Gibson, 56 F. R., 143; Heroult, 
 5 \pp. D. C, 90; Am. v. Buckskin, 72 
 F. R., 508. 
 
 Process and apparatus claims treated; 
 priority and originality of invention; 
 operative device. — Telephone Cases, 
 126 U. S., 1-584. 
 
 Result not patentable. — Fuller v. 
 Yentzer, 94 U. S., 288, 299; Glue Co. 
 V. Upton, 97 U. S., 3. Brush v. West- 
 ern 76 F. R., 761; Browning v. Colo- 
 rado, 61 F. R., 845. 
 
 Two patents to one inventor for one 
 invention. — Miller v. Eagle Co., 151 
 U. S., 186; Underwood v. Gerber, 149 
 U. S., 224; Russell v. Kern, 69 F. R., 
 94; Thomson-Houston v. West. Elec, 
 70 F. R., 69; Westinghouse v. N. Y., 
 67 F. R., 962; Fassett v. Ewart, 62 
 F R., 404; Elec. v. Brush, 52 F. R., 
 130; (Consult also citations under sec. 
 4919.)
 
 892 THE FIXED LAW OF PATENTS 
 
 Importance — Necessary to Grant. 
 
 * * * And if * * * it shall appear * * * that the same is 
 sufficiently useful and important, the Commissioner shall issue a 
 patent therefor. — R. S. 4893. 
 
 INVENTOR 
 Death of — Who may Apply for Patent. 
 
 (See Executor, R. S. 489G). 
 
 Who may make Application as. 
 
 (See Invention, R. S. 4886). 
 
 JUDICIAL CODE 
 
 (Note : The following is a classification of the sections of the Fed- 
 eral Judicial Code, in effect Jan. 1, 1912, which relate to patents). 
 
 Appeals — Circuit Court of Appeals. 
 
 (See Circuit Court of Appeals, Sees. 128, 129, Jud. Code). 
 
 Appeals — Court of Appeals, D. C. 
 
 Sec. 250. Any final judgment or decree of the court of appeals 
 of the District of Columbia may be reexamined and affirmed, re- 
 versed, or modified by the Supreme Court of the United States, 
 upon writ of error or appeal in the following cases: 
 
 sic 4: 4= H: 4: 4: 4: 
 
 Except as provided in the next succeeding section, the judgments 
 and decrees of said court of appeals shall be final in all cases arising 
 under the patent laws, the copyright laws, the revenue laws, the 
 criminal laws, and in admiralty cases; and except as provided in 
 the next succeeding section, the judgments and decrees of said court 
 of appeals shall be final in all cases not reviewable as hereinbefore 
 provided. 
 
 Appeals — Injunction. 
 
 (See Circuit Court of Appeals, Sec. 129, Jud. Code). 
 
 Certification — To Supreme Court. 
 
 (See Circuit Court of Appeals, Sec. 239, Jud. Code). 
 
 Certiorari — To Court of Appeals, D. C. 
 
 (See Court of Appeals, D. C, Sec. 251, Jud. Code). 
 
 Certiorari — To Circuit Court of Appeals. 
 
 (See Supreme Court, Sec. 240, Jud. Code). 
 
 Circuit Courts — Abolished — Transfer of Records. 
 
 Sec. 289. The circuit courts of the United States, upon the taking 
 effect of this Act, shall be, and hereby are, abolished; and there-
 
 THE PATENT STATUTE DIGESTED 893 
 
 upon on said date, the clerks of said courts shall deliver to the 
 clerk; of the distric courts of the United States for their respective 
 dSrfcts all the journals, dockets, books, files, records, and other 
 books and papers of or belonging to or in any manner connected 
 with said circuit courts. * * * 
 
 Circuit Courts — Transfer of Powers and Duties. 
 
 Sec 291 Whenever, in any law not embraced withm this Act, 
 any reference is made to, or any power or duty is conferred or im- 
 posed upon, the circuit courts, such reference shall, upon the taking 
 effect of this Act, be deemed and held to refer to, and to confer such 
 power and impose such duty upon, the district courts. 
 
 Circuit Courts of Appeals — Circuits — Constitution. 
 
 Sec. 116. There shall be nine judicial circuits of the United States, 
 constituted as follows: 
 
 ******* 
 
 Sec 117 There shall be in each circuit a circuit court of appeals, 
 which shall consist of three judges, of whom two shall constitute 
 a quorum, and which shall be a court of record, with appellate 
 jurisdiction, as hereinafter limited and established. 
 
 Circuit Courts of Appeals — Certification to Supreme Court. 
 
 Sec 239 In any case within its appellate jurisdiction, as defined 
 in section 128, the circuit court of appeals at any time may certify 
 to the Supreme Court of the United States any questions or propo- 
 sitions of law concerning which it desires the instruction of that 
 court for its proper decision; and thereupon the Supreme Court 
 may either give its instruction on the questions and propositions 
 certified to it, which shall be binding upon the circmt court of appeals 
 in such case, or it may require that the whole record and cause be 
 sent up to it for its consideration, and thereupon shall decide the 
 whole matter in controversy in the same manner as if it had been 
 brought there for review by writ of error or appeal. 
 
 Circuit Courts of Appeals — Certiorari to. 
 (See Supreme Court, Sec. 240, Jud. Code). 
 
 Circuit Courts of Appeals — Injunctions — Interlocutory Decrees. 
 
 Sec 129. Where upon a hearing in equity in a district court, or 
 by a judge thereof in vacation, an injunction shall be granted, con- 
 tinued, refused, or dissolved by an interlocutory order or decree, 
 or an application to dissolve an injunction shall be refused, or an 
 interlocutory order or decree shall be made appointing a receiver, 
 an appeal may be taken from such interlocutory order or decree 
 granting, continuing, refusing, dissolving, or refusing to dissolve, an 
 injunction, or appointing a receiver, to the circuit court of appeals, 
 notwithstanding an appeal in such case might, upon final decree under 
 • the statutes regulating the same, be taken directly to the Supreme
 
 894 THE FIXED LAW OF PATENTS 
 
 Court : Provided, That the appeal must be taken within thirty days 
 from the entrj^ of such order or decree, and it shall take precedence in 
 the appellate court; and the proceedings in other respects in the court 
 below shall not be stayed unless otherwise ordered by that court, 
 or the appellate court, or a judge thereof, during the pendency of 
 such appeal: Provided, however, That the court below may, in its 
 discretion, require as a condition of the appeal an additional bond. 
 
 Circuit Courts of Appeals — Jurisdiction. Sec. 128. The circuit 
 courts of appeals shall exercise appellate jurisdiction to review by 
 appeal or writ of error final decisions in the district courts, including 
 the United States district court for Hawaii, in all cases other than 
 those in which appeals and writs of error may be taken direct to the 
 Supreme Court, as provided in section 238, unless otherwise pro- 
 vided by law; and, except as provided in sections 239 and 240, 
 the judgments and decrees of the circuit courts of appeals shall be 
 final in all cases in which the jurisdiction is dependent entirely upon 
 the opposite parties to the suit or controversy being aliens and citi- 
 zens of the United States, or citizens of different States; also in 
 all cases arising under the patent laws, under the copyright laws, 
 under the revenue laws, and under the criminal laws, and in ad- 
 miralty cases. 
 
 Construction — Arrangement and Classification. 
 
 Sec. 295. The arrangement and classification of the several sec- 
 tions of this Act have been made for the purpose of a more conve- 
 nient and orderly arrangement of the same, and therefore no inference 
 or presumption of a legislative construction is to be drawn by reason 
 of the chapter under which any particular section is placed. 
 
 Construction — Continuation of Previous Acts. 
 
 Sec. 294. The provisions of this Act, so far as they are substan- 
 tially the same as existing statutes, shall be construed as continua- 
 tions thereof, and not as new enactments, and there shall be no 
 implication of a change of intent by reason of a change of words in 
 such statute, unless such change of intent shall be clearly manifest. 
 
 Construction — Definition. 
 
 Sec. 293. The provisions of sections one to five, both inclusive, 
 of the Revised Statutes, shall apply to and govern the construction 
 of the provisions of this Act. The words " this title," wherever they 
 occur herein, shall be construed to mean this Act. 
 
 Courts — Always Open as Courts of Equity. 
 
 Sec. 9. The district courts, as courts of admiralty and as courts 
 of equity, shall be deemed always open for the purpose of filing any 
 pleaclmg, of issuing and returning mesne and final process, and of 
 makmg and directing all interlocutory motions, orders, rules, and 
 other proceedings preparatory to the hearing, upon their merits, 
 ot all causes pending therein. Any district judge may, upon reason-
 
 THE PATENT STATUTE DIGESTED 895 
 
 able notice to the parties, make, direct, and award, at chambers or 
 in the clerk's office, and in vacation as well as in term, all such proc- 
 ess, commissions, orders, rules, and other proceedings, whenever 
 the same are not grantable of course, according to the rules and 
 practice of the court. 
 
 Courts — Special Terms. 
 
 Sec. 11. A special term of any district court may be held at the 
 same place where any regular term is held, or at such other place 
 in the district as the nature of the business may require, and at such 
 time and upon such notice as may be ordered by the district judge. 
 Any business may be transacted at such special term which might 
 be transacted at a regular term. 
 
 Court of Appeals, D. C. — Appeals from. 
 
 (See Appeals, Sec. 250, Jud. Code). 
 
 Court of Appeals, D. C. — Certification to Supreme Court. 
 
 Sec. 251. * * * It shall also be competent for said court of appeals, 
 in any case in which its judgment or decree is made final under the 
 section last preceding, at any time to certify to the Supreme Court 
 of the United States any questions or propositions of law concern- 
 ing which it desires the instruction of that court for their proper 
 decision; and thereupon the Supreme Court may either give its 
 instruction on the questions and propositions certified to it, which 
 shall be binding upon said court of appeals in such case, or it may 
 require that the whole record and cause be sent up to it for its con- 
 sideration, and thereupon shall decide the whole matter in contro- 
 versy in the same manner as if it had been brought there for review 
 by writ of error or appeal. 
 
 Court of Appeals, D. C. — Certiorari to. 
 
 (See Supreme Court, Sec. 251, Jud. Code). 
 
 Decrees — Interlocutory — Appeals. 
 
 (See Circuit Courts of Appeals, Sec. 129, Jud. Code). 
 
 Equity — Jurisdiction — Adequate Remedy at Law. 
 
 (See Jurisdiction, Sec. 267, Jud. Code). 
 
 Injimction — Appeals. 
 
 (See Circuit Courts of Appeals, Sec. 129, Jud. Code) 
 
 Injunction — Circuit Judge. 
 
 (See Injunction, Sec. 264, Jud. Code). 
 
 Injunction — In what Case Judge May Grant. 
 
 Sec. 264. Writs of injunction may be granted by any justice of 
 the Supreme Court in cases where they might be granted by the
 
 896 THE FIXED LAW OF PATENTS 
 
 Supreme Court; and by any judge of a district court in cases where 
 they might be granted by such court. But no justice of the Supreme 
 Court shall hear or allow any application for an injunction or re- 
 straining order in any cause pending in the circuit to which he is 
 allotted, elsewhere than within such circuit, or at such place outside 
 of the same as the parties may stipulate in writing, except when it 
 can not be heard by the district judge of the district. In case of 
 the absence from the district of the district judge, or of his dis- 
 ability, any circuit judge of the circuit in which the district is situ- 
 ated may grant an injunction or restraining order in any case pending 
 in the district court, where the same might be granted by the district 
 judge. 
 
 Injunction — Supreme Court Justices. 
 
 (See Injunction, supra. Sec. 2G4, Jud. Code). 
 
 Injunction — Temporary Restraining Order. 
 
 Sec. 263. Whenever notice is given of a motion for an injunction 
 out of a district court, the court or a judge thereof may, if there 
 appears to be danger of irreparable injury from delay, grant an 
 order restraining the act sought to be enjoined until the decision 
 upon the motion; and such order may be granted with or without 
 security, in the discretion of the court or judge. 
 
 Jurisdiction — Circuit Court of Appeals. 
 
 (See Circuit Court of Appeals, Sec. 128, Jud. Code). 
 
 Jurisdiction — District Courts. 
 
 Sec. 24. The district courts shall have original jurisdiction as 
 follows : 
 
 Seventh. Of all suits at law or in equity arising under the patent, 
 the copyright, and the trade-mark laws. 
 
 Jurisdiction — Equity — Adequate Remedy at Law. 
 
 Sec. 267. Suits in equity shall not be sustained in any court of 
 tne United States in any case where a plain, adequate, and complete 
 remedy may be had at law. 
 
 Jurisdiction — Exclusive of State Courts. 
 
 Sec. 256. The jurisdiction vested in the courts of the United 
 States in the cases and proceedings hereinafter mentioned, shall be 
 exclusive of the courts of the several states: 
 
 4: H: :): ^ ti: 4: 4= 
 
 Second. Of all suits for penalties and forfeitures incurred under 
 
 the laws of the United States. 
 
 ******* 
 
 Fifth. Of all cases arising under the patent-right, or copyright 
 laws of the United States.
 
 THE PATENT STATUTE DIGESTED 897 
 
 Jurisdiction — Residence or Place of Business — Patent Causes. 
 
 Sec. 48. Ill suits brought for the infringement of letters patent 
 the district courts of the United States shall have jurisdiction, in 
 law or in equity, in the district of which the defendant is an inhabit- 
 ant, or in any district in which the defendant, whether a person, 
 partnership, or corporation, shall have committed acts of infringe- 
 ment and have a regular and established place of business. If such 
 suit is brought in a district of which the defendant is not an inhabit- 
 ant, but in which such defendant has a regular and established place 
 of business, service of process, summons, or subpoena upon the 
 defendant may be made by service upon the agent or agents engaged 
 in conducting such business in the district in which suit is brought. 
 
 Jurisdiction — Several Defendants — Diversity of Residence. 
 
 Sec. 50. When there are several defendants in any suit at law or 
 in equity, and one or more of them are neither inhabitants of nor 
 found within the district in which the suit is brought, and do not 
 voluntarily appear, the court may entertain jurisdiction, and proceed 
 to the trial and adjudication of the suit between the parties who 
 are properly before it; but the judgment or decree rendered therein 
 shall not conclude or prejudice other parties not regularly served 
 with process nor voluntarily appearing to answer; and non-joinder 
 of parties who, are not inhabitants of nor found within the district, 
 as aforesaid, shall not constitute matter of abatement or objection 
 to the suit. 
 
 Repeal and Superseding Provisions. 
 
 Sec. 297, among other things, repeals or effects supersedence of 
 sections and acts heretofore embodied in the so-called patent laws: 
 629, R. S., repealed. 
 
 Act Mar. 3, 1897, sub 629, superseded by Sec. 48. 
 699, R. S., repealed. 
 711, R. S., repealed, see Sec. 256. 
 Act Mar. 3, 1891, sees. 2 and 4, sub 711, superseded by Sees. 116 
 
 and 117. 
 Act Feb. 19, 1897, sec. 6, sub 711, superseded by Sees. 239 and 
 
 240. 
 Act Feb. 9, 1893, sees. 6 and 8, sub 4915, repealed by Sec. 250. 
 
 Revision of Previous Acts — Supersedence. 
 
 Sec. 292. Wherever, in any law not contained within this Act, 
 a reference is made to any law revised or embraced herein, such 
 reference, upon the taking effect hereof, shall be construed to refer 
 to the section of this Act into which has been carried or revised the 
 provision of law to which reference is so made. 
 
 Supreme Court — Certification of Questions to. 
 (See Circuit Court of Appeals, Sec. 239, Jud. Code).
 
 898 THE FIXED LAW OF PATENTS 
 
 Supreme Court — Certiorari to Circuit Courts of Appeals. 
 
 Sec. 240. In any case, civil or criminal, in which the judgment 
 or decree of the circuit court of appeals is made final by the provisions 
 of this Title, it shall be competent for the Supreme Court to require, 
 by certiorari or otherwise, upon the petition of any party thereto, 
 any such case to be certified to the Supreme Court for its review and 
 determination, with the same power and authority in the case as 
 if it had been carried by appeal or writ of error to the Supreme Court. 
 
 Supreme Court — Certiorari to Court of Appeals, D. C. 
 
 Sec. 251. In any case in which the judgment or decree of said 
 court of appeals is made final by the section last preceding, it shall 
 be competent for the Supreme Court of the United States to require, 
 by certiorari or otherwise, any such case to be certified to it for its 
 review and determination, with the same power and authority in the 
 case as if it it had been carried by writ of error or appeal to said 
 Supreme Court. 
 
 ******* 
 
 Title — Designation. 
 
 Sec. 296. This Act may be designated and cited as " The Judicial 
 Code." 
 
 JURISDICTION. 
 Circuit Courts — Law and Equity. 
 
 (See Jud. Code, Sec. 24). 
 
 Court of Claims. 
 
 (See Government, Act June 25, 1910). 
 
 Designs — Infringement. 
 
 * * * ^Q(j lY^Q full amount of such liability may be recovered 
 by the owner of the letters patent, to his own use, in any circuit- 
 court of the United States having jurisdiction of the parties, either 
 by action at law or upon a bill in equity for an injunction to restrain 
 such infringement. 
 
 Sec. 2. That nothing in this act contained shall prevent, lessen, 
 impeach or avoid any remedy at law or in equity which any owner 
 of letters patent for a design, aggrieved by the infringement of the 
 same, might have had if this act had not been passed; but such 
 owner shall not twice recover the profit made from the infringement. 
 — R. S. 4933 and Act Feb. 4, 1887. 
 
 Patent Causes. 
 
 (See Jud. Code, Sec. 256). 
 
 Place and Person. 
 
 (See Jud. Code,lSec. 48).
 
 THE PATENT STATUTE DIGESTED 
 
 899 
 
 JURY TRIAL 
 Equity Cases — Questions of Fact. 
 
 Sec. 2. The said courts (U. S. Circuit Courts) when sitting in 
 equity for the trial of patent causes, may empanel a jury of not 
 less than five and not more than twelve persons, subject to such 
 general rules in the premises as may, from time to time, be made by 
 the Supreme Court, and submit to them such questions of fact 
 arising in such case as such circuit court shall deem expedient. 
 
 And the verdict of such jury shall be treated and proceeded 
 upon in the same manner and with the same effect as in the case of 
 issues sent from chancery to a court of law and returned with such 
 findings. — R. S. 4921. 
 
 LACHES 
 Application — Abandonment. 
 
 (See Invention, R. S. 4886). 
 
 Application — Prosecution. 
 
 (See Application, R. S. 4894). 
 
 Claims too Broad — Failure to File Disclaimer. 
 
 * * * But no patentee shall be entitled to the benefits of this 
 section if he has unreasonably neglected or delayed to enter a dis- 
 claimer. — R. S. 4922. 
 
 Reissue. 
 
 (See Reissue, R. S. 4916). 
 
 LAW ACTIONS . 
 
 Damages. 
 (See Damages, R. S. 4919). 
 
 LETTERS PATENT 
 General Provision — Contents. 
 
 Every patent shall contain a short title or description of the 
 invention or discovery, 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. 
 invention or discovery throughout the United States and the Terri- 
 tories thereof, referring to the specification for the particulars 
 thereof. A copy of the specification and drawings shall be annexed 
 to the patent and be a part thereof. — R. S. 4884. 
 
 Patented articles subject to State police 
 laws. — Patterson v. Kentucky, 97 
 U. S., 501. Webber v. Va., 103 U. S., 
 344. 
 
 Patents are property. — Densmore v. 
 Scofield, 102 U. S., 375. 
 
 Government has no right to use pat- 
 ented inventions without compensation. 
 — James v. Campbell, 104 U. S., 356.
 
 900 THE FIXED LAW OF PATENTS 
 
 General Provision — Date. 
 
 Every patent shall issue within a period of three months from 
 the date of the payment of the final fee, which fee shall be paid not 
 later than six months from the time at which the application was 
 passed and allowed and notice thereof was sent to the applicant or 
 his agent; and if the final fee is not paid within that period, the 
 patent shall be withheld. — R. S. 4885, Amended May 23, 1908. 
 
 General Provision — Grant Issuance Attestation. 
 
 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 Commissioner of Patents, and they shall be recorded, to- 
 gether with the specifications, in the Patent Office in books to be 
 kept for that purpose. — R. S. 4883. 
 
 Omission of signature of the Secretary. — Marsh v. Nichols Co., 128 U. S., 605. 
 
 Actions to Compel Issue — Actions in Equity. 
 
 (See Actions — Equity, R. S. 4915). 
 
 Assignment Before Issue. 
 
 Patents may be granted and issued or reissued to the assignee 
 of the inventor or discoverer; but the assignment must first be 
 entered of record in the Patent Office. And in all cases of an ap- 
 .plication by an assignee for the issue of a patent, the application 
 shall be made and the specification sworn to by the inventor or 
 discoverer; and in all cases of an application for a reissue of any 
 patent, the application must be made and the corrected specifica- 
 tion signed by the inventor or discoverer, if he is living, unless the 
 patent was issued and the assignment made before the eighth day 
 of July, eighteen hundred and seventy. — R. S. 4895. 
 
 Assignee of patent before issue. — Hendrie v. Sayles, 98 U. S., 546. 
 
 Assignment — Execution and Recording. 
 
 (See Assignment — By Instrument in Writing, R. S. 4898). 
 
 Authentication — Seal of Patent Oflace. 
 
 The seal heretofore provided for the Patent Office shall be the 
 seal of the Office, with which letters patent and papers issued from 
 the Office shall be authenticated. — R. S. 478. 
 
 Certified Copies — How Obtained. 
 
 * * * Any person making application therefor, and paying the 
 fee required by law, shall have certified copies thereof. — R. S. 
 892. 
 
 Hesigns. 
 
 (See Designs, R. S. 4929). 
 
 Drawings — Part of Specification. 
 
 (See Letters Patent — Contents, R. S. 4884).
 
 THE PATENT STATUTE DIGESTED 901 
 
 Duration of Grant. 
 
 Every patent shall contain * * * a grant to the patentee, his 
 heirs or assigns, for the term of seventeen years. * * * — R. S. 
 4884. 
 
 Duration — Limitation by Foreign Patent. 
 
 (See Foreign Patent — Effect on U. S. Application, R. S. 4887). 
 
 For what Granted. 
 
 (See Inventions — Classes of, R. S. 4886). 
 
 Foreign Use — No Bar to Grant — When. 
 
 (See Anticipation — Prior Foreign Invention, R. S. 4923). 
 
 Grant to Representatives of Deceased or Insane Inventor. 
 
 (See Executor, R. S. 4896). 
 
 Granted to Assignee. 
 
 (See Assignment — Before Issue, R. S. 4895). 
 
 Interest in — Patent Office Employees. 
 (See Employees — Patent Office, R. S. 480). 
 
 Issuance — Signature, Seal and Record. 
 
 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 Commissioner of Patents, and they shall be recorded, to- 
 gether with the specifications, in the Patent Office in books to be 
 kept for that purpose. — R. S. 4883. 
 
 Recording of — In Patent Office. 
 
 (See Letters Patent — Issuance, R. S. 4883). 
 
 Sealing. 
 
 The seal heretofore provided for the Patent Office shall be the seal 
 of the Office, with which letters patent and papers issued from the 
 Office shall be authenticated. — R. S. 478. 
 
 Scope of Grant — Territory Included. 
 
 Every patent shall contain * * * a grant to the patentee, his 
 heirs and assigns * * * throughout the United States and Terri- 
 tories thereof. * * * — R. S. ,4884. 
 
 Short Title. 
 
 (See Letters Patent — Contents, R. S. 4884). 
 
 LITHOGRAPHING AND ENGRAVING 
 
 The lithographing and engraving required by the two preceding 
 sections shall be awarded to the lowest and best bidders for the
 
 902 THE FIXED LAW OF PATENTS 
 
 interests of the Government, due regard being paid to the execution 
 of the work, after due advertising by the Congressional Printer 
 under the direction of the Joint Committee on Printing; but the 
 Joint Committee on Printing may empower the Congressional 
 Printer to make immediate contracts for engraving whenever, in 
 their opinion, the exigencies of the public service will not justify 
 waiting for advertisement and award; or if, in the judgment of the 
 Joint Committee on Printing, the work can be performed under the 
 direction of the Commissioner of Patents more advantageously 
 than in the manner above prescribed, it shall be so done, under 
 such limitations and conditions as the Joint Committee on Printing 
 may from time to time prescribe. — R. S. 492. 
 
 LICENSE 
 Assignment. 
 (See Assignment, R. S. 4898). 
 
 Implied — Arising Before Application. 
 
 Every person who purchases of the inventor or discoverer, or, 
 with his knowledge and consent, constructs any newly invented 
 or discovered machine, or other patentable article, prior to the 
 application of the inventor or discoverer for a patent, or who sells 
 or uses one so constructed, shall have the right to use, and vend 
 to others to be used, the specific thing so made or purchased, with- 
 out liability therefor. — R. S. 4899. 
 
 LIMITATIONS 
 
 Statute of. 
 
 * * * But in any suit or action brought for the infringement of 
 any patent there shall be no recovery of profits or damages for any 
 infringement committed more than six years before the filing of the 
 bill of complaint or the issuing of the writ in such suit or action, 
 and this provision shall apply to existing causes of action. — R. S. 
 4921. 
 
 MACHINE 
 Patentability of. 
 
 (See Invention, R. S. 4886). 
 
 MANUFACTURE 
 Patentability of. 
 
 (See Invention, R. S. 4886). 
 
 MARINE SERVICE 
 Adoption of Patented Articles — How Recommended. 
 
 No patented article connected with marine engines shall here- 
 after be purchased or used in connection with any steam vessels 
 of war until the same shall have been submitted to a competent
 
 THE PATENT STATUTE DIGESTED 903 
 
 board of naval engineers, and recommended by such board, in 
 writing, for purchase and use. — R. S. 1537. 
 
 MARKING ARTICLES PATENTED 
 Necessity and Manner — Result of Not Marking. 
 
 It shall be the duty of all patentees, and their assigns and legal 
 representatives, and of all persons making or vending any patented 
 article for or under them, to give sufficient notice to the public 
 that the same is patented; either by fixing thereon the word " pa- 
 tented," 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 
 inclosed, 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 infringement, and continued, after such notice, 
 to make, use, or vend the article so patented. — R. S. 4900. 
 
 Sufficiency of notice. — Sessions v. I Schofield, 152 U. S., 244; 
 .omadka, 145 U. S., 29; Dunlap v. I Inman Co., 71 F. R., 420. 
 
 Beach v. 
 RomadkE 
 
 Penalty for False Marking. 
 
 Every person who, in any manner, marks upon anything 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. 
 
 Who, in any manner, marks upon or affixes 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 coun- 
 terfeit the mark or device of the patentee, without having the license 
 or consent of such patentee or his assigns or legal representatives; 
 or. 
 
 Who, in any manner, marks upon or afiixes to any unpatented 
 article the word " patent " or any word importing that the same is 
 patented, for the purpose of deceiving the public, shall be liable, 
 for every such offense, to a penalty of not less than one hundred 
 dollars, with costs; one-half 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 offense may have been committed. 
 — R. S. 4901. 
 
 MODELS 
 Arrangement and Exhibition of — Public Inspection. 
 
 The Commissioner of Patents 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, manu- 
 factures, works of art, and designs, which have been or shall be de-
 
 904 THE FIXED LAW OF PATENTS 
 
 posited in the Patent Office; and the rooms and galleries shall be 
 kept open during suitable hours for public inspection. — R. S. 484. 
 
 Designs — Dispensed with — When. 
 
 The Commissioner may dispense with models of designs when 
 the design can be sufficiently represented by drawings or photo- 
 graphs. — R. S. 4930. 
 
 Disposition of — Rejected Applications. 
 
 The Commissioner of Patents 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. — R. S. 485. 
 
 Reissue — Amendment. 
 
 (See Reissue). 
 
 When Requisite. 
 
 In all cases which admit of representation by model, the appli- 
 cant, if required by the Commissioner, shall furnish a model of 
 convenient size to exhibit advantageously the several parts of his 
 invention or discovery. — R. S. 4891. 
 
 NOTICE OF ALLOWANCE 
 
 (See R. S. 4885). 
 
 NOVELTY 
 Designs — Prior Patent, Publication, or Use. 
 
 (See Designs — Patentability of, R. S. 4929). 
 
 Prior Foreign Invention — When Not Anticipation. 
 
 (See Anticipation — Prior Foreign Invention, R. S. 4923). 
 
 Prior Use — Prior Publication. 
 
 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 before his invention or discovery thereof, and not 
 patented or described in any printed publication in this or any 
 foreign country before his invention or discovery thereof, or more 
 than two years prior to his application, and not in public use or on 
 sale in this country for more than two years prior to his applica- 
 tion * * * may * * * obtain a patent therefor. — R. S. 4886. 
 
 Note: Amendments of Mar. 3, 1897, in italics. 
 
 Required — Novelty and Utility. 
 
 Any person who has invented or discovered any new and useful 
 
 * * * — R. S. 4886.
 
 THE PATENT STATUTE DIGESTED 
 
 905 
 
 OATH 
 
 General Provisions. 
 
 The applicant shall make oath 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. Such oath may be made before any 
 person within the United States authorized by law to administer 
 oaths, or, when the applicant resides in a foreign country, before any 
 minister, charge d'affaires, consul, or commercial agent holding 
 commission under the Government of the United States, or before 
 any notary public, judge, or magistrate having an official seal and 
 authorized to administer oaths in the foreign country in which the 
 applicant may be, whose authority shall be proved by certificate of 
 a diplomatic or consular officer of the United States. — R. S. 4892. 
 
 Note: The italics indicate the change made by amendment of 
 Mar. 3, 1903. 
 
 Not necessary to recite that oath has 
 been taken. — Seymour v. Osborne, 
 11 Wall., 516. 
 
 Oath must be made by the inventor. — 
 Kennedy v. Hazelton, 128 U. S., 667- 
 673. 
 
 Executor, Administrator or Committee. 
 
 (See Executor, R. S. 4896). 
 
 Requirement of — Assigned Invention. 
 
 Patents may be granted and issued or reissued to the assignee 
 of the inventor or discoverer; but the assignment must first be 
 entered of record in the Patent Office. And in all cases of an ap- 
 plication by an assignee for the issue of a patent, the application 
 shall be made and the specification sworn to by the inventor or 
 discoverer; and in all cases of an application for a reissue of any 
 patent, the application must be made and the corrected specifica- 
 tion signed by the inventor or discoverer, if he is living, unless 
 the patent was issued and the assignment made before the eighth 
 day of July, 1870. — R. S. 4895. 
 
 OFFICIAL GAZETTE 
 
 Publication of — Authority for. 
 
 The Commissioner of Patents may print, or cause to be printed, 
 copies of the claims of current issues. * * * — R. S. 489. 
 
 PAPERS AND DOCUMENTS 
 
 Legibility — Printing. 
 
 The Commissioner of Patents may require all papers^ filed in the 
 Patent Office, if not correctly, legibly, and clearlv written, to be 
 printed at the cost of the party filing them. — R. S. 488.
 
 906 THE FIXED LAW OF PATENTS 
 
 PATENT OFFICE 
 General Provisions. 
 
 The Secretary of the Interior is charged with the supervision of 
 public business relating to the following subjects: 
 
 Fifth. Patents for inventions. — R. S. 441. 
 
 J urisdiction of the Secretary on appeal I Hoe, 112 U. S., 50-60. 
 from Commissioner. — Butterworth v, j 
 
 There shall be in the Department of the Interior an office known 
 as the Patent Office, where all records, books, models, drawings, 
 specifications, and other papers and things pertaining to patents 
 shall be safely kept and preserved. — R. S. 475. 
 
 Classifications. 
 
 The Commissioner of Patents 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, manu- 
 factures, works of art, and designs which have been or shall be 
 deposited in the Patent Office; and the rooms and galleries shall be 
 kept open during suitable hours for public inspection. — R. S. 
 484. 
 
 Disbursements — Disbursing Clerk. 
 
 All disbursements for the Patent Office shall be made by the 
 disbursing clerk of the Interior Department. — R. S. 496. 
 
 Documents, etc. — Preservation of. 
 
 There shall be in the Department of the Interior an office known 
 as the Patent Office, where all records, books, models, drawings, 
 specifications, and other papers and things pertaining to patents 
 shall be safely kept and preserved. — R. S. 475. 
 
 Employees — Number and Salaries. 
 
 (For list of minor employees, salaries, etc., see R. S. 440 and 
 amendments thereto, and also the several appropriation acts of 
 Congress) . 
 
 Library — Purchase of Books. 
 
 There shall be purchased for the use of the Patent Office a library 
 of such scientific works and periodicals, both foreign and American, 
 as may aid the officers in the discharge of their duties, not exceeding 
 the amount annually appropriated for that purpose. 
 
 For purchase of professional and scientific books and expenses 
 of transporting publications of patents issued by the Patent Office 
 to foreign governments, two thousand five hundred dollars. — R. S. 
 486 and. Act Feb. 3, 1905.
 
 THE PATENT STATUTE DIGESTED 907 
 
 Officials — Appointment of. 
 
 There shall be in the Patent Office a Commissioner of Patents, 
 one Assistant Commissioner, and three examiners-in-chief, who 
 shall be appointed by the President, by and with the advice and 
 consent of the Senate. All other officers, clerks, and employes 
 authorized by law for the office shall be appointed by the Secretary 
 of the Interior, upon the nomination of the Commissioner of Patents. 
 — R. S. 476. 
 
 Publications — Law and Decisions. 
 
 The Commissioner of Patents may print, or cause to be printed, 
 copies of the claims of current issues, and copies of such laws, de- 
 cisions, regulations, and circulars as may be necessary for the in- 
 formation of the public. — R. S. 489. 
 
 Seal of — Authentication by. 
 
 The seal heretofore provided for the Patent Office shall be the 
 seal of the Office, with which letters patent and papers issued from 
 the Office shall be authenticated. — R. S. 478. 
 
 Secretary of the Interior — Charged with Supervising. 
 
 The Secretary of the Interior is charged with the supervision 
 of public business relating to the following subjects: 
 
 ******* 
 Fifth. Patents for inventions. — R. S. 441. 
 
 PRIORITY 
 Between Applicants — Applicant and Patentee. 
 
 (See Interferences, R. S 4904). 
 
 Interfering Patents. 
 _ (See Interfering Patents, R. S. 4918). 
 
 PROCESS 
 Patentability of. 
 
 (See Invention, R. S. 4886). 
 
 PROFITS 
 General Provision. 
 
 The several courts vested with jurisdiction of cases arising under 
 the patent laws shall have power to grant injunctions according to 
 the course and principles of courts of equity, to prevent the viola- 
 tion of any right secured by patent, on such terms as the court may 
 deem reasonable; and upon a decree being rendered in any such 
 case for an infringement the complainant shall be entitled to recover, 
 in addition to the profits to be accounted for by the defendant, 
 the damages the complainant has sustained thereby; and the court 
 shall assess the same or cause the same to be assessed under its
 
 908 
 
 THE FIXED LAW OF PATENTS 
 
 direction. And the court shall have the same power to increase such 
 damages, in its discretion, as is given to increase the damages found 
 by verdicts in actions in the nature of actions of trespass upon 
 the case. 
 
 But in any suit or action brought for the infringement of any 
 patent there shall be no recovery of profits or damages for any 
 infringement committed more than six years before the filing of 
 the bill of complaint or the issuing of the writ in such suit or action, 
 and this provision shall apply to existing causes of action. — R. S. 
 4921. 
 
 Articles imported from abroad. — 
 Measure of damages. — Boesch t'. 
 Graff, 133 U. S., 697. 
 
 Compensatory damages. — Birdsall v. 
 Coolidge, 93 U. S., 64. 
 
 Court will not interfere to enjoin a 
 pending suit at law, much less the bring- 
 ing of one in the future. — Hapgood v. 
 Hewitt, 119 U. S., 226. 
 
 Decree against all defendants. — Ho- 
 horst V. Hamburg Am., 148 U. S., 262. 
 
 Effect of laches on right to preliminary 
 injunction. — Keyes v. Eureka, 158 
 U. S., 150; Russell v. Kern, 69 F. R., 
 94. 
 
 Effect of expiration of patent, before 
 final decree. — Beedle v. Bennett, 122 
 U. S., 71; Clark v. Wooster, 119 U. S.. 
 322. 
 
 Infringement by equivalents. — Sey- 
 mour v. Osborne, 11 Wall., 516. Gould 
 V. Rees, 15 Wall., 187. Cawood Pat- 
 ent, 94 U. S., 695. 
 
 Infringer's liability. — Mowry v. 
 Whitney, 14 Wall., 620. Philp v. Nock, 
 17 Wall., 460. Packet Co. v. Sickles, 19 
 Wall., 611. Littlefield v. Perry, 21 
 Wall., 205; Mason z;.Graham, 23 Wall., 
 261; Tremolo Patent, 23 Wall., 518; 
 Burdell v. Denig, 92 U. S., 716. Mevs 
 V. Conover, 11 O. G., 1111. Elizabeth 
 V. Pavement, 97 U. S., 126. Marsh v. 
 Seymour, 97 U. S., 348; Goulds v. 
 Cowing, 105 U. S., 253; Crosby v. 
 Safety Valve, 141 U. S., 441; McCreary 
 V. Canal Co., 141 U. S., 459; Sessions 
 V. Romadka, 145 U. S., 29; Consumer 
 V. Am. Co., 50 F. R., 778. 
 
 Sec. 2. That said courts [U. S. district courts], when sitting in 
 equity for the trial of patent causes, may impanel a jury of not less 
 than five and not more than twelve persons, subject to such general 
 rules in the premises as may, from time to time, be made by the 
 Supreme Court, and submit to them such questions of fact arising 
 in such cause as such circuit court shall deem expedient. 
 
 And the verdict of such jury shall be treated and proceeded upon 
 in the same manner and with the same effect as in the case of issues 
 sent from chancery to a court of law and returned with such find- 
 ings.— Act Feb. 16, 1875. 
 
 Liabilities of parties, maker, user, 'and 
 se/Zer. — Birdsell v. Shaliol, 112 U. S., 
 485. 
 
 Measure of damages. — Garretson v. 
 Clark, 111 U. S., 120; Black v. Thome, 
 111 U. S., 122; Rude v. Westcott, 130 
 U. S., 152. Hurlbut v. Schillinger, 130 
 U. S., 456; Comely v. Marckwald, 131 
 U. S., 159; Thomson v. \\ooster, 114 
 U. S., 104; Clark v. Wooster, 119 U. S., 
 322; Seabury v. Am Ende, 152 U. S., 
 561; Warren v. Keep, 155 U. S., 265; 
 Belknap v. Schild, 16 S. C. Reporter, 
 443; Holmes v. Truman, 67 F. R., 542; 
 Hunt V. Cassidy, 53 F. R., 257; Sayre 
 V. Scott, 55 F. R., 971; Keystone v. 
 Adams, 151 U. S., 139; Coupe v. Royer, 
 155 U. S., 565; Tilghman v. Proctor, 
 125 U. S., 136; Tuttle v. Claflin, 76 
 F. R., 227; Mosher v. Joyce, 51 F. R., 
 441. 
 
 Measure of damages, interest on damr 
 ages. — Death of patentee during suit. — 
 Railroad v. Turrill, 110 U. S., 301. 
 
 Not necessary to show recovery at law 
 to warrant jurisdiction in equity for 
 injunction. — McCoy v. Nelson, 121 
 U. S., 484. 
 
 Jurisdiction. — Heaton Co. v. Eu- 
 reka Co., 78 O. G., 171. 
 
 Perpetual injunction granted. — 
 Safety Valve v. Steam Co., 113 U. S., 
 157. 
 
 Violation of preliminary injunction. 
 — Warden v. Searles, 121 U. S., 14. 
 
 Injunction. — Am. v. National Co., 
 51 F. R., 229.
 
 THE PATENT STATUTE DIGESTED 909 
 
 PRINTING 
 Papers Filed. 
 
 The Commissioner of Patents 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. — R. S. 488. 
 
 PUBLICATION 
 
 Claims, Laws, Decisions. 
 
 The Commissioner of Patents may print, or cause to be printed, 
 copies of the ckims of current issues, and copies of such laws,' 
 decisions, regulations, and circulars as may be necessary for the 
 information of the public. — R. S. 489. 
 
 Specifications and Drawings. 
 
 The Commissioner of Patents is authorized to have printed, 
 from time to time, for gratuitous distribution, not to exceed one 
 hundred and fifty copies of the complete specifications and drawings 
 of each patent hereafter issued, together with suitable indexes, 
 one copy to be placed for free public inspection in each capitol of 
 every State and Territory, one for the like purpose in the clerk's 
 office of the district court of each judicial district of the United 
 States, except when such offices are located in State or Territorial 
 capitols, and one in the Library of Congress, which copies shall be 
 certified under the hand of the Commissioner and seal of the Patent 
 Office, and shall not be taken from the depositories for any other 
 purpose than to be used as evidence. [See § 894.] — R. S. 490. 
 
 The Commissioner of Patents is authorized to have printed such 
 additional numbers of copies of specifications and drawings, certified 
 as provided in the preceding section, at a price not to exceed the 
 contract price for such drawings, for sale, as may be warranted by 
 the actual demand for the same; and he is also authorized to fur- 
 nish a complete set of such specifications and drawings to any 
 public library which will pay for binding the same into volumes to 
 correspond with those in the Patent Office and for the transporta- 
 tion of the same, and which shall also provide for proper custody 
 for the same, with convenient access for the public thereto, under 
 such regulations as the Commissioner shall deem reasonable. — 
 R. S. 491. 
 
 PUBLIC USE 
 Prior. 
 (See Novelty — Prior Use, R. S. 4886). 
 
 Prior Foreign Use — When Not a Bar. 
 
 (See Anticipation — Prior Foreign Invention, R. S. 4923). 
 
 PURCHASER 
 Article Made Before Application — License. 
 
 (See Infringement — Article made before Application, R. S. 
 4899).
 
 910 THE FIXED LAW OF PATENTS 
 
 QUESTION OF FACT 
 In Equity — Trial by Jury. 
 
 (See Actions — Equity, R. S. 4921). 
 
 RECORDS AND DOCUMENTS 
 Certified Copies — How Obtained. 
 
 * * * Any person making application therefor and paying the 
 fee required by law, shall have certified copies thereof. — R. S. 892. 
 
 Evidence — Patent Office Records. 
 
 (See Evidence, R. S. 892). 
 
 REDUCTION TO PRACTICE 
 General Requirements. 
 
 (See R. S. 4886 and 4888). 
 
 REISSUE 
 General Provision. 
 
 Whenever any patent is inoperative or invahd, by reason of a 
 defective or insufficient 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, acci- 
 dent, or mistake, and without any fraudulent or deceptive inten- 
 tion, the Commissioner shall, on the surrender of such patent and 
 the payment of the duty required by law, cause a new patent for 
 the same invention, and in accordance with the corrected specifica- 
 tion, to be issued to the patentee, or, in case of his death or of an 
 assignment of the whole or any undivided part of the original 
 patent, then to his executors, administrators, or assigns, for the 
 unexpired part of the term of the original patent. Such surrender 
 shall take effect upon the issue of the amended patent. The Com- 
 missioner may, in his discretion, cause several patents to be issued 
 for distinct and separate parts of the thing patented, upon demand 
 of the applicant, and upon payment of the required fee for a reissue 
 for each of such reissued letters patent. The specifications and 
 claim in every such case shall be subject to revision and restriction 
 in the same manner as original applications are. Every patent so 
 reissued, together with the corrected specifications, shall have the 
 same effect and operation in law, on the trial of all actions for causes 
 thereafter arising, as if 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 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, as 
 aforesaid. — R. S. 4916.
 
 THE PATENT STATUTE DIGESTED 
 
 911 
 
 Reissue must be for original invention. 
 — Seymour v. Osborne, 11 Wall., 516. 
 Littlefield v. Perrv, 21 Wall., 205; 
 Gill V. Wells, 22 Wall., 1; Union v. Van 
 Dusen, 23 Wall., 530; Russell v. Dodge, 
 93 U. S., 460; Marsh v. Seymour, 97 
 U. S., 348; Powder v. Powder, 98 U. S., 
 126; Ball v. Langles, 102 U. S., 128; 
 Garneau v. Dozier, 102 U. S., 230; 
 James v. Campbell, 104 U. S., 356; 
 Heald v. Rice, 104 U. S., 737; Johnston 
 V. R. R., 105 U. S., 539; Wing v. An- 
 thony, 106 U. S., 142. Gage v. Her- 
 ring,"l07 U. S., 640; McMurray v. Mal- 
 lory, 111 U. S., 97-109; Cochrane -v. 
 Badische, 111 U. S., 203; Eachus v. 
 Broomall, 115 U. S., 429; Worden v. 
 Searls, 121 U. S., 14; Pattee v. King- 
 man, 129 U. S., 294; Flower v. Detroit, 
 
 127 U. S., 563; Farmers v. Challenge, 
 
 128 U. S., 506; Dunham v. Dennison, 
 154 U. S., 103; Olin v. Timkin, 155 
 U. S., 141; Lehigh v. Kearney, 158 
 U. S., 461; Pat. Clothing v. Glover, 141 
 U. S., 560; Freeman v. Asm us, 145 U. 
 S., 226; Huber v. Nelson, 148 U. S., 
 270; Leggett v. Oil Co., 149 U. S., 287; 
 Corbin v. Eagle, 150 U. S., 38; Ameri- 
 can V. Johnston, 52 F. R., 229. 
 
 Can not proceed on original patent if 
 reissue is void. — Eby v. King, 158 
 U. S., 366. 
 
 Defective specification, inoperative 
 patent; mistake, laches, new matter, re- 
 instatement of claims. — Yale v. Berk- 
 shire, 135 U. S., 342. 
 
 Disclaimer to new matter in reissue 
 considered. — Hurlbut v. Schillinger, 
 130 U. S., 456. 
 
 Enlarged claim must be sought within 
 two years. — Topliff v. Topliff, 145 
 U. S., 156; WoUensak v. Reiher, 115 
 U. S., 96. 
 
 Intervening rights. — Lumber v. Rod- 
 gers, 112 U. S., 659; Clements v. Ex- 
 cavating, 109 U. S., 641-650; Turner v. 
 Stamping, 111 U. S., 319; White v. 
 Dunbar, 110 U. S., 47; Cornell v. 
 Weidner, 127 U. S., 261; Brown v. 
 Davis, 116 U. S., 237; Mahn v. Har- 
 wood, 112 U. S., 354; Ives v. Sargent, 
 119 U. S., 652; Newton v. Furst, 119 
 U. S., 373. 
 
 Inadvertence or mistake. — Coon v. 
 Wilson, 113 U. S., 268; Yale v. James, 
 125 U. S., 447. 
 
 Insufficient specification, accident or 
 mistake, enlargement of claims. — 
 Eames v. Andrews, 122 U. S., 40; Mat- 
 thews V. Iron Clad, 124 U. S., 347. 
 
 Matter purposely erased in original. 
 — Leggett V. Avery, 101 U. S., 256 
 Goodyear v. Davis, 102 U. S., 222 
 Cartridge v. Cartridge, 112 U. S., 624 
 Beecher v. Atwater, 114 U. S., 523 
 Crawford v. Heysinger, 123 U. S., 589 
 Dobson V. Lees, 137 U. S., 258. 
 
 Question of fact settled by Commis- 
 sioner. — Seymour v. Osborne, 11 
 Wall., 516; Corn Planter Patent, 23 
 Wall., 181. 
 
 Reissue for abandoned invention. — 
 Mfg. Co. V. Corbin, 103 U. S., 786. 
 
 " The same invention " defined. — 
 Parker v. Yale, 123 U. S., 87-104. 
 
 Unreasonable delay. — Miller v. 
 Brass Co., 104 U. S., 350; Matthews v. 
 Mach. Co., 105 U. S., 54; Bantz v. 
 Frantz, 105 U. S., 160; Johnson v. R. R. 
 Co., 105 U. S., 539; Thomson v. Woos- 
 ter, 114 U. S., 104-120; Gardner v. 
 Herz, 118 U. S., 180; Hartshorn v. 
 Saginaw, 119 U. S., 664; Gas Light v. 
 Boston, 139 U. S., 481; Leggett v. Oil 
 Co., 149 U. S., 287; WoUensak v. Sar- 
 gent, 151 U. S., 221. 
 
 Applications for — By Whom Made. 
 
 (Must be made by inventor, R. S. 4888, 4896). 
 
 Assignee — May be Granted to. 
 
 (See Assignment Before Issue, R. S. 4895). 
 
 Oath — By Inventor if Living. 
 
 (See Oath, R. S. 4888, 4896). 
 
 REJECTION 
 Application — Notice to Applicant. 
 
 (See Application — Examination, R. S. 4903). 
 
 RENEWAL 
 Forfeited Application. 
 
 (See Application — Renewal of, R. S. 4897).
 
 912 THE FIXED LAW OF PATENTS 
 
 RULES AND REGULATIONS 
 
 Patent Office — Establishment of. 
 
 The Commissioner of Patents, subject to the approval of the 
 Secretary of the Interior, may from time to time establish regula- 
 tions, not inconsistent with law, for the conduct of proceedings 
 in the Patent Office. — R. S. 483. 
 
 RULES 
 Taking Testimony — Commissioner to Establish. 
 
 (See Evidence — Required by Patent Office, R. S. 4905). 
 
 SECRETARY OF THE INTERIOR 
 
 Supervision of Patents — Charged with. 
 
 The Secretary of the Interior is charged with the supervision of 
 pubhc business relating to the follo^ving subjects: 
 ^ ***** * 
 
 Fifth. Patents for inventions. — R. S. 441. 
 
 SPECIFICATIONS 
 
 Requkements Regarding — Specifications and Claims. 
 
 Before any inventor or discoverer shall receive a patent for his 
 invention or discovery, he shall make application therefor, in writmg, 
 to the Commissioner of Patents, and shall file in the Patent Office 
 a written description of the same, and of the manner and process 
 of making, constructing, compounding and using it, in such lull, 
 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 
 nearlv 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 contemplated applying that 
 nrinciple 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. 
 The specification and claim shall be signed by the inventor and 
 attested by two witnesses. — R. S. 4888. 
 
 Signing and Witnessing. 
 
 (See Specifications, supra). 
 
 SPECIMENS 
 May be Required. 
 (See Compositions of Matter, R. S. 4890). 
 
 SUBPOENAS 
 Witnesses. 
 
 SeeWitnesses, R. S. 4906).
 
 THE PATENT STATUTE DIGESTED 
 
 913 
 
 UNPATENTED INVENTIONS 
 
 Right of Purchaser or Maker to Use. 
 
 Every person wlio purchases of the inventor or discoverer, or, 
 with his knowledge and consent, constructs any newly invented 
 or discovered machine, or other patentable article, prior to the 
 application by the inventor or discoverer for a patent, or who sells 
 or uses one so constructed, shall have the right to use, and vend 
 to others to be used, the specific thing so made or purchased, with- 
 out liability therefor. — R. S. 4899. 
 
 Previously purchased machine can 
 he no infringement during extension. — 
 Paper Bag Mach. Cases, 105 U. S., 
 766. 
 
 Whal persons have the right to use. — 
 Wade V. Metcalf,129 U. S., 202. Dable 
 V. Flint, 137 U. S., 41. 
 
 UTILITY 
 Necessity of to Grant. 
 
 * * * And if * * * it shall appear * * * that the same is suffi- 
 ciently useful and important, the Commissioner shall issue a patent 
 therefor. — R. S. 4893. 
 
 Any person who has invented or discovered any new and use- 
 ful * * * — R. S. 4886. 
 
 WITNESSES 
 
 Contempt — Evidence before Department. 
 
 Whenever any witness, after being duly served with such sub- 
 poena, neglects or refuses to appear, or after appearing refuses 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. But no witness 
 shall be deemed guilty of contempt for disobeying such subpoena, 
 unless his fees and traveling expenses in going to and 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 disclose any secret invention or discovery made 
 or owned by himself. — R. S. 4908. 
 
 Evidence before Department — Privileged Matter. 
 
 * * * But no witness shall be deemed guilty of contempt * * * 
 for refusing to disclose any secret invention or discovery made or 
 owned by himself. — R. S. 4908. 
 
 Fees — Evidence before Department. 
 
 Every witness duly subpoenaed and in attendance shall be allowed 
 the same fees as are allowed to witnesses attending courts of the 
 United States. — R. S. 4907. 
 
 Subpoenas — Evidence before Department. 
 
 The clerk of any court of the United States, for any district 
 or Territory wherein testimony is to be taken for use in any con-
 
 914 THE FIXED LAW OF PATENTS 
 
 tested case pending in the Patent Office, shall, upon the applica- 
 tion of any party thereto, or of his agent or attorney, issue a sub- 
 poena for any witness residing or being withni such district or ler- 
 ritory, commanding him to appear and testify before any ofhcer 
 in such district or Territory authorized to take depositions and 
 affidavits, at any time and place in the subpoena stated. 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. — 
 R. S. 4906.
 
 APPENDIX 
 
 Covering cases reported since first edition, down to and including 225 
 U. S. and 194 Fed. 
 
 The section numbering is identical with the original, main chapter. 
 
 ABANDONMENT. 
 § 2. General Rules. 
 
 The law provides that if the invention covered by a patent was in public 
 use or on sale earlier than two years before the date of the application, the 
 patent is invalid. The law is based upon the proposition that if an inventor 
 permits the public to use the invention for more than two years, during 
 which period he takes no steps to secure the monopoly for himself, he is 
 presumed to have abandoned it. In other words, he cannot secure a patent 
 and levy tribute upon or enjoin a use which he has constructively sanc- 
 tioned for a period of two years. — Corrington v. Westinghouse, 178 Fed. 
 711; 103 C. C. A. 479. 
 
 The defense of constructive abandonment through prior sale firct ap- 
 peared in the patent act of 1836, which provided that a defendant might 
 defend by showing that the thing patented " had been in public use or on 
 sale with the consent and allowance of the patentee before his application 
 for a patent." This provision was modified by the patent act of 1839, which 
 provided that purchases and sales prior to the application for the patent 
 should not invalidate it except on proof " that such purchase, sale or prior 
 use had been for more than two years prior to the application." The con- 
 solidated patent act of 1870 (§§ 4920, 4886) provided that a defendant 
 might show by way of defense that the patented device " had been in public 
 use or on sale in this country for more than two years before his application 
 for a patent." And this language has not been changed by the amendments 
 of 1897 and 1903. — National t-. American, 178 Fed. 79; 101 C. C. A. 569. 
 
 There is a distinction between abandonment of an invention and abandon- 
 ment of an application. Abandonment of the invention was not pleaded. 
 Abandonment of an invention being a question of intent, appellant, if it 
 had pleaded the defense, would have had the burden of proving clearly that 
 Schmertz and his successors in interest had such an intent. — Western 
 Glass V. Schmertz, 185 Fed. 788; 109 C. C. A. 1. 
 
 Western Elec. v. Sperry, 58 Fed. 186; International v. Kellogg, 171 Fed. 651. 
 
 The invention was completed and used in 1897. Application for patent 
 was not made until Feb. 10, 1900. The alleged anticipating device was made 
 in the fall of 1898, and application filed Feb. 6, 1899. Held: Thus, if the 
 above-mentioned device and use of Hill were anticipated in date by Reginer 
 (patentee of patent in suit), they became public property through Hill's 
 independent disclosure and dedication, pending such conduct of Reginer 
 indicative of abandonment, and we believe any (assumed) invention therein 
 on the part of Reginer must be treated as abandoned and unpatentable,
 
 916 THE FIXED LAW OF PATENTS . §§ 4-lU 
 
 under the settled policy of the patent law. — Handy Things v. Tucker, 188 
 Fed. 68; 110 C. C. A. 138. 
 Kendall v. Winsor, 21 How. 322. 
 
 It is the general rule that abandonment of an invention is not to be 
 presumed, but must be clearly proven. — Sly v. Russell, 189 Fed. 61; 
 110 C. C. A. 625. 
 
 Ida V. Trorlicht, 115 Fed. 137. 
 
 § 4. Amendment. 
 
 That when, by amendment, an applicant omits a feature of his inven- 
 tion as originally disclosed, it will be presumed that he considered it mopera- 
 tive or worthless and abandoned, see — Western Glass v. Schmertz, 185 Fed. 
 788; 109 C. C. A. 1. 
 
 Stoner v. Todd, L. R. Ch. Div. GO, 46 L. J. Ch. 33. 
 
 § 5. Application — Abandonment and Renewal 
 
 One application for a patent may be a continuation of a prior application 
 for the same thing under certain circumstances. — Model Bottling Mach. 
 V. Anlieuser-Busch, 190 Fed. 573; 111 C. C. A. 389. 
 
 Hayes-Young v. St. Louis, 137 Fed. 80. 
 
 § 9. Division of Application. 
 
 Among the numerous cases cited we find none where it has been held that 
 when a patent has been issued to a party for all he claimed in his applica- 
 tion, the party may subsequently make a new application for a new patent 
 upon omitted matters, and that such new application was a contmuation 
 of the first or original application, without surrendering the first patent and 
 obtaining a reissue for the unexpired term of the first patent, as provided 
 in § 4916, — Model Bottling Mach. v. Anheuser-Busch, 190 Fed. 573; 
 111 C. C. A. 389. 
 
 That division of an application or separate application upon a process 
 and an apparatus does not work abandonment, one by the other, even though 
 one or the other may have been abandoned, see — Acme Acetylene v. Com- 
 mercial, 192 Fed. 321; 112 C. C. A. 573. 
 
 Leeds v. Victor, 213 U. S. 301. 
 
 While he abandoned his first application and substituted therefor a sec- 
 ond, he did not abandon his invention. This substitution was proper pro- 
 cedure. We also find the substance of the second application had been 
 embodied in the first. In that respect we have the action of the Patent 
 Office, which, with full knowledge of the previous application, allowed such 
 substitution and based its grant of the patent on the basis of the substantial 
 identity of the two appUcations. The presumption that arises in such case 
 must, as in a reissue, " only by showing from a comparison of the original 
 specification with that of the reissue that the former does not substantially 
 describe what is described and claimed in the latter." — Clark Blade v. 
 Gillette, 194 Fed. 421; 114 C. C. A. 383. 
 
 Godfrey v. Eames, 1 Wall. 324; Corrington v. Westinghouse, 173 Fed. 76; 
 Smith V. Goodyear, 93 U. S. 499. 
 
 § 10. Experimental Use. 
 
 In so far as the patentee exercised invention therein, it was completely 
 formulated and disclosed in the machine of 1898 (application filed m 1903),
 
 11-26 ACTIONS 
 
 917 
 
 and it is immaterial that its operation was unsatisfactory to him, inducing 
 frequent experiments to improve the combination. His undoubted election 
 to use the invention, independently and commercially, over four years be- 
 fore application for a patent, followed by at least two years of such use in 
 the first machine, constitutes an abandonment thereof to the public. — Star 
 t;. Crescent, 179 Fed. 856; 103 C. C. A. 342. 
 
 Smith V. Sprague, 123 U. S. 249; Eastman v. Mayor, 134 Fed. 844. 
 
 § II. Evidence of. 
 
 The burden was upon appellant to prove very clearly that the patentee 
 meant to donate his invention to the pubUc. — International v. Kellogg, 171 
 Fed. 651; 96 C. C. A. 395. 
 
 Ide t'. Trorlicht, 115 Fed. 144. 
 
 § i8. Public Use. 
 
 Manufacturing and delivering a machine upon an advance order indicate 
 just as much an intention to abandon the invention as delivering it when 
 completed upon an order then obtained. We think it would be altogether 
 too technical and wholly out of accord with the purpose of the patent laws 
 to hold that the manufacture and delivery of the machine upon an order 
 obtained in advance amounted to anything different. In our opinion the • 
 disposition by an inventor for a pecuniary consideration of the article in- 
 vented amounts to a " sale " within the meaning of the patent act, whether 
 such disposition be made in accordance with a contract to manufacture such 
 article or to sell it after manufacture. — National v. American, 178 Fed. 79; 
 101 C. C. A. 569. 
 
 ACTIONS. 
 
 § 25. To Compel Issue of Patent. 
 
 That an action brought under § 4915 R. S. asking for a decree upon a 
 question of reissue and also upon an interference is multifarious, see — 
 Gould V. Gould, 187 Fed. 273; 109 C. C. A. 615. 
 
 This case seems to establish the following: , . 
 
 1. That an action to compel issue is an original proceedmg and is in no 
 sense an appeal from the Department or from the Court of Appeals, D. C. 
 
 2. That the complainant may carry his date of invention back of that of 
 the Patent Office proceeding and that in evidence before the Court of Appeals, 
 D. C. 
 
 '3. That to overcome the decision of the Patent Office as affirmed by the 
 Court of Appeals, D. C. the complainant must introduce evidence which will 
 overcome the presumption of finality of the decision of that court, and more. 
 — Greenwood v. Dover, 194 Fed. 91; 114 C. C. A. 169. 
 
 Morgan v. Daniels, 153 U. S. 120; In re Hein, 160 U. S. 432; Maxwell Land 
 Grant Case, 121 U. S. 325; United States v. Am. Bell Tel. 167 U. S. 224; W esting- 
 house V. Stanley, 133 Fed. 167; Brooks v. Sachs, 81 Fed. 403. 
 
 § 26. Cancellation of Patent. 
 
 Congress named certain permissible defenses, of which fraud and collu- 
 sion in following the application to issuance is not one. Therefore a patent 
 procured bv fraud and collusion or by illegal procedure can be attacked only 
 by the government. — Western Glass v. Schmertz, I80 Fed. 788; 109 C. 
 C. A. 1. 
 
 Gandv V. Marble, 122 U. S. 432; Mowry v. Whitney, 14JV^11- 439; Mahn v. 
 Harwood, 112 U. S. 354; Rv. Register v. North Hudson 23 Fed. 593; U b. v. 
 Am. Bell Tel. 128 U. S. 315; id. 159 U. S. 555; id. 167 U. S. 224.
 
 918 THE FIXED LAW OF PATENTS §§30-31 
 
 ADJUDICATION. 
 
 § 30. Patent Office Decisions. 
 
 In the interference proceedings, the respective rights of McBerty and 
 Fowler to the issuance of a patent, were examined in succession by the Ex- 
 aminer of Interferences, the Board of Examiners in Chief, the Commissioner 
 of Patents, and the Court of Appeals for the District of Columbia; and in 
 each tribunal judgment of priority of invention was in favor of McBerty. 
 To overcome these judgments, the proof must be clear and convincing — by 
 evidence which shall strongly outweigh that of the respondent below, as put 
 by Judge Putnam. — Western Elec. v. Fowler, 177 Fed. 224; 101 C. C. A. 
 394. 
 
 Brooks V. Sachs, 81 Fed. 403; Morgan v. Daniels, 153 U. S. 120; United States 
 V. Bell Tel. 167 U. S. 224. 
 
 §31. Prior — Conclusiveness. 
 
 If the first Peckham company were privy to the decree declaring the 
 patent void, there would be great force in the argument that that decree 
 established, as against the plaintiff, the right of the Peckham Mfg. Co. to 
 make and sell the patented article, and that the right ought to be recog- 
 nized in a suit against its customer, defended by it. Brill v. Washington, 215 
 U. S. 527; 54 L. Ed. 311; 30 S. Ct. 177. 
 
 Kessler v. Eldred, 206 U. S. 285. 
 
 We are met at the outset with a decree of the Circuit Court for the North- 
 ern District holding in a contested case where the same claim was made, that 
 this identical patent was valid. This decree being between other parties, 
 does not constitute res adjudicata. We are not constrained to follow it upon 
 -any principle of stare decisis. Still we think an orderly administration of 
 justice in patent causes requires, as a general rule, that when a patent, after 
 a full hearing, has been declared by the Circuit Court to be valid and such 
 decree has been affirmed by this court, we should follow the decision in a 
 subsequent case involving the validity of the same patent, and not present- 
 ing any essentially different evidence, notwithstanding the claim of validity 
 was not urged upon this court upon the prior appeal. — Crier v. Innes, 170 
 Fed. 324; 95 C. C. A. 508. 
 
 That where a patent has been finally held void, both the combination and 
 the elements of the combination become public property; and a person 
 exercising his right to their use may restrain the owner of the invalidated 
 patent from threatening or harassing his customers, see — Rubber Tire v. 
 Goodyear, 183 Fed. 978; 106 C. C. A. 318. 
 
 Kessler v. Eldred, 206 U. S. 285; Young and Foerster, 37 Fed. 203; Morgan v. 
 Albany, 152 U. S. 425; distinguishing Aspden v. Nixon, 4 How. 467; Birdsell v. 
 Shaliol, 112 U. S. 485. 
 
 That where a party had practically intervened and made himself a party 
 to the defense so that estoppel would apply, and the patent was defeated, 
 such party may restrain the owner of the defeated patent from bringing suits 
 against his customers, see — Marshall v. Bryant, 185 Fed. 499 ; 107 C. C. A. 
 599. 
 
 Columb V. Webster, 84 Fed. 592; United States v. California, 192 U. S. 355; 
 Kessler v. Eldred, 206 U. S. 285; distinguishing Russell v. Place, 94 U. S. 606. 
 
 For a partial ruling in applying Kessler v. Eldred, 206 U. S. 285, and cer- 
 tification of a doubtful question thereunder to the Supreme Court, see — • 
 Hurd V. Seim, 191 Fed. 832; 112 C. C. A. 346.
 
 §§ 37-64 ANTICIPATION 919 
 
 § 37. Stare Decisis. 
 
 That the Supreme Court will not reverse findings of fact after concurrent 
 decisions of the lower courts, see — Rumford v. Hygienic, 215 U. S. 156; 54 
 L. Ed. 137; 30 S. Ct. 45. 
 
 The case being here on substantially the same state of facts as in the 
 former appeal, all questions of law determined on the first appeal become 
 law of the case for courts and parties on the second. — Penn v. Conroy, 185 
 Fed. 511; 107 C. C. A. 611. 
 
 Columbia v. Duff, 184 Fed. 876. 
 
 This court would not depart from its former ruling on the patent in suit 
 without satisfactory evidence of other facts which ought to induce a differ- 
 ent conclusion in respect to the validity of the patent. — Interurban v. 
 Westinghouse, 186 Fed. 166; 108 C. C. A. 298. 
 
 ANTICIPATION. 
 
 § 59. General Rules. 
 
 The only conclusion we have been able to reach is that we are not " sat- 
 isfied beyond a reasonable doubt " that the alleged anticipating device was 
 perfected and in use prior to the date of application. Inasmuch as the burden 
 of thus satisfying the court rests upon the defendant, the defense of prior 
 use is not made out. — Moyer v. Metal Stamping, 178 Fed. 830; 102 C. C. A. 
 504. 
 
 In determining the question of patentable novelty, there can be no hard and 
 fast rule. Each case must be decided upon its own facts. — Union Carbide 
 t;. Am. Carbide, 181 Fed. 104; 104 C. C. A. 522. 
 
 §61. Abandoned Device or Experiment — Non- Anticipating. 
 
 That where a device disclosed in a preliminary specification is abandoned 
 and omitted from the final specification, it will be presumed to have been in- 
 operative and merely experimental, see — Western Glass v. Schmertz, 185 
 Fed. 788; 109 C. C. A. 1. 
 
 Stoner v. Todd, L. R. Ch. Div. 60, 46 L. J. Oh. 33. 
 
 § 62. Abandoned Device or Experiment — Application. 
 
 An application for a patent pending in the office is not such a printed 
 publication as the statute contemplates, and, indeed, is not a publication 
 at all. — Interurban v. Westinghouse, 186 Fed. 166; 108 C. C. A. 298. 
 
 § 63. Analogousness — Art. 
 
 Still we appreciate the substantial difference between the problem of pro- 
 pelling a boat and the motor vehicle problem and are not inclined to hold 
 that this use constituted an anticipation, although it may properly be con- 
 sidered in determining the question of invention. — Columbia v. Duerr, 
 184 Fed. 893; 107 C. C. A. 215. 
 
 That a machine for punching paper is not in an art analogous to that of 
 punching steel beams, see — Conley v. King Bridge, 187 Fed. 137; 109 
 C. C. A. 412. 
 
 § 64. Analogousness — Use. 
 
 It does not follow as a rule of law, that because the Gauthier sprinkler 
 was used in sprinkUng trees, and defivered the fluid in the form of mist, the
 
 920 THE FIXED LAW OF PATENTS §§05-68 
 
 Wilgus sprinkler, which was used to sprinkle lawns, and delivered the water 
 in drips, was not anticipated by the prior invention. — Wilgus v. Germain, 
 72 Fed. 773; 19 C. C. A. 188. 
 
 Tucker «;. Spalding, 13 Wall. 453; Smithy. Nichols, 21 Wall. 112; Machine 
 Co. V. Murphy, 97 U. S. 125; Machine Co. v. Keith, 101 U. S. 479. 
 
 § 65. Anticipating an Anticipation — Burden of Proof. 
 
 The burden was on complainant to do so by satisfactory and convincing 
 proof. She did not produce the inventor himself, who was the best witness 
 on the issue. On the contrary, we are asked to believe the oral testimony 
 of witnesses somewhat contradictory in itself, given many years after the 
 event and unsupported by physical exhibits or other substantial or imperish- 
 able monument. Such testimony is not suflBcient. — Torry v. Hancock, 184 
 Fed. 61; 107 C. C. A. 79. 
 
 Clark V. WiUimantic, 140 U. S. 481; Rogers v. Fitch, 81 Fed. 403; Eastern v. 
 Continental, 142 Fed. 479; Kraatz v. Tiemen, 79 Fed. 322. 
 
 That to anticipate an anticipation the burden is upon him asserting it to 
 show prior conception and diligence in reduction to practice, see — Sheffield 
 V. D'Arcey, 194 Fed. 686; — C. C A. — . 
 
 Barbed Wire Pat. 143 U. S. 275; Columbus v. Standard, 148 Fed. 622; Chris- 
 tie V. Seybold, 55 Fed. 69; Automatic v. Pneumatic, lOG Fed. 288. 
 
 § 68. Combining Old Elements — Different Patents. 
 
 It is no defense to a claim of an infringement lliat one or more elements 
 of a patented combination, or one or more elements of a patented improve- 
 ment, may be found in one old patent or publication, and others in another, 
 and still others in a third. It is indispensable that all of them, or their me- 
 chanical equivalents, be found in the same description or machine, where they 
 do the same work by substantially the same means. — Owens v. Twin City, 
 168 Fed. 259; 93 C. C. A. 561. 
 
 Imhaeuser v. Buerk, 101 U. S. 647; Bates v. Coe, 98 U. S. 31; Latta v. Shawk, 
 Fed. Cas. 8116; Machine v. Pearce, Fed. Cas. 4132; Mfg. Co. v. Steiger. 17 
 Fed. 250; National v. American, 53 Fed. 367; Rhodes v. Lincoln, 64 Fed. 218; 
 Packard v. Lacing, 70 Fed. 66. 
 
 Defendants have ransacked patent oflSces in America and Europe. Pie- 
 cing together excerpts and elements from this wide search, they have built 
 up a formidable speculative argument to show how simple and easy was the 
 step taken. This is a form of argumentation familiar in patent litigation. 
 The patent law, however, has its proper place in the realm of actual indus- 
 trial life, and not in the limboes of parchment casuistry. — Naylor v. Alsop, 
 168 Fed. 911; 94 C. C. A. 315. 
 
 If we assume the first seven features here mentioned are to be found in prior 
 patents — that is, one feature in one patent and another feature in another 
 patent, or substantially this — it would not in any way affect the validity of 
 the combination covered by claim 3 of the Houghton patent. Under a familiar 
 and well-settled rule the patentability of combination claims cannot be over- 
 thrown in this way. — Whitin v. Houghton, 178 Fed. 278; 101 C. C. A. 344. 
 
 It is urged that it did not involve inventive genius to make such changes 
 in the apparatus of the above (cited prior) patents as to adapt them to the 
 transmission of carriers under a vacuum system such as that of the patent 
 in suit — that such alterations were within the competency of any one skilled 
 in the art. Doubtless had the apparatus in question been seen and examined
 
 §§ 71-74 ANTICIPATION 921 
 
 by those skilled in the art, as disclosed ^y the above patents, and they had 
 been asked to make such changes, they might have done so. But this cir- 
 cumstance fails to overcome the presumption of validity arising from the 
 granting of the patent, coupled with the nature of the change necessary to 
 be made to convert pressure despatch into vacuum despatch systems. — Am. 
 Pneumatic v. Snyder, 180 Fed. 712; 104 C. C. A. 78. 
 
 These claims are for new combinations of old devices. They are of course 
 not anticipated by the fact that a part of the old devices may be found in one 
 and another part of them in a prior patent. The claim for such a combina- 
 tion is no more anticipated than it is infringed by a combination which lacks 
 any one of its mechanical elements. Dissenting opinion of Judge Sanborn 
 in — Electric Protection v. American, 184 Fed. 916; 107 C. C. A. 38. 
 
 § 71. Evidence of — Burden of Proof. 
 
 Prior use, in order to show anticipation of a patent, must be " proven by 
 e\adence so cogent as to leave no reasonable doubt in the mind of the court." 
 Mueller v. Glauber, 184 Fed. 609; 106 C. C. A. 613. 
 
 Deering v. Winona, 155 U. S. 286; Barbed Wire Patent, 143 U. S. 275. 
 
 § 72. Evidence of — Device or Exhibit. 
 
 In Writing Mach. v. Wagner, 151 Fed. 576, we held that a model filed in 
 the Patent Office, which is a full operative embodiment of the patented 
 mechanism, maj' be considered upon the question of invention arising upon 
 a subsequent patent. But we have never gone to the extent of holding that 
 an unpleaded patent issued after the patent in suit may defeat the latter 
 because the specification states that the application was filed prior to the 
 application of the patent in suit. Assuming, that the specification and 
 drawings may be considered, we think they are entitled to little weight uirless 
 supplemented by proof showing their condition at the time of filing and that 
 no material changes have been made in either. We have nothing but the 
 printed date on the specification that his device was made before Hobart's 
 and nothing but inference to show that the specification and drawings were 
 those originally filed. It would be a dangerous rule to establish that a patent 
 granted in 1904 may be destroyed by the disclosures of a patent granted in 
 1905, the latter not being pleaded and no word of proof being offered as to 
 what changes were made during the two years it remained in the Patent 
 Office, inaccessible to the public. — Roth v. Harris, 168 Fed. 279; 93 C. C. A. 
 581. 
 
 § 74. Evidence of — Parol. 
 
 The 01*^1 testimony of many witnesses, if unsupported by any evidence 
 consisting of documents or things, must be very reasonable or very strong 
 to establish the defense of prior use. — Parker v. Stebler, 177 Fed. 210; 101 
 C. C. A. 380. 
 
 Barbed Wire Pat. 143 U. S. 275; Deering v. Winona, 155 U. S.286; Cantrell 
 V. Wallick, 117 U. S. 689; Knickerbocker v. Rogers. 61 Fed. 297; Pratt v. Sencen- 
 baugh, 64 Fed. 779; Wickes v. Lockwood, 65 Fed. 610; Singer v. Schenck, 68 
 Fed. 191; Emerson v. Van Xort, 116 Fed. 974; Pettibone v. Penn. Steel, 133 
 Fed. 730. 
 
 It is true that prior use must be established beyond a reasonable doubt, 
 but testimony must be weighed in a patent cause as in other cases, and the 
 court is not permitted to reject arbitrarily the testimony of respectable 
 witnesses because of mistakes and differences in nonessentials. — Corring- 
 ton V. Westinghouse, 178 Fed. 711; 103 C. C. A. 479.
 
 922 THE FIXED LAW OF PATENTS §§77-87 
 
 The testimony as to these alleged transactions in 1807 is entirely founded 
 on the unaided memories of witnesses testifying 10 years after the event, and 
 is not sufficient under well recognized rules to make out the alleged antici- 
 pation. — Schwab V. Apstein, 178 Fed. 91; 101 C. C. A. 455. 
 
 In order to defeat a patent by evidence of prior public use more than two 
 years before the application for a patent is made by another, the proof must 
 be very clear and definite, and as a general proposition it has been held that 
 mere oral evidence, depending on the memory of the witness or witnesses, 
 without the production of any visible sign or contemporary memoranda cer- 
 tainly fixing and defining the character of the alleged anticipating structure, 
 will not be regarded as sufficient. Still it has been held that the rule is not 
 inflexible, and upon the testimony of witnesses who are shown to be familiar 
 with the thing or matter described, if it is so definite and specific in detail 
 as to induce the court to feel that it is treading on safe ground, the fact may 
 be established without the production of any tangible exhibit. — Interurban 
 V. Westinghouse, 186 Fed. 166; 108 C. C. A. 298. 
 
 Am. Roll-Paper v. Weston, 59 Fed. 149. 
 
 The existence and use of an unpatented anticipating device prior to the in- 
 vention patented may be established by oral testimony only by clear and 
 satisfactory evidence, sufficient to prove the facts beyond a reasonable 
 doubt. — DeLaval v. Iowa, 194 Fed. 423; 114 C. C. A. 385. 
 
 Barbed Wire Pat. 143 U. S. 275; Mast v. Dempster, 82 Fed. 327; Na- 
 tional V. Interchangeable, 106 Fed. 693; Am. Bank Protection v. Electric, 181 
 Fed. 350. 
 
 § 77. Evidence of — Miscellaneous Holdings. 
 
 That a prior blueprint of a construction which is not proved to have been 
 constructed or reduced to practice is not admissible to prove anticipation, 
 see — Morgan Engineering v. Alliance, 176 Fed. 100; 100 C. C, A. 30. 
 
 It is a significant fact that, although he was the inventor of other devices 
 and was at that time applying for patents thereon, he never filed an applica- 
 tion for a patent on his truck, but, on the other hand, discarded his own 
 invention and used appellee's. — Parkers. Stebler, 177 Fed. 210; 101 C. C. A. 
 380. 
 
 § 78. Experiment. 
 
 It is also quite clear that Woehler published a mere result of a laboratory 
 experiment which was put to no practical use. Crystalline carbide, on the 
 other hand, has been a great commercial success, and has furnished the 
 foundation for important industries. — Union Carbide v. Am. Carbide, 181 
 Fed. 104; 104 C. C. A. 522. 
 
 § 87. Inoperative Device. 
 
 When the question is whether a prior system described and diagrammati- 
 cally illustrated is practically operative, any doubt which arises should be 
 resolved in favor of the working plan and against the paper plan. — Hall v. 
 General, 169 Fed. 290; 94 C. C. A. 580. 
 
 A patent cannot be invalidated by a structure which can only be altered 
 into an anticipation by the use of inventive skill. — Waterbury v. Aston, 
 183 Fed. 120; 105 C. C. A. 410.
 
 II 88-97 ANTICIPATION ^23 
 
 The Crosby invention undoubtedly anticipates ^^^ describes the wl^le 
 
 benefit of the doctrine of equivalents. - Kings County v. U. S. Consoh 
 dated, 182 Fed. 59; 104 C. C. A. 499. 
 Deering v. Winona, 155 U. S. 286. 
 
 It seems unnecessary to spend time in support of the Pjopo^ition that a 
 mPthod of mSga new and useful fabric is not anticipated by testimony 
 
 «of trthe'fn^ention of this fabric a --^J^^J ^^'a^^^^^^^ 
 bv a few changes in adjustment, was capable of producing the jaor c naa 
 
 soU o7e kno4 enoug^to make.them f " Pfptd 99^ llTcT Till. 
 test as this. — General Knit Fabric v. Steber, 194 Fed. 99, 114 U. u. a. i/ <. 
 
 5 88. Knowledge. i ^ t, „ 
 WhPther he knew it in fact or not, he is conclusively presumed to have 
 
 beel entirely fSLr with all the pAor art as disclosed either by patents 
 or prior Kes; and the originality of h- acco7lishm^^^^^^^^^^^^ 
 mined in the light of this presumption. - Torrey y. Hancock, im rea. oi, 
 107 C. C. A. 79. 
 
 Voigtmann v. Weis, 148 Fed. 848. 
 
 6 01 Old Elements or Device — Requiring Adaptation. 
 
 It is not enough to constitute anticipation that the devices relied upon 
 migh by a process of modification, reorganization or eombination w^th 
 Sother, he made to accomplish the ^3^-^ 1^7? fT'280 %7 C a ^ 
 of the patent sued on. - Los Alamitos v. CarroU, 173 ted. AW, Mi ^. ^. ^^ 
 
 ''western Elec. .. Home Tel. 85 Fed. 649; Dederick ^^^^^^^lif^l^^l 
 V. Moline, 9 Fed. 821; Fuller ^.Yentzer, 94 U. S. 288, lopUtt v. lop , 
 U. S. 156; Rob. Pat. § 282; Walk. Pat. § 62. 
 
 The situation is the oft-recurring one, where f ^« J^ .^'e "Ltd^tothfr 
 
 prior art, and where, byje-tmg^^^^^^^^^^^^^^ 
 
 TZ^eTSTAcK.lT^eT^nr^^ aggregations of separate old 
 T^c^tZ^^Z^raie old results but -me from an integral mechanicaAly- 
 true combination. - Lavigne v. McKanna, 194 Fed. 112, 114 C. O. A. 19U. 
 
 § 95. Prior Art — Sufficient. 
 
 That a statement in a patent that it is adapted to 9ther uses than that 
 specificaUy shown in the patent opens the door ^o examination of other arts 
 suggested, see -Safety Car Heating v. Consohdated, 174 Fed. 658, 98 
 C. C. A. 412. 
 
 § 97. Prior Patent — Insufficient. 
 
 That question is more wisely determined by the lesson of experience than 
 by conjecture after the event. The record is full of proo of attempts to bnng 
 forth improved devices to serve the use, and yet in the 10 years between the
 
 924 THE FIXED LAW OF PATENTS §§98-101 
 
 alleged anticipating patent and the patent in suit the eye of the mechanic 
 never saw in the description of the prior patent, and his skill never repro- 
 duced from it, the simple, inexpensive, and effective device of the patent 
 in suit. — Wayne v. Benbow-Brammer, 168 Fed. 271; 93 C. C. A. 573. 
 
 It is enough that a patent which was respected by competitors for 13 years 
 and which covers a system which has been in successful operation during its 
 entire hfe cannot be invalidated by the ambiguous language of a patent which 
 has added nothing of value to the art. In such circumstances, unusually 
 clear and perspicuous language is necessary. Success cannot be anticipated 
 by failure. When the problem of aerial navigation is finally solvefl by the 
 construction of a secure dirigible air-ship, it is safe to predict that the in- 
 ventor's pateftt will not be invalidated by a prior structure, no matter how 
 perfect it may be, which was never known to Ry. — Plall i'. General, 109 
 Fed. 290; 94 C. C. A. 580. 
 
 That a patent alleged to anticipate must not be vague, confused, indeter- 
 minate, must be reduced to practical form, and nuist l)e more than the 
 naked assertion that a certain result can be accomi)lishcd, see — American 
 V. Leeds, 170 Fed. 327; 95 C. C. A. 511. 
 
 Standard v. Peters, 77 Fed. 630; Hanifen v. Godshalk, 84 Fed. 049; Coffin 
 V. Ogden, 18 Wall. 120; Badische v. Kalle, 104 Fed. 802. 
 
 That the fact that a prior patent may show the mechanical arrangement 
 of the patent in suit, but not designed or used for the purpose of the patent, 
 does not necessarily amount to anticipation, see — Gray Tel. v. Baird, 174 
 Fed. 417; 98 C. C. A. 353. 
 
 Brill V. Third Ave. 103 Fed. 289; Canda v. Michigan, 124 Fed. 486. 
 
 That a patent not a part of the prior art at the time of the filing of the 
 appUcation of the patent in suit caimot be availed of as an anticipation, see 
 — Gray Tel. v. Baird, 174 Fed. 417. 
 
 Bates V. Coe, 98 U. S. 31; Anderson v. Collms, 122 Fed. 451; Eck v. Kutz, 
 132 Fed. 758; Walk. Pat. § 70; Rob. Pat. § 331, n. 332, 334; Barnes v. Sprinkler, 
 60 Fed. 605. 
 
 § 98. Prior Patent — Sufficient. 
 
 It is obvious that the invention cUsclosed by Hilker's first patent is as 
 important in determining questions of anticipation and patentable inven- 
 tion as if the invention and patent were those of a third person. — Hilker v. 
 U. S. Mop. 191 Fed. 613; 112 C. C. A. 176. 
 
 James v. Campbell, 104 U. S. 356. 
 
 § 100. Process — Machine. 
 
 But it is said that these patents were machine patents, and, being such, 
 are impertinent as evidence of anticipation. A full and complete answer 
 to this is that, though these patents were each for an apparatus, they fully 
 disclosed the process, and upon the issue of the patents such process was 
 pubUshed. — Model Bottling Mach. v. Anheuser-Busch, 190 Fed. 573; 111 
 C. C. A. 389. 
 
 §101. Process — Process Rule. 
 
 " You cannot apply the doctrine of mechanical equivalents to a chemical 
 patent." (Quoted from 24 Pat. Des. & T. M. Gas. 365 in) — Naylor v. Al- 
 sop, 168 Fed. 911; 94 C. C. A. 315.
 
 §§ 102-117 APPEALS 925 
 
 It is sufficient if in general aspects the two processes are the same and the 
 difference in minor matters is only such as would suggest themselves to a 
 person possessing ordinary skill in the art. — Model Bottling Mach. v. 
 Anlieuser-Busch, 190 Fed. 573; 109 C. C. A. 389. 
 
 § 102. Process — Miscellaneous. 
 
 When it is sought to ascertain the state of the art by means of prior pa- 
 tents, nothing can be used except what is disclosed on the face of those pa- 
 tents. Such patents cannot be reconstructed in the light of the invention m 
 suit, and then used as a part of the prior art. — Naylor v. Alsop, 168 Fed. 
 911; 94C. C. A. 315. 
 
 An expert cannot take a process patent, which has never been applied in- 
 dustrially, and work the process in liis laboratory, and discover therefrom 
 something which is not disclosed on the face of the patent, and then transfer 
 that experience back to the time of the patent and make it a part of the prior 
 art. The trifling experiments of the laboratory shown by defendant's 
 experts in this case, are not entitled to weight as against the teaching of tliis 
 practical experience. — Naylor v. Alsop, 168 Fed. 911; 94 C. C. A. 315. 
 
 § 103. Public Use — Sufficient. 
 
 The testimony as to the use by the defendant long prior to the date of the 
 invention of the patent in suit was correctly admitted by the court below, 
 on the ground that it was not the introduction of evidence as to prior use 
 affecting the vaUdity of the patent, but evidence tencUng to show the right- 
 ful use by defendant of the alleged infringing device, on the ground that it 
 had used it long prior to the application for the patent. — Baltimore & 0. v. 
 McCune, 174 Fed. 991; 98 C. C. A. 561. 
 
 This use was not an abandoned experiment but an attempt to induce the 
 railway company to equip the cars with the Brayton engine. The perfected 
 structure was capable of practical use, although there was much room for 
 improvement. It was not embryonic or inchoate. The combination of the 
 engine, the drive, and the carriage was used in public, and thereafter it 
 required the use of the imitative, and not of the inventive, faculties to claim, 
 without modification, the same combination. The use of the engine in one 
 vehicle pointed directly to its use in another vehicle. — Columbia v. Duerr, 
 184 Fed. 893; 107 C. C. A. 215. 
 
 APPEALS. 
 
 § III. Assignments of Error — Sufficiency. 
 
 There are but two assignments of error. The first alleges error in entering 
 the order adjudging Grove guilty of contempt, and the second alleges error 
 in the refusal of the court to deny the order. These assignments, though 
 not sufficiently specific to conform to the best practice, are sufficient, we 
 think, to justify our inspection of the record to ascertain whether there be 
 in it any apparent error. — In re Grove, 180 Fed. 62; 103 C. C. A. 416. 
 
 § 117. Decrees — Interlocutory — Defined. 
 
 No point is better settled in this court, than that an appeal may be prose- 
 cuted only from a final decree. The cases are numerous where appeals have 
 been dismissed, because the decree of the Circuit Court was not final. . . . 
 The decree in the case under consideration is not final, within the decisions 
 of this court. The injunction prayed for was made perpetual, but there was 
 a reference to a master to ascertain the damages by reason of the infringe-
 
 926 THE FIXED LAW OF PATENTS §§ 118-128 
 
 ment; the bill was not dismissed, nor was there a decree for costs. — Bar- 
 nard V. Gibson, 7 How. 650; 12 L. Ed. 857. 
 Distinguishing Forgay v. Conrad, 6 How. 201. 
 
 As to the individual defendants, the rule is that, where defendants are 
 jointly sued with others, and the bill is dismissed as to some but is retained 
 as to others for a final decree and accounting, the decree is not final and no 
 appeal lies from the part dismissing the bill as to some of the defendants so 
 jointly charged. — Electric Protection v. American, 184 Fed. 916; 107 
 C. C. A. 238. 
 
 Hohorst V. Hamburg American, 148 U. S. 262; Stanley v. Roberts, 59 Fed. 836. 
 
 § ii8. Decrees — Interlocutory — What Determined on Appeal. 
 
 That the question of infringement may be coiLsidered and <k'tiTmined 
 upon an appeal from an interlocutory decree, see — Highland v. Schmertz, 
 178 Fed. 944; 102 C. C. A. 316. 
 
 Smith V. Vulcan, 165 U. S. 518; Mast v. Stover, 177 U. S. 485; distinguishing 
 Ex parte National, 201 U. S. 156. 
 
 As the patent was sustained by the Circuit Court in the Waring Case 
 and as the present record contains only the bill and affidavits used on the 
 motion for the preliminary injunction, it is manifest that the validity of the 
 patent is not now in issue and that the question of infringement is alone 
 presented. — Ferry-Hallock v. Herman, 178 Fed. 550; 101 C. C. A. 230. 
 
 Consolidated v. Diamond, 157 Fed. 677. 
 
 When in such a suit (on different patents) the bill is sustained as to some 
 of the patents but dismissed as to others by an interlocutory decree, no ap- 
 peal lies from that part of the decree which dismisses the bill as to some of 
 the patents until after the final decree. — Electric Protection v. American, 
 184 Fed. 916; 107 C. C. A. 238. 
 
 Ex parte Enameling, 201 U. S. 156. 
 
 § 125. Exceptions — Master's Report. 
 
 As the transcript does not contain any of the evidence before the master, 
 except as the same may be quoted in the master's report, his findings of fact, 
 unless inconsistent with the evidence, as quoted by him, must be taken as 
 conclusive. — Maimen v. Union Special Mach. Co. 187 Fed. 123; 109 C. C. A. 
 41. 
 
 § 128. Finality. 
 
 Such being the construction of the contract by this court, it follpws that 
 the charge of the court below on the retrial was error, for it overlooked the 
 scope of this court's former decision. The construction of this contract was 
 a question which this court was required to pass upon when the case was 
 here before. That question it decided. — Columbia v. Duff, 184 Fed. 876; 
 107 C. C. A. 200. 
 
 Nat. Surety v. Kansas, 182 Fed. 54; Roberts v. Cooper, 20 How. 467. 
 
 _ That the decision of the Court of Appeals, D. C. is not final upon the ques- 
 tion of novelty, see — Model Botthng Mach. v. Anheuser-Busch, 190 Fed. 
 573; inc. C. A. 389. 
 
 Butterworth v. Hoe, 112 U. S. 50; U. S. v. Duell, 172 U. S. 576.
 
 §§129-131 APPEALS 927 
 
 § 129. Findings. 
 
 These concurring findings (of the master and the circuit court) are pre- 
 sumptively correct and must be permitted to stand, unless some obvious 
 error has intervened in the appUcation of the law, or some serious and im- 
 portant mistake has been made in the consideration of the evidence. — 
 Brown v. Lanyon, 179 Fed. 309; 102 C. C. A. 497. 
 
 Moffat V. Blake, 145 Fed. 40; Houck v. Christy, 152 Fed. 612. 
 
 The testimony of the witnesses upon this issue is conflicting, and under a 
 familiar rule the finding of the chancellor must prevail unless the defendant 
 has succeeded in showing from the record that he has made a mistake in his 
 deduction of this fact from the evidence. — Century Electric v. Westing- 
 house, 191 Fed. 3.50; 112 C. C. A. 8. 
 
 Kimberly v. Arms, 129 U. S. 512; Tilghman v. Proctor, 125 U. S. 136; Furrer 
 V. Ferris, 145 U. S. 132; Coder v. Arts, 152 Fed. 943; State of Iowa v. Carr, 191 
 Fed. 257; Bramraer v. Schroeder, 106 Fed. 918; Anderson v. Collins, 122 Fed. 
 451. 
 
 The question of infringement being one of fact, we might be justified in 
 following, in the absence of manifest error, the finding of the court below. 
 — Krupp V. Mid vale, 191 Fed. 588; 112 C. C. A. 194. 
 
 Continental v. Eastern, 210 U. S. 405. 
 
 When the chancellor has considered conflicting evidence, and made his 
 finding and decree thereon, they must be taken to be presumptively right; 
 and unless an obvious error has intervened in the application of the law, or 
 some serious mistake has been made in the construction of the evidence, 
 they must be permitted to stand. — DeLaval v. Iowa, 194 Fed. 423; 114 
 C. C. A. 385. 
 
 Tilghman v. Proctor, 125 U. S. 136; Kimberly v. Arms, 129 U. S. 512; Evans 
 V. State Bank, 141 U. S. 107; Furrer v. Ferris, 145 U. S. 132; Warren v. Burt, 
 58 Fed. 101; Paxson v. Brown, 61 Fed. 874; Stuart v. Hayden, 72 Fed. 402; 
 Coder v. Arts, 152 Fed. 943. 
 
 When questions of fact are disposed of by the trier of the facts in an equity 
 suit, his decision may be reviewed on appeal. When disposed of by the 
 verdict of a jury, properly instructed, its decision on those points are not 
 reviewable by the appellate court. — Transit Development Co. v. Cheatham 
 194 Fed. 963; 114 C. C. A. 599. 
 
 Heide v. Panoulias, 188 Fed. 915. 
 
 § 131. Law Actions — What Considered On. 
 
 That although the defendant failed to except to the refusal of the court 
 to grant a motion for dismissal non obstante verdicto, the question will be 
 considered on appeal, see — Baltimore & 0. v. McCune, 174 Fed. 991; 98 
 C. C. A. 561. 
 
 Defendant's counsel now asks that he be allowed to reargue on this point, 
 (a defense not raised on the trial) and to contend that the " court may take 
 judicial notice that the patent is invalid for the reason stated." This should 
 not be done. Plaintiff has had no opportunity to litigate that point, nor to 
 put in evidence which might have avoided it. — Heide v. Panoulias, 188 
 Fed. 914; 110 C. C. A. 6.56. 
 
 Ordinarily the presence or absence of " invention " and " infringement " 
 are questions of fact. When disposed of by the trier of the factj in an equity
 
 92g THE FIXED LAW OF PATENTS §§133-137 
 
 suit his decision may be reviewed on appeal. When disposed of by the ver- 
 dict' of a jury, properly instructed, its decisions on those points are not re- 
 viewable on appeal. — Heide v. Panoulias, 188 Fed. 914; 110 C. C. A. 656. 
 
 Singer v Cramer, 192 U. S. 275; Heald v. Rice, 104 U. S. 737; Bischoff v. 
 Wethered, 76 U. S. 812; Keyea v. Grant, 118 U. S. 25; Royer v. Schultz, 135 
 U. S. 319.' 
 
 § 133. Orders. 
 
 This appeal must be dismissed, because an order overruling a demurrer, 
 and giving the defendant leave to answer, is not a final decision. — Adriance 
 V. National, 101 Fed. 1005; 41 C. C. A. 675. 
 
 That an order dismissing a bill as to one party is not appealable until after 
 final decree, see — Gen. Electric v. Allis- Chalmers, 194 Fed. 413; 114 C. C. A. 
 375. 
 
 Hohorst V. Hamburg, 148 U. S. 262; Ex parte National, 201 U. S. 158. 
 
 That where an injunction order has been vacated and a new order entered 
 for the evident purpose of enabling the parties to appeal piecemeal as to 
 matters involved in the accounting, the order will be reversed with direction 
 to reinstate the original order of injunction on application, see — Metzger 
 V. Berlin, 194 Fed. 426; 114 C. C. A. 388. 
 
 § 136. Record — Stipulated. 
 
 While we have in the present case no bill of exceptions, we have a record 
 made up by agreement of the parties. The agreement of counsel was not 
 merely that the papers mentioned in their stipulation should be printed in 
 the record, but that it should " constitute the record." This case differs in 
 this respect from Continental v. Murray, 162 Fed. 873. — In re Grove, 180 
 Fed. 62; 103 C. C. A. 416. 
 
 The file wrappers of the patent in suit and of the Aston application were not 
 printed in the record, but by stipulation between the parties the printing 
 thereof was waived and the same were returned as exhibits. This was done 
 without the consent of the court, and we are under no obligation to receive 
 them. — Waterbury v. Aston, 183 Fed. 120; 105 C. C. A. 410. 
 
 § 137. Record — Miscellaneous Rules. 
 
 A writ of error addresses itself to any defect apparent on the face of the 
 record, provided the defect be pointed out in the assignment of errors, but 
 the evidence taken in the case is no part of the record, unless, b\- some method 
 known to the law, it is imported into the record. — In re Grove, 180 Fed. 62; 
 103 C. C. A. 416. 
 
 Suydam v. Williamson, 20 How. 427; Storm v. U. S., 94 U. S. 76; Insurance 
 Co. V. Piaggio, 16 Wall. 378. 
 
 That the records in other appeals taken by the defendant contain the neces- 
 sary facts, and that these may be Used in support of the appeal under con- 
 sideration is without sanction, see —Frank v. Bernard, 185 Fed. 810; 108 
 C. C. A. 42. 
 
 The motion is, in efTect, for a direction to the court of claims to certify the 
 evidence to this court, and not its conclusions from the evidence. This is 
 clearly in contravention of the rule of this court which requires the record 
 on appeal from the court of claims to contain a finding by the court " of the 
 facts in the case established by the evidence in the nature of a special verdict,
 
 §§141-144 APPEALS 929 
 
 but not the evidence establishing it." — United States v. Societe Anonyme 
 &c. 224 U. S. 3U9; 56 L. Ed. 224; 32 S. Ct. 479. 
 
 § 141. Subject-Matter. 
 
 As the ground of complaint insisted on in this court was not included in 
 the grounds of complaint mentioned in the bill of complaint, and does not 
 seem to have been presented to or argued before the Circuit Court, it should 
 not be considered here. — New Jersey Patent v. Schaefer, 178 Fed. 276; 101 
 C. C. A. 540. 
 
 § 143. Supreme Court. 
 
 In Frasch v. Moore, 211 U. S. 1, it was held that decisions in the court of 
 appeals of the District of Columbia in appeals from the Commissioner of 
 Patents under § 9 of the act Feb. 9, 1893, were interlocutory, and not 
 final, and not reviewable by this court under § 8 of that act. Under § 4914 
 no opinion or decision of the court of appeals on appeal from the Commis- 
 sioner precludes " any person interested from the right to contest the validity 
 of such patent in any court wherein the same may be called in question; " 
 and by § 4915 a remedy by bill in equity is given where a patent is refused; 
 and we regard these provisions as applicable in trademark cases under § 9 
 of the act Feb. 20, 1905. —Atkins v. Moore, 212 U. S. 285; 53 L. Ed. 514; 
 29 S. Ct. 390. 
 
 § 144. Miscellaneous Rules. 
 
 It has been held by the supreme court that the omission to give a bond for 
 costs at the time the appeal is taken does not necessarily avoid the appeal, 
 and that the appellant may be allowed to file the bond afterwards, within a 
 reasonable time. — Schenck v. Diamond, 73 Fed. 22; 19 C. C. A. 352. 
 
 While in some jurisdictions it has been held that a mere promise or agree- 
 ment not to prosecute an appeal will not divest an appellate court of its 
 jurisdiction, the contrary has been held in other jurisdictions; and it seems 
 to be universally held that, where such an agreement is made upon a valid 
 and legal consideration, either before or after trial, it will be enforced in an 
 appellate court, and the appeal, if taken, will be dismissed. — U. S. Consoli- 
 dated V. Chaddock, 173 Fed. 577; 97 C. C. A. 527. 
 
 Sanders v. White, 22 Ga. 103; Fahs v. Darling, 82 111. 142; Runnion 
 V. Ramsay, 93 N. C. 410; Townsend v. Masterson, 15 N. Y. 587; Cole v Thayer 
 25 Mich. 212; Oliver v. Blair, 5 Pac. 917; Saling v. Ger. Sav. Bk. 8 N. Y. Supp! 
 469; Commonwealth v. Johnson, 6 Pa. 136; Wheeler v. Floral, 10 Nev. 200; 
 Hill V. Hermans, 59 N. Y. 396; Mackey v. Daniel, 59 Md. 484; Emerick v Arm- 
 strong, 1 Ohio. 513; Johnson v. Halley, 27 S. W. 750. 
 
 As to this court, when an order is " affirmed on the opinion of the court 
 below,"_ it approves the reasoning, adopts the findings and concurs in the 
 conclusions of the court below. When, itself writing nothing, making no 
 record of its_ findings as a court of appeals, it merely announces, " Order 
 affirmed," it is to be understood that for some reason it prefers not to adopt 
 the opinion of the court below, either that it has reached the conclusion by 
 a totally different process of reasoning, or that, while in the main approving 
 the opinion, there is something in it which the appellate court does not wish 
 to approve. — Victor Talking Mach. v. Hoschke, 188 Fed. 326; 110 C. C A 
 304.
 
 930 THE FIXED LAW OF PATENTS § 1 SI- 
 
 ASSIGNMENT. 
 
 § 151. Action to Compel. 
 
 Complainant, the owner of basic patents, entered into verbal agreements 
 with defendants to promote a nation-wide industry and entered into a written 
 agreement giving Hcenses for a specific territory. Much money and effort 
 were put into the enterprise by both parties, but the basic patents proved 
 ineffective. Defendants invented improvements, but refused to assign to 
 complainant. Action brought to compel assignment of improvements pat- 
 ented and unpatented. Held: Before any case can be said to be made out, 
 requiring appellants to assign their inventions, it must be shown that con- 
 consciously, and knowing the effect of what they were doing, they expressly 
 agreed to make the assignment. Persons are not to be deprived of their 
 inventions merely because to retain them, under the circumstances, may 
 appear unconscionable. The circumstances must include a contemplated 
 assignment as their conscious act and deed. But such conscious act and deed 
 is sufficiently shown, it seems to us, when it is made to appear that con- 
 sciously, and knowing the effect of what they were doing, they became jiarties 
 to a lawful undertaking that, to carry out the undertaking as an entirety, 
 expressly involved, on their part, such an assignment. In other words, title 
 will not be taken, by the courts, from the inventor, and given to another, 
 upon a state of facts that does not involve proof that the inventor, consciously 
 and knowing the effect of what he was doing, contemplated that the title 
 should go to the other; the rule being to protect the inventor against every- 
 thing except his conscious agreement. But it was not intended that he 
 should thereby be circumscribed in what he consciously wished to do with 
 his future inventions. The rule was to save him from advantage being 
 taken of him by others. * * * There existed, then, between these parties, 
 as we view it, a relationship that made them, appellee as well as appellants, 
 agents to a common enterprise — agents by agreement — the principal being 
 the common enterprise itself; a relationship that, faithfully cai*ricd out by 
 appellants, required them to put in the name of the appellee, but for the 
 common enterprise, whatever they might invent in that line; and that, 
 faithfully carried out by appellee, required that he extend (the appellants 
 fulfilling their obligations) the scope of the common enterprise to include the 
 whole of the United States — the specific option contracts being the mode 
 employed. In what respect has this relationship failed: That appellants 
 stand in a trustee relationship with respect to these inventions, to this com- 
 mon enterprise, we think is clear. That appellee stands, in relation to this 
 common enterprise, as a trustee also, we think is clear. This clothes the 
 court with power to enter a decree of some kind. It is the form of decree 
 that remains to be determined. * * * The fairest and most equitable thing, 
 as it seems to us, is to deal with this common enterprise as we would with a 
 dissolved partnership, giving to each of the separating parties, as nearly as 
 possible, his interest in the assets that have grown out of the common enter- 
 prise. — Nat. Wire Bound Box v. Healy, 189 Fed. 49; 110 C. C. A. 613. 
 
 Marshall had, however, in violation of his contract, previously assigned 
 patent 725,349 to the New Marshall Engine Co., which took with notice of 
 the prior transfer. This company, therefore, held the legal title as trustee 
 for the complainant. Under the circumstances the state court had juris- 
 diction to pass on the question of ownership, and to enter a decree requiring 
 * * * assignment in due form to the complainant. This jurisdiction was 
 based on general principles of equity jurisprudence, and did not present a 
 case arising under the patent law. It is, however, urged that the state court 
 was ousted of jurisdiction to enter a decree for specific performance, because 
 the bill went farther, and prayed that the defendants * * * be enjoined.
 
 §§ 157-168 ASSIGNMENT 931 
 
 * * * The injunction was asked for only as an incident to a finding that the 
 title was vested in the complainant. — New Marshall Engine Co. v. Mar- 
 shaU, 223 U. S. 473; 56 L. Ed. 513; 32 S. Ct. 238. 
 
 Brown v. Shannon, 20 How. 56; \Yilson v. Sanford, 10 How. 99. 
 
 That where an inventor assigns the invention of one application to one 
 party and thereafter assigns the invention of another application to another 
 partv which second apphcation matures into a patent containing claims c<)V- 
 erin^ what was really the property of the purchaser of the first apphcation, 
 so long as the second application contains claims distinct from the first, an 
 action to compel assignment by the owner of the second patent will not lie 
 see — Gould Storage Battery v. Electric Storage Battery, 192 led. 26; IIZ 
 C. C. A. 416. 
 
 § 157. Debtor and Creditor. 
 
 That a sheriff selling under execution, a trustee in bankruptcy or a re- 
 ceiver under a creditor's bill can convey no title beyond that held by the 
 debtor; and while he may be able to sell the physical object of the patent, 
 such sale may convey no right to use, see — Henry v. Uick, 224 U. b. i; 
 56L. Ed. 645; 32 S. Ct. 364. . 
 
 Sawin V. Guild, 1 Gall. 485; Wilder v. Kent, 15 Fed, 217; Porter v. National. 
 17 Fed. 536. 
 
 § 158. Evidence. 
 
 That where the search for a lost assignment has been thorough, it is not 
 necessary that the complainant search the country over on mere conjecture 
 in order to make a certified copy admissible, see -Wayne v. Benbow- 
 Brammer, 168 Fed. 271; 93 C. C. A. 573. 
 
 § 160. Future Inventions — Legality. 
 
 That wbe-e parties embark upon a common enterprise under agreements 
 which are general and comprehensive, a condition may exist which will 
 create an equitable trust wherein both patented mventions and future in- 
 ventions will be held trust property for the benefit of all the parties after 
 the manner of concluding a copartnership, see - Nat. Wire Bound Box v. 
 Healy, 189 Fed. 49; 110 C. C. A. 613. 
 
 Note- This is believed to be a novel question and a leading case upon the 
 question of future inventions and the powers of a court of equity m dealing 
 ^^^th the titles to patents. See excerpt from this decision under § lol, and 
 compare with cases referred to by the court: Pressed Steel .Hanson 137 
 Fed 403; American v. Wilson, 198 Mass. 182; Dalzell v. Dueber 149 U. S 
 315 Deane .. Hodge, 35 Minn. 146; Belcher .. Whittemore, 134 Mass. 330 
 Burr V. DeLaVergne, 102 N. Y. 415; Hapgood v. Hewitt, 119 U. S. 226, 
 Solomons v. U. S., 137 U. S. 342. 
 
 § 164. Interests Assignable. 
 
 The defendant's patent cannot be split up; it ^^t. ^^..^^J^f^f ^^^^^^ 
 entirety (i. e., the claims cannot be split up). - Gould Storage Battery v. 
 Electric Storage Battery, 192 Fed. 28; 112 C. C. A. 416. 
 
 § 168. Parol. 
 
 The general understanding and agreement between the parties was one 
 thing it fixed their relations to each other. The particular written agree- 
 ments was another and different thing; they were only the modus Vivendi
 
 932 THE FIXED LAW OF PATENTS §§174-189 
 
 of carrying out the general understanding as business conditions and oppor- 
 tunity developed. There is no ground, therefore, for applying the rule of 
 law that verbal conversations are merged in a subsequent written agreement; 
 for these subsequent written agreements were not accepted or acted upon 
 by the parties as a written embodiment of the verbal agreement. — Nat. 
 Wire Bound Box v. Healy, 189 Fed. 49; 110 C. C. A. C13. 
 
 § 174. Specific Performance. 
 
 That where the assignment was made subject to a royalty and a provision 
 that the assignee should use reasonable dihgence in putting the apparatus 
 to practical use, and the assignee failed to use any reasonable diligence 
 whatever, the assignor is entitled to an accounting and a reassignment, see 
 — Neenan v. Otis Elevator, 194 Fed. 414; 114 C. C. A. 376. 
 
 / § 175- Territorial. 
 
 / For a history of the law relating to the right to use, as distinguished 
 
 / from the right to make, including territorial rights, see — Daimler v. Conk- 
 
 j lin, 170 Fed. 70; 95 C. C. A. 346. 
 
 '^CLAIMS. 
 
 § 186. Ambiguity. 
 
 A claim for a combination which embraces an element only in case it 
 is made capable of being employed in the combination and without dis- 
 closing means of adapting it, discloses nothing definite. — Columbia v. 
 Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 § 188. Construction — Beneficial Uses. 
 
 A patentee who has sufficiently described and distinctly claimed his 
 invention is entitled to every use to which his device can be applied, whether 
 he perceived or was aware of all of such uses at the time he claimed and 
 secured his patent or not. — Acme v. Meredith, 183 Fed. 124; 105 C. C. A. 
 414. 
 
 Stow V. Chicago, 100 U. S. 547; Roberts v. Ryer, 91 U. S. 150; Miller v. 
 Eagle, 151 U. S. 186; National v. Interchangeable, 106 Fed. 693. 
 
 § 189. Construction — Broad and Narrow. 
 
 Where a patent contains a general claim for a combination of certain 
 • mechanical elements and a specific claim for a combination of a specified 
 form, combination, or construction of one of those elements with other 
 elements of the general claim, the legal presumption is that the two claims 
 secure different combinations, and the general claim is not limited to the 
 specific form, composition, or construction claimed in the specific claim, 
 but protects the element and its mechanical equivalents, though in form, 
 composition, or construction differing from that of the specific claim. — 
 Owens V. Twin City, 168 Fed. 259; 93 C. C. A. 561. 
 
 Progress in the inventive arts cannot be impeded by giving to a patent 
 for an intricate mechanical combination a construction that will deny to 
 anyone his right to make and use a combination essentially different from 
 the patented combination, even though features of the new combination 
 may have been suggested by the patented combination. — Ohl v. Falstrom, 
 175 Fed. 67; 99 C. C. A. 89. 
 
 There is nothing in the prior art that compels the restriction of the broad 
 element of claim 1. Under such conditions, following our previous decision,
 
 §§ 191-194 CLAIMS 933 
 
 we give effect to all parts of the patent by enforcing a construction that 
 makes both generic and specific claims effective. — Freeman Co. v. General 
 Electric, 191 Fed. 168; 111 C. C. A. 646. 
 Following Ryder v. Schlichter, 126 Fed. 487. 
 
 §191. Construction — Dissecting. 
 
 It would indeed be arbitrary, as said by claimant, to read into the claim 
 the specific metal of which those shells are composed " for no other purpose 
 than to render it (the claim) worthless." — United States v. Societe Anonyme 
 &c., 224 U. S. 309; 56 L. Ed. 224; 32 S. Ct. 479. 
 
 § 193. Construction — Duplication. 
 
 It is true ordinarily that the employment of different words in separate 
 claims indicates a purpose to secure distinct inventions; indeed, the rule 
 is that " each claim of a patent covers a complete invention, and is, in sub- 
 stance, an independent patent." — Twentieth Century v. Taplin, 181 Fed. 
 96; 104 C. C. A. 156. 
 
 Celluloid >. Zylonite, 27 Fed. 291; United Nickel v. California, 25 Fed. 475; 
 Leeds v. Victor, 213 U. S. 301. 
 
 § 194. Construction — Equivalents. 
 
 It is, of course, clear that an inventor is not limited to the particular struc- 
 ture illustrated in his patent as the best form known to him provided his 
 claim is broad enough to cover other or equivalent forms. If the claim in 
 the present case could have been sustained as covering a combination of 
 any hydrocarbon engine of the compression type with the other elements, 
 the description in the specification of the modified Brayton engine would 
 have been considered as a statement of the inventor's idea of the best form; 
 but he would not have been confined to it, and the Otto improved engine 
 would unquestionably have infringed. But we are unable to sustain the 
 claim as so construed and could only hold it valid as being limited to a 
 combination in which a Brajiion modified or reorganized engine should be 
 a member. The patent as so construed necessarily permits only a very 
 limited range of equivalent forms. Being confined to an engine element of 
 a particular class or type, an engine of another class seems almost barred 
 by the interpretation itself. — Columbia v. Duerr, 184 Fed. 893; 107 C. C. A. 
 215. 
 
 Note: This passage states the course of reasoning in the Selden Auto- 
 mobile Case perhaps as well as any single passage. In a nutshell, the Cir- 
 cuit Court held that Selden invented a motor car driven by a gas-engine of 
 the compression type. In a nutshell, the Circuit Court of Appeals held that 
 Selden invented a motor car driven by a particular species of gas-engine. 
 If, as a matter of fact, the prior art showed that a motor car had been driven 
 by the explosive force of a hydrocarbon, the Circuit Court was wrong and 
 the Circuit Court of Appeals was wrong in holding the patent valid but 
 limited. If the prior art did not so show, then the Circuit Court was right 
 and the Circuit Court of Appeals was wrong. Selden's patent is for a generic 
 invention, or nothing. 
 
 The evidence is not before me; but it seems to me self-evident that, if 
 all that Selden did was merely to employ a Brayton engine in a. combination 
 that was old (as the appellate court holds), it is too plain for argument that 
 he invented nothing — or at least nothing more than certain improvements 
 upon the Brayton engine, which, possibly, might be patentable as an im- 
 provement in gas-engines. Suppose that, after a direct current motor had 
 been employed to propel a street-car, when the alternating current motor
 
 934 THE FIXED LAW OF PATENTS §195 
 
 was invented, someone had patented and claimed the combination of a car, 
 trolley connections, and an alternating current motor. Clearly such would 
 be mere substitution. But this is precisely what the logic of the appellate 
 court comes to. They say a vehicle had been driven by a gas-engine before 
 Selden's time, and, therefore, his claim must be limited to a particular 
 species of gas-engine. 
 
 Again, the Selden patent as a genus may be tolerated; it is doubtfully 
 operable; it is commercially a monstrosity. As a genus — as the thing 
 which pointed the way to a new field of industry — it may be viewed with 
 patience. As a species — showing how to make a specific application of a 
 known mechanical means — it is an utter absurdity. Either Selden was at 
 the foundation of the automobile art and is entitled to the honors of a 
 pioneer, regardless of his procrastination and failure to make any substan- 
 tial addition to the art in any specific sense; or else he and his assigns have 
 foisted upon the public, after years of cold-storage in the Patent Office 
 and after years of utter lack of progress, a species, born out of time and out 
 of joint. The Circuit Court may have been wrong on the facts; it may be 
 that a gas-engine driven- vehicle was old in the art; such would seem to be 
 the fact. The Circuit Court of Appeals may have been right on these facts; 
 but its facts and its logic, as it seems to me, are sorely mismated. 
 
 The liberal construction allowed to pioneer inventions cannot be invoked 
 in behalf of a patentee whose claim was limited to save it from anticipation 
 by previous patents so as to broaden the claim and practically make it 
 cover what was rejected in the Patent Office. — Cotto-Waxo v. Perolin, 
 185 Fed. 267; 107 C. C. A. 373. 
 
 Royer v. Coupe, 146 U. S. 524; Phoenix v. Spiegel, 133 U. S. 360. 
 
 § 195. Construction — Expanding. 
 
 It would be grossly unfair to compel the builder of a practical working 
 machine to pay tribute to one who added nothing of substantial value to 
 the art, simply because the language of his claims is broad enough to include 
 the successful structure. Claims should cover what the patentee has in- 
 vented and not what he imagines he has invented. — Lovell v. Seybold, 169 
 Fed. 288; 94 C. C. A. 578. 
 
 To give the claim a broader application would be to depart from its own 
 language as well as to wholly ignore the extracts from the specification which 
 we have quoted. We cannot accede to the proposition that the patentee 
 can, under any doctrine of equivalents, change or add to the circuit con- 
 nections of the patent so as to make the apparatus work in a different way 
 or under different conditions. — Herzog v. N. Y. Telephone, 176 Fed. 349; 
 99 C. C. A. 623. 
 
 We cannot, by construction, enlarge a claim of a patent beyond the fair 
 meaning of its language. If a patentee discloses in his specification an in- 
 vention not sufficiently covered by the claims of his patent, he may, if the 
 limited character of the claim is the result of inadvertence, accident, or 
 mistake, surrender his patent and apply for a reissue, with a claim or claims 
 sufficiently definite and exact to cover the whole of his invention. If he fails 
 to do that, the part of his invention outside the claims belongs to the public. 
 — Nu Bone v. Spirella, 183 Fed. 984; 106 C. C. A. 324. 
 
 The specification may not be read into a claim for the purpose of chan- 
 gmg it, or to escape anticipation, or establish infringement. — Mueller v. 
 Glauber, 184 Fed. 609; 106 C. C. A. 613. 
 
 ^^y'^.^^i?^?^^^ ""■ Boyden, 170 U. S 537; Gen. Sub-Construction v. Netcher, 
 167 Fed. 549.
 
 §§ 196-202 CLAIMS 935 
 
 § 196. Construction — Functional. 
 
 Whether a claim that is functional may be patentable where the specifica- 
 tion discloses the means, see — Arnold v. Tyden, 193 Fed, 410; 113 C. C. A. 
 344. 
 
 Paper Bag Case, 210 U. S. 405. 
 
 § 199. Construction — Limitation — Broadening by Amendment. 
 
 We have, then, a situation where a patent application made in the early 
 stages of the electrical art to electric car service was promptly and properly 
 rejected, and where the rightfulness of that rejection remained unchal- 
 lenged some seven years, and, indeed, appears now unchallengeable if the 
 disclosures then made constitute the sole ground for the patent. During 
 this interim there was a rapid and general advance in the railway art, and 
 when therefore a patentee, seven years after his original application and 
 enlightened by such intervening years of progress, seeks not to prosecute 
 his original application, but to amend the same, and on the basis of such 
 amendment to make claims of a different character from those originallj'^ 
 made, it becomes the duty of a court to zealously and jealously scrutinize 
 such belated application, for to such a situation is applicable the principle 
 laid down in Railway v. Savles, 97 U. S. 563, and Corbin v. Eagle, 150 U. S. 
 43. — HestonviUe v. McDuffee, 185 Fed. 798; 109 C. C. A. 606. 
 
 § 201. Construction — Limitation — By Applicant. 
 
 Where an applicant for a patent materially modifies a claim in accord- 
 ance with a requirement of the Patent Office, it will not be construed as it 
 would have been if it had not been thus modified. And this is so though 
 such modification was made under protest, accompanied by notice that ap- 
 plicant would insist that the modification would be construed away after 
 the grant of the patent; and such is the law even though the decision of the 
 Patent Office was erroneous. — Johnson v. Western, 178 Fed. 819; 102 
 C. C. A. 267. 
 
 Phoenix v. Spiegel, 133 U. S. 360; Thomas v. Rocker, 77 Fed. 431; Macbeth 
 V. Gillinder, 54 Fed. 170; Lapham-Dodge v. Severin, 40 Fed. 763; Keystone v. 
 Phoenix, 95 U. S. 274; Computing v. Automatic, 204 U. S. 609; Brill v. St. Louis, 
 90 Fed. 666; Westinghouse v. Boyden, 170 U. S. 537. 
 
 That a statement made by the patentee subsequent to the granting of 
 the patent as to the scope of the claims is not evidence of limitation, see — 
 Bossert v. Pratt, 179 Fed. 385; 103 C. C. A. 45. 
 
 § 202. Construction — Limitation — Elements of Claim. 
 
 In patents for a combination (combinations?), if the patentee specifies 
 any element as entering into the combination, either directly by the lan- 
 guage of the claim or by such a reference to the descriptive part of the 
 specification as carries such element into the claim, he makes such element 
 material to the combination and the court cannot declare it to be imma- 
 terial. — Electric Protection v. American, 184 Fed. 916; 107 C. C. A. 238. 
 
 Fay V. Cordesman, 109 U. S. 408. 
 
 Note: This case, in my opinion, illustrates the misapprehension and mis- 
 application of this rule. Judge Sanborn, in his dissenting opinion, has 
 noted this fact.
 
 936 THE FIXED LAW OF PATENTS §§203-205 
 
 § 203. Construction — Limitation — Failure to Claim. 
 
 A great idea may be embodied in a patent, and }x>t the patentee take 
 nothing of value by it. That which he takes is that which lie describes and 
 claims. His discovery may be of importance, but he may limit it by his 
 claim, and his claim may proceed in the wrong direction. — Columbia v. 
 Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 That although an invention may disclose novelty in the process of pro- 
 ducing the manufacture, the claim being for the article cannot be sustained 
 on the ground of the novelty of the proqess, sec — Ashley v. Tatum, 189 
 Fed. 357; 111 C. C. A. 279. 
 
 A patentee who limits his claims to the precise construction shown and 
 described, even though not obliged to do so, cannot hold as an infringer one 
 who uses a different construction. — Morse Chain v. Link Belt, 189 Fed. 
 584; 110 C. C. A. 564. 
 
 § 204. Construction — Limitation — General Rules. 
 
 It is of the essence of the rule whereby the inventor is estopped from 
 claiming to the full of his invention as disclosed by his specifications and 
 claims in consequence of his concessions to meet the requirements of the 
 Patent Office and so obtain his patent, that the requirements which were 
 conceded by him should concern the matter upon which the estoppel is 
 raised. The estoppel must rest upon a definite basis. If the examiner dis- 
 closes his objection, we can see what it is, and know the consequence of a 
 concession to it. If he does not do this, and contents himself with a refer- 
 ence, we look to the matter referred to, to ascertain his meaning. Either 
 in the one way or the other the examiner must point out what his objection 
 means. If his objection is not put upon the ground whereon the patentee 
 is alleged to be estopped, it is obvious that the concession made to meet it 
 would be a concession only of an entirely irrelevant matter. — Vrooman v. 
 PenhoUow, 179 Fed. 296; 102 C. C. A. 484. 
 
 Hillborn v. Hale, 69 Fed. 958; Owens v. Twin City, 168 Fed. 259. 
 
 It does not necessarily follow from the fact that the claim describes a 
 specific form of construction, that the inventor shall be limited to that form. 
 All depends upon his expressed intention, and the scope of the actual in- 
 vention when it was made. If his improvement is but a narrow one, or if 
 he has used language such as clearly to show his intention to limit his inven- 
 tion to a particular form described, then he is held to the language of his 
 claim, and limited to the specific form. But if his is a pioneer invention, 
 or one of such merit as to be entitled to a liberal construction, the claims will 
 not thus be limited, even if couched in specific language, unless the inventor 
 has also shown his positive intention to relinquish to the public all other 
 forms in which his invention might be embodied. — Kings County v. U. S. 
 Consolidated, 182 Fed. 59; 104 C. C. A. 499. 
 
 Winans v. Denmead, 15 How. 330; Western v. La Rue, 139 U. S. 601; Hoyt 
 V. Home, 145 U. S. 302; Sessions v. Romadka, 145 U. S. 29; McCormick v. 
 Aultman, 69 Fed. 371. 
 
 § 205. Construction — Limitation — Improvement. 
 
 We cannot assent that the patent is a " basic or pioneer patent and en- 
 titled to be construed accordingly," but rather a patent for a combination 
 of elements already in use; and, this being true, the patent is not entitled 
 to a broad and liberal construction, but, on the contrary, the range of in-
 
 §§206-207 CLAIMS ^^'^ 
 
 fringing equivalents must be restricted to those which perform the same 
 funftions in the same way. -St. Louis v. Sanitary. 178 Fed. 9.3, 
 
 %%ttM Co., 114 U. S. 63; Shepard .. Carrigan, 116 U. S. 593; Carter 
 t;. Hanes, 70 Fed. 859. 
 
 a: i rr.,^ " rnncrp of infrindng equivalents," stated by the court, is a 
 
 peS sL't'emeT wLefrrme'to refine Equivalents to " infringing 
 
 and non-infringing, we are getting to a rather fine point. 
 
 That where the prior art shows that the cto ^^ ^^ll^y" ^ F^rst '; 
 there is no room for construction, see — Jackson v. D Arcey, i5i re 
 104 C. C. A. 170. , <. .„. T) gj, 
 
 Keystone .. Phoenix, 95 U. S. 274; ^urns.. Meyer 1^^^^^^^^ S Jll9 
 Sterling, 107 U. S. 636; Wells v. Curtis, 66 Fed. 318, i^umngcou 
 
 Fed. 937. 
 
 § 2o6. Construction - Limitation - Narrow Improvement. 
 
 Ivere we dealing wiU. a ^-d |^^^^^^^^^^ 
 be considered ^f ^g;bj^f' ^^,^,^] ^^eture^des^ and are not entitled to 
 t-^^e^^^e^eX'en^^^^^^ Westinghouse, 178 Fed. 711; 
 
 103 C. C. A. 479. 
 
 I .07. Construction - Limitation - Patent Office Action Limit- 
 ^^^' , r^„^+ rv.Ql'P^ the form of construction a condition to 
 
 St. Louis, 90 Fed. 666; Am. Stove . Cleveknd, lo8 ^ed y^« ^J^^^ ^ ^^^^.^^ 
 
 That where an applicant has acquiesced in the nar^^^^^^^^ 
 avoid anticipation, he cannot afterwards broaden it by constr ^^^ ^ ^ ^ 
 infringement, see — Underwood v. Typewriter, iou reu. 
 92. 
 
 It is hard to perceive any difference in —^^ 
 a limitation made in the Patent Office thro^f^^J'X^^ through denial of 
 and acceptance of a hmitation in|P«^ed upon that ca^^n 
 other claims of the same application Of course i ^^^^^^ ^^^^ 
 
 be more difficult defimte y to work o^^^^^^,^ ,^f/yPegtoppel will not lie 
 than in the former; and it must ^e conceded that es^^^^^^^^ ^^^^^^^^^ 
 
 in either of the cases suggested, unless the f ^^^^^^^^'^^^^ taken in the 
 to the inventor through his acquiescence m adverse act^o ^ ^ ^ 
 
 Patent Office. — Twentieth Century v. Taplm, 18i i^ea. yu, 
 
 ^^^' T. T. 11 ^ I7q Fed 296" Bundy .;. Detroit, 94 Fed. 524; U.S. 
 
 ReISrT^:y riat?83 U'. illv^A Fed. 9^65. 
 
 If claim 1 had itself been changed so as dehnif ^ ^^^ t^^the 
 
 slanging bail, acquiescence therem on^he p^^^^^ ^^.^ ^^ ^^p. 
 
 festly have estopped him from ^^"^g/J^f/^'ate no matter whether any- 
 port or operate the dumping portion of his grate, no
 
 938 THE FIXED LAW OF PATENTS §207 
 
 thing in the prior art requires such a limitation or not. — Twentieth Century 
 V. Taplin, 181 Fed. 96; 104 C. C. A. 156. 
 
 Campbell v. Am. Shipbuildmg, 179 Fed. 498; Brown v. Stilwell, 57 Fed. 731; 
 Corbin v. Eagle, 150 U. S. 38; Royer v. Coupe, 146 U. S. 524; Hubbell v. U. S. 
 
 179 U. S. 77. 
 
 A claim narrowed to meet rulings of the Patent Office does not resume 
 its expansiveness when the patent is secured. — Am. Disappearing Bed v. 
 Arnaelsteen, 182 Fed. 324; 105 C. C. A. 40. 
 
 It is settled by the repeated decisions of the Supreme Court and of this 
 court that, when an inventor seeking a patent for a broad claim acquiesces 
 in a rejection of the same by the Patent Office and substitutes therefor a 
 narrower one, he will not be heard to insist that the construction of the 
 claim allowed shall include that which has been rejected; also, that a claim 
 as allowed under such circumstances must be construed with reference to 
 the rejected claims and the prior state of the art, and will not be so inter- 
 preted as to cover either what was rejected by the Patent Office or disclosed 
 by prior devices. — Boss v. Thomas, 182 Fed. 811; 105 C. C. A. 243. 
 
 Corbin v. Eagle, 150 U. S. 38; Computing v. Automatic, 204 U. S. 609; Na- 
 tional V. Interchangeable, 106 Fed. 693; St. Louis v. American, 156 Fed. 574. 
 
 It is not necessary to enquire whether the inventor was entitled to broader 
 claims than he has received. The fact that he acquiesced in the ruling of 
 the examiner and accepted the limited claims here in issue estops him from 
 now claiming what he formally abandoned. — Winchester v. Peters, 184 
 Fed. 333; 106 C. C. A. 363. 
 
 Where a patentee on the rejection of his application inserts limitations 
 and restrictions for the purpose of obtaining his patent, he cannot after 
 he has obtained it claim that it shall be construed as it would have been 
 construed if such limitations and restrictions were not contained in it. — 
 Cotto-Waxo V. Perolin, 185 Fed. 267; 107 C. C. A. 373. 
 
 Corbin v. Eagle, 150 U. S. 40; Roemer v. Feddie, 132 U. S. 313; Electric v. 
 Boston, 139 U. S. 481; Sutter v. Robinson, 119 U. S. 530. 
 
 The rule is well settled that where an applicant for a patent acquiesces 
 in the rejection of the claims presented, and amends the same or substitutes 
 others to meet the objections of the Patent Office, he must be deemed to 
 have surrendered and disclaimed what he thus conceded, and is bound by 
 the limitation so imposed. — Sly v. Russell,' 189 Fed. 61; HOC. C. A. 625. 
 
 Shepard v. Carrigan, 116 U. S. 593; Roemer v. Feddie, 132 U. S. 313; Morgan 
 V. Albany, 152 U. S. 425; American v. Cleveland, 158 Fed. 978; Campbell v. 
 American, 179 Fed. 498; Twentieth Century v. Taplin, 181 Fed. 96. 
 
 Note: The rule thus stated is rather too broad, and is properly qualified 
 by the court in the same paragraph. 
 
 Claim 11, as originally drawn, omitted the limiting phrase * * *. That 
 phrase was inserted by amendment to distinguish it from French patent 
 No. 157,852, on which it had been rejected. As the element here referred 
 to has the same limiting phrase in each of the four claims, and as that phrase 
 was inserted in claim 11 to obtain it, it follows that the limitation cannot 
 be read out of the claim, or, indeed, out of claims 8, 9, or 10, in order to hold 
 the defendants as infringers. — Tabor Co. v. Mumford Co. 191 Fed. 166; 
 111 C. C. A. 644.
 
 § 208 CLAIMS 939 
 
 § 208. Construction — Limitation — Patent Office Action Not 
 Limiting. 
 
 If a patentee acquiesces in the rejection of his claim on references, he may 
 be estopped to maintain that an amended claim covers the combinations 
 shown in those references, or that it has the breadth of the rejected claim, 
 but he is not estopped from claiming and securing by the amended claim 
 every improvement and combination which he has invented and wliich was 
 not disclosed by those references. — Owens v. Twin City, 168 Fed. 259; 
 93 C. C. A. 561. 
 
 National v. Interchangeable, 106 Fed. 693. 
 
 While the rejection on the reference and the subsequent amendment 
 may estop the complainant from claiming the improvements shown in the 
 reference, they do not estop it from claiming and securing every improve- 
 ment and combination which the patentee invented that was not disclosed 
 by the reference. — Wayne v. Benbow-Brammer, 168 Fed. 271; 93 C. C. A. 
 573. 
 
 National v. Interchangeable, 106 Fed. 693; Owens v. Twin City, 168 Fed. 259. 
 
 The inventor is required by the statute to point out the best mode in 
 which he has contemplated the application of the principle of his invention. 
 But this does not preclude him from claiming any other mode which em- 
 bodies his principle. * * * His drawings show such a form. He could have 
 no objection to claiming his invention in that form, and accordingly ac- 
 cepted the suggestion of the examiner. The examiner saw that this was 
 the inventor's preferred form, and recommended that the claim of his in- 
 vention be in that form. We see nothing in these circumstances which 
 would work a limitation any more than if he had originally so described 
 his cutting roller. * * * We do not doubt that where the thing described 
 in a claim has been declared by the inventor to be the only one, or has treated 
 it as the only one appropriate to represent his invention, or the character 
 of the associated elements is such as necessarily to require that particular 
 form, in all such cases the patentee will be bound by his description. But 
 where there are no such considerations, and there is simply and only a de- 
 scription of one form of a thing which would perform the same office in other 
 forms, the court will apply the general rule above stated and accord him his 
 monopoly in all equivalent forms. — Vrooman v. PenhoUow, 179 Fed. 296; 
 102 C. C. A. 484. 
 
 Werner v. King, 96 U. S. 218. 
 
 While acquiescence in the rejection of claims on references in the Patent 
 Office and the acceptance of a patent on amended claims estops the patentee 
 from maintaining that the amended claims secure to him a monopoly of the 
 use of the devices shown in the references, that is the limit of the estoppel. 
 He is not estopped thereby from securing by amended claims every novel 
 and useful device, composition, and process that he has discovered or in- 
 vented that is not disclosed by these references. Dissenting opinion of 
 Judge Sanborn in — Cotto-Waxo v. Perolin, 185 Fed. 267; 107 C. C. A. 
 373. 
 
 National v. Interchangeable, 106 Fed. 693. 
 
 Of com-se, the acquiescence in the rejection of a combination of elements 
 in general terms is not an abandonment of a combination of the same ele- 
 ments limited to specific construction and location, for in the specific con- 
 struction and location may reside invention. — Moneyweight v. Toledo, 
 187 Fed. 826; 109 C. C. A. 586.
 
 940 THE FIXED LAW OF PATENTS §§209-212 
 
 A patentee who, in order to avoid a rejection of his application, inserts 
 limitations in his claims, is estopped from contending that the patent as 
 issued should be construed as if such limitations had not been made. But, 
 as a general rule, the interpretation to be placed upon the claims and speci- 
 fication of a patent is to be determined from the language of the grant, 
 and the proceedings in the Patent Office are quite immaterial. Such is 
 the situation in the present case. Original claims were rejected in the Patent 
 Office, Thereupon the applicants, instead of limiting their claims, sub- 
 stituted broader ones which were accepted. Presumably the examiner 
 changed his mind. But whatever the explanation of his position, nothing 
 whatever is shown to work an estoppel against the patentees. Instead of 
 surrendering something which they now claim to obtain that which was 
 allowed, they claimed something more and got it. — Westinghouse v. Con- 
 dit, 194 Fed. 427; 114 C. C. A. 389. 
 
 § 209. Construction — Limitation — Patent Office Action — 
 Protest. 
 
 Though such modification was made under protest, accoinpanied by 
 notice that the applicant would insist that the modification would be con- 
 strued away after the grant of the patent, and such is the law even though 
 the decisioji of the Patent Office was erroneous. — Johnson v. Western, 178 
 Fed. 819; 102 C. C. A. 267. 
 
 Phoenix V. Spiegel, 133 U. S. 360; Thomas v. Rocker, 77 Fed. 431; Macbeth 
 V. Gillinder, 54 Fed. 170; Lapham-Dodge v. Severin, 40 Fed. 763. 
 
 § 212. Construction — Limitation — Specification and Drawings. 
 
 That where the claims use broader language as to the action or function 
 of the invention than the specification, the specification must govern, see 
 — Zinn V. Auto Strop, 175 Fed. 78; 99 C. C. A. 100. 
 
 Can the patentee rightfully include in his claims something that does 
 not emerge from the description? Can a patentee describe something to 
 the world in his letters patent that means just that thing or its equivalents 
 and nothing else, and having claimed that, claim in addition something 
 not thus described and not its equivalents? VVe think not. The description 
 is required to set forth the invention in such full, clear, concise and exact 
 terms as to enable any person, skilled in the art to which it appertains, or 
 with which it is most nearly connected, to make and use the same; and the 
 claim is to enable the public to know the bounds and scope of the invention 
 " thus described; " but '' any claim which is broader than the described 
 invention is void; even where the invention is valuable, and could have 
 supported a valuable claim." — Walk. Pat. (4th Ed.), § 177, citg. Edison v. 
 American, 114 Fed. 934. 
 
 There is nothing in Winans v. Denmead, 15 How. 330, or the Paper Bag 
 Case, 210 U. S. 405, nor in any of the rules of law cited (" that the claims 
 of every patent should be construed, if possible, to cover and protect the 
 actual invention made by the patentee, and should not be restricted to the 
 particular form of device disclosed in his patent, if other forms may embody 
 it," or that " the patentee's claim is the measure of his invention," or that 
 " where the claims of a patent are clear and unambiguous, there is no room 
 for construction") that contravenes what has just been said; for what is 
 said in both of these cases, and in all of the rules, is based on the fact that 
 the inventive concept is disclosed in the description, whatever may have 
 been the niechanical form that such concept subsequently took. Certainly 
 it was not intended by these cases or these rules that an inventive concept.
 
 §§213-214 CLAIMS 941 
 
 that is separate and apart from the one embodied in the description, should 
 become a part of the patent simply by being included in the claims. — State 
 Bank v. Hillmans, 180 Fed. 732; 104 C. C. A. 98. 
 
 Note: This is beUeved to be a wholesome clearing-up of much loose state- 
 ment, usually under shield of " beneficial uses." See §§ 188, 598. 
 
 The description in a specification or drawings of details which are not, 
 and are not claimed as, essential elements of a combination, is the mere 
 pointing out of the better method of using the invention. Dissenting opinion 
 of Judge Sanborn in — Electric Protection v. American, 1&4 Fed. 916; 107 
 C. C. A. 238. 
 
 Boston V. Allen, 91 Fed. 248; National v. Interchangeable, 106 Fed. 693; 
 Owens V. Twin City, 168 Fed. 259; Continental v. Eastern, 210 U. S. 405. 
 
 Claims cannot be broadened by construction beyond what is reasonably 
 necessary to accomplish the stated primary object of the patent. — Ameri- 
 can Stoker v. Underfeed, 188 Fed. 314; 110 C. C. A. 292. 
 
 The specification which forms a part of the same apphcation as the claims 
 must be read and interpreted with them, not for the purpose of luniting, or 
 of contracting, or expanding, the latter, but for the purpose of ascertaining 
 from the entire agreement, of which each is a part, the actual intention of 
 the parties, and that intention when ascertained should prevail over the 
 dry words and inapt expressions of the contract evidenced by the patent, 
 its specification and claims. — Century Electric v. Westinghouse, 191 Fed. 
 350; 112 C. C. A. 8. 
 
 Seymour v. Osborne, 11 Wall. 516; National v. Interchangeable, 106 Fed. 693; 
 Jewell V. Jackson, 140 Fed. 344; Louden v. Janesville, 148 Fed. 686; Electric 
 Machine v. Morris, 156 Fed. 972; Lewis v. Premium, 163 Fed. 950; Fullerton 
 V. Anderson-Barngrover, 166 Fed. 443. 
 
 § 213. Construction — Limitation — State of Art. 
 
 A claim in a patent as allowed must be read and interpreted with refer- 
 ence to the claims that have been rejected and to the prior state of the art, 
 and cannot be so construed as to cover either what was rejected by the 
 Patent Office or disclosed by prior de\dces. — Cotto-Waxo v. Perohn, I80 
 Fed. 267; 107 C. C. A. 373. 
 
 Hubbell V. U. S. 179 U. S. 77; Computing v. Automatic, 204 U. S. 609. 
 
 § 214. Construction — Limitation — Words of Limitation. 
 
 In construing claims, whether or not the plirase " substantiaUy as de- 
 scribed " is repeated in each one, the first, and generaUy the best som-ce ot 
 information is the specifications. — Am. Specialty v. New England, 17b 
 Fed. 557; 100 C. C. A. 193. 
 
 We think that undue significance was attached by the court below to the 
 phrase " substantiaUy as described." The complainants certainly are not 
 by any descriptive language in the claims of either of them restricted to 
 the precise form or forms of closure mechanism set forth in the patent de- 
 scription. Nor does the description state directly or incUrectly that the 
 patentees were to be confined to such particular form or forms of closure 
 mechanism. — Am. Pneumatic v. Snyder, 180 Fed. 712; 104 C. C. A. 78. 
 
 That where the claim emploved the term " means " in a general way, 
 and on rejection and reference to prior patent that term was restricted to
 
 942 THE FIXED LAW OF PATENTS §§220-228 
 
 a specific and designated means, the claim is so limited, see — Twentieth 
 Century v. Taplin, 181 Fed. 96; 104 C. C. A. 156. 
 
 § 220. Construction — Reading in Elements. 
 
 That where an element obviously essential to a combination and obviously 
 implied is omitted, it may be read into the claim, see — Herman v. Youngs- 
 town, 191 Fed. 579; 112 C. C. A. 185. 
 
 § 222. Construction — Rules — General. 
 
 The rules applicable to the construction of these claims are: (1) That 
 we cannot read into a claim for a combination an element not mentioned in 
 it, although it may appear in the specilications; (2) That if the claim in- 
 cludes an element in general ter.ns, and refers to the specihcation to identify 
 it, we may read that clement into the clain; (3) That where the applicant 
 for a patent in one claim makes no mention of an element, and in another 
 includes it, the presumption is that he omitted it in the Hrst on purpose; 
 (4) That a patentee may include in or omit from his claims so much of the 
 matter of the specifications of his invention as he pleases; but he is bound 
 to state distinctly what part of it he intends to claim as his own. — Duncan 
 V. Cincinnati, 171 Fed. 656; 96 C. C. A. 400. 
 
 In construing the claim in controversy, we must remember that it is to 
 be interpreted in the light of the description and drawings having^ regard 
 to the difficulties to be overcome and the end to be attained. — Simplex 
 Railway v. Pressed Steel, 189 Fed. 70; 110 C. C. A. 634. 
 
 § 223. Construction — Specification. 
 
 The description in a specification or drawing of a form, or a composition, 
 or construction, of a mechanical element, when that form, composition, or 
 construction is not, and is not claimed to be essential to the combination 
 or improvement claimed, is the mere pointing out of the best motle in which 
 the patentee contemplated applying the principle of his invention under 
 § 4888, and does not deprive him of protection for mechanical equivalents 
 or indicate that he intended to give up all other modes of application. — 
 Owens V. Twin City, 168 Fed. 259; 93 C. C. A. 561. 
 
 Continental v. Eastern, 210 U. S. 405; National v. Interchangeable, 106 Fed. 
 693; Boston v. Allen, 91 Fed. 248. 
 
 That the claim must be construed in the light of the specification, see ^ 
 Washer Co. v. Cramer, 169 Fed. 629; 95 C. C. A. 157. 
 
 While the law permits us to read the specification into a claim upon ref- 
 erence thereto in the latter, it would be an abuse of such liberality to first 
 alter the specification and then read it, thus altered, into the claim. — 
 Duner v. Grand Rapids, 171 Fed. 863; 96 C. C. A. 531. 
 
 The discussion of the^ claims of a patent is not to be confined to a mere 
 logomachy, which could' be set at rest at once by a reference to the speci- 
 fications and drawings. — Fowler v. National, 172 Fed. 661; 97 C. C. A. 
 
 187. 
 
 § 228. Construction — Valeat quam Pereat Rule. 
 
 That the court cannot, in order to save a claim, limit it beyond the plain 
 and undeniable content, see — Empire v. Channon, 168 Fed. 705: 94 C. C. A. 
 211.
 
 §§229-250 COMITY 943 
 
 A construction resulting in the abandonment by the applicant of the very 
 feature for which the invention was in large part designed shoiJd not be 
 adopted unless such abandonment is clearly shown. — bly v. Kusseii, ioy 
 Fed. 61; 110 C. C. A. 625. 
 
 § 229. Construction — Words and Phrases. 
 
 The introductory phrase is not an element of ^he ^^o^J^^Sf ^°?/, ^."l^ V^T 
 not necessarily limit the claim. - Sly v. Russell, 189 Fed. 61; 110 C. C. A. 
 
 625. 
 Ex parte Casler, 90 O. G. 446. 
 
 § 241. Generic. 
 
 Undoubtedly a patent upon a coinbination "^^^be broader than a pate^^^^ 
 upon any or all of its elements. - Columbia v. Duerr, 184 Fed. 893 (note, 
 p. 910); 107 C. C. A. 215. 
 
 Note: This statement is open to serious question. 
 
 S 246. Specific. , , , 1 
 
 That a claim drawn specific to. another claim with an added element 
 may be valid, see - Herman v. Youngstown, 191 Fed. 579; 112 C. C. A. I80. 
 
 §247. Suflaciency. , • . f u 
 
 Claim 2 is not invalid because it is not for an operative device for if such 
 
 were the law patentability must have been demed to Elias Howe tor the 
 
 J?oVe"and'e'yfpointed needle,; which constituted l.s seventh claim. - 
 
 Clark Blade ..Gillette, 194 Fed. 421; 114 C. C. A. 383 
 
 Howe V. Williams, Fed. Gas. 6778; Deering v. Winona, 155 U. b. 28b. 
 
 § 248. Void. , . , ^, . 
 
 Claims are independent inventions. One may be infringed, others not 
 and tWd^ess of the patentee is limited to the injury he suffers not by the 
 abstract rS^iich may have been granted to him m other claims. One 
 S may be valid, all the rest invalid - invalid for the want of some es 
 Claim /"'ly ^^ : ^Itrihiitp But what is good remains and is unaffected by 
 
 COMITY. 
 
 S 2^0. General Statement and Definition. 
 
 Tn nassine on the other foreign patents, the circuit court considered that 
 
 Ld !o consldeHngtt, we may pass the defenses of anticipation, whether 
 :Smplete or partial, and the defense of infringement. - Leeds .. Victor, 213 
 U. S 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 Nate- It is believed that this decision should turn the tendency of the 
 coSincertarn circuits from their present disregard of prior adjudication 
 JoTmore wholesome respect for decisions in other circmts.
 
 944 THE FIXED LAW OF PATENTS §§251-253 
 
 § 251. Between Circuit Courts. 
 
 When the same question subsequently comes before another judge at 
 circuit on substantially the same evidence, it is to be expected that he will 
 follow Judge Townsend's findings and conclusion. But if the evidence is 
 materially different, so that he feels convinced that upon the new record 
 Judge Townsend would have decided differently, we do not understand that 
 he is so constrained. — Victor v. Hoschke, 188 Fed. 326; 110 C. C. A. 304. 
 
 § 253. Between Circuit Courts of Appeals. 
 
 That upon substantially the same record, the decision of one circuit court 
 of appeals should be given great weight by another circuit court of appeals, 
 see — Westinghouse v. Condit, 167 Fed. 546; 93 C. C. A. 224. 
 
 The importance of securing uniformity in the law as administered in 
 the several circuits in patent causes is so great that a decision of a court 
 of co-ordinate jurisdiction should be followed by this court in every case 
 where the question presented can fairly be regarded as doubtful. — Gorm- 
 ley & Jeffry v. U. S. Agency, 177 Fed. 691; 101 C. C. A. 479. 
 
 Pratt V. Wright, 65 Fed. 99; Enterprise v. Deisler, 46 Fed. 855. 
 
 The Circuit Court for the Northern District of Ohio, and the Circuit 
 Court of Appeals for the Sixth Circuit having held the first claim of the 
 patent here in suit is invalid, we think that an orderly administration of 
 the patent law demands that we should follow these decisions unless clearly 
 persuaded that they are erroneous. — Lorain v. White, 184 Fed. 326; 106 
 C. C. A. 356. 
 
 Our high respect for the learning of those courts gives to their judgment 
 in any case a strong persuasive force, and the desirability of uniformity of 
 decisions of courts exercising co-ordinate jurisdiction in patent cases is so 
 great as to strongly incline us as a matter of c omity to acquiesce ; but there 
 is no rule of law requiring such acquiescence. Moreover, there is evidence 
 strongly tending to show that that (the prior) suit was collusive; not de- 
 signed for a trial of the second claim of the patent upon its merits, but to 
 secure vantage ground for future injunctive relief. In view of these things 
 we are abundantly absolved, in any vie w of the rule of comity, from follow- 
 ing the decision in the Sanders Case. — Torrey v. Hancock, 184 Fed. 61; 
 107 C. C. A. 79. 
 
 Mast V. Stover, 177 U. S. 485. 
 
 Although the parties are entitled to the independent judgment of this 
 court, nevertheless the orderly administration of justice requires that, 
 where a question has been decided after careful and exhaustive examination 
 by the court of appeals of one circuit, another court of co-ordinate juris- 
 diction should not reach a different conclusion unless persuaded that the 
 first decision is clearly wrong. Especially is this true in patent causes, for 
 otherwise, under our present system, a party may be punished for an act 
 which on the other side of a dividing line is perfectly lawful and proper. — 
 Calculagraph v. Automatic, 187 Fed. 276; 109 C. C. A. 618. 
 
 The rule of comity for the Second Circuit, as stated by Judge Coxe, quoted 
 and approved in — Warren Bros. v. City of N. Y. 187 Fed. 831 ; 109 C. C. A. 
 591. 
 
 Box Co. V. Paper Co. 51 Fed. 229; Doig v. Morgan, 91 Fed. 1001; New York 
 filter ^. Niagara, 80 Fed. 924; Consolidated Rubber Tire v. Diamond, 157 Fed. 
 b77; distinguishing Mast v. Stover, 177 U. S. 488.
 
 §§ 271-274 
 
 CORPORATIONS . 945 
 
 Five judges have decided that the invention of the original is not the 
 same as that of the reissue. * * * In tliese circumstances we should be very 
 sure of our position before running counter to such a weight of authority. 
 — Morse Chain v. Link-Belt, 189 Fed. 58-i; 110 C. C. A. 564. 
 
 CORPORATIONS. 
 
 § 271. Miscellaneous Rulings. 
 
 That in the absence of proof of personal acts, officers of corporations are 
 not personally hable for infringement by a corporation, see — Johns-Pratt 
 V. Sachs, 17: Fed. 70; 99 C. C. A. 92. 
 
 The two corporations evidently preserve their separate organizations; 
 but the control of the Bullock Company's business is exercised by the Allis- 
 Chalmers Company, which has taken over all that is valuable in this busi- 
 ness and made it a department of its own. The substance of tne matter 
 is that the Allis-Chalmers Company is the unquestioned master, whose 
 orders are obeyed, and we think that under such circumstances a court 
 ccmity will look behind the corporate screen and determine where the real 
 and responsible power lies. - Westinghouse v. Allis-Chalmers, 176 Fed. 
 362; 100 C. C. A. 408. 
 
 COSTS. 
 
 § 273. Appeals. 
 
 That an objection to an item taxed by the appellate court should be raised 
 by application for retaxation in that court, and cannot be raised for the 
 first time in the court below, see - Fidehty v. Expanded, 183 Fed. ob8, 
 106 C. C. A. 114. 
 
 There seems to be no reasonable doubt that sec. 1 of rule 13 requires that 
 the bond on appeal or writ of error shall cover the costs of both the upper 
 and lower courts, except in cases where from the^^^^'-^T ,t Feci 568- 
 the suit, they are otherwise secured. - Fidelity v. Expanded, 183 Fed. 568, 
 
 ^^Kountze v. Omaha, 107 U. S. 378; Dexter v. Say ward, 79 Fed. 237; The Joseph 
 B. Thomas, 158 Fed. 559. 
 
 The cost of the supersedeas bond was a necessary part of the expenses 
 of appea° caused by the erroneous decision of the court below. Although 
 ?he E 'was allowe^d as a favor and not a matter of "g^^V^ HTasTofS 
 to protect the appellant's interests pending the appeal. ,\^^^,^ ^^^f /;?! "^^^^^ 
 customary to tax the premiums on supersedeas or appeal bonds m the Cir- 
 cu t S of Appeals the action of .the clerk is affirmed but the appeUa^t 
 should be allowed to tax these premiums in the Circuit Court. - Columbia 
 V. Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 That the costs which the clerk is entitled to ^^^^^gf Jf /^^P?,^/!^^^^^^ 
 aooeal record as fixed by statute is indivisible, and that the full amount 
 fs'to be charged even when the supervision involves merely preparing an 
 index, see — Colt's Co. v. N. Y. Sporting Goods Co. 186 Fed. 62o, 108 
 C. C;' A. 489. 
 
 Following Bean v. Patterson, 110 U. S. 401. 
 
 § 274. Disclaimer. * j .u- 
 
 There being no disclaimer the decree will be without costs. And this 
 applies as wefl to the costs in this court as in the court below. This relief
 
 946 THE FIXED LAW OF PATENTS §277 
 
 is merely negative, however. It denies costs, but it does not give them; 
 and we see no occasion to direct tliat the defendants shall recover any costs 
 here or any further portion of tlieir costs below than was tliere allowed 
 them. — Novelty v. Brookfield, 172 Fed. 221; 97 C. C. A. 25. 
 
 That where complainant succeeds on appeal as to certain claims and is 
 required to disclaim as to others, he may recover costs on appeal, but neither 
 party will recover costs in the court below, see — Cummer v. Atlas, 193 
 Fed. 993; 113 C. C. A. 611. 
 
 Yale V. Sargent, 117 U. S. 536. 
 
 § 277. Miscellaneous. 
 
 Where a suit is brought upon several claims of one or more patents, and 
 the complainant succeeds in obtaining relief upon some of the claims but 
 fails to recover upon others, an equitable division of the costs proportioned 
 to the expense of litigating the respective claims should 1)C made. — Owens 
 V. Twin City, 168 Fed. 259; 93 C. C. A. 561. 
 
 Ide V. Trorlicht, 115 Fed. 137; Willcox ;;. Merrow, 93 Fed. 206; Thomson- 
 Houston V. Elmira, 71 Fed. 886; Johnson v. Foes, 141 Fed. 73. 
 
 As the defendant succeeds as to the Whitmore patent, he was entitled to 
 costs to which he would be entitled had there been a separate suit against 
 him on that patent. — Roth v. Harris, 168 Fed. 279; 93 C. C. A. 581. 
 
 The complainant has established that he has a valid patent which has 
 been iilfringed. On account of the unusual circumstances of the case, he is 
 not entitled to any of the relief prayed for. We think it equitable that he 
 should have one-half costs of this court, and that neither party should 
 recover in the Circuit Court. — Crier v. Innes, 170 Fed. 324; 95 C. C. A. 
 508. 
 
 The words " cost " and " costs " do not always mean the same thing. 
 The word " cost " and the phrase " taxable costs " generally have quite 
 different meanings. " Cost " may be considered as synonymous with " ex- 
 pense." " Taxable costs " are allowances made to the successful party to 
 reimburse him for his disbursements made in prosecuting or defending a 
 suit. But to the unsuccessful party they are of the same nature as the 
 damages awarded against him. He pays them because they are an incident 
 to the judgment, not because they are any part of the expenses of his own 
 defense. — Hygienic v. Provident,' 176 Fed. 525; 100 C. C. A. 121. 
 
 That where two corporations entered into an agreement for mutual de- 
 fense against suits for infringement, " the cost and expense of such defenses 
 to be equally borne by the parties hereto," such agreement cannot be con- 
 strued as an agreement of indemnity, so that one of the parties being mulcted 
 with costs can recover pro rata such costs from the other party, see — 
 Hygienic v. Provident, 176 Fed. 525; 100 C. C. A. 121. 
 
 In view of the fact that the complainant recovered only nominal damages, 
 the trial court ordered it to pay all costs attending the accounting, including 
 the hearing on the exceptions to the master's report. We think this was 
 right. — Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. 526. 
 
 Kirby v. Armstrons;, 5 Fed. 801; Insersoll v. Mus^rove, Fed. Gas. 7040; 
 Robbms v. Illinois, 78 Fed. 124; Kansas City v. Devol, 127 Fed. 363.
 
 §§283-292 DAMAGES 947 
 
 It is apparently true that in some rare cases where there were several 
 wrongdoe^rs, some of whom had participated in domg the wrong on^y in a 
 S or almost wholly unrelated f^mier the court Ij^asexerase^^^ 
 cretion in their favor and cast the heavier burden of cost, to which ail are 
 liable upon the more guilty parties. But such cases are ^f 7^,^° ^^^ 
 general rule upon verv special circumstances. - Vrooman v. Penhollow, 
 186 Fed. 495; 108 C. C. A. 502. 
 
 That the fact that a demurrant fails on one or more grounds set out in the 
 demurrer, so long as he succeeds upon one ground, does not bar costs, see 
 — Gold V. Gold, 187 Fed. 273; 109 C. C. A. 615. 
 
 DAMAGES. 
 
 § 283. Increasing. 
 
 That the Circuit Court of Appeals for the Second Circuit will not follow 
 the course in Fox .. Knickerbocker, 165 Fed. 442, see -Brown v. Drohen. 
 175 Fed. 576; 99 C. C. A. 192. 
 
 § 288. Measure — Complainant's Loss. 
 
 That losses based upon diverted sales must not be speculative, see — 
 Nat. Metal v. Bredin, 186 Fed. 490; 108 C. C. A. 468. 
 
 The proofs show that the complainant's profit on the strips manufactured 
 and sold by them was IM cents per foot. It is fair to assume that this agent 
 would have purchased the 71,634 feet from complainants if the defendant s 
 rnfringing strip had not been offered to him. - Nat. Metal v. Bredin, 186 
 Fed. 490; 108 C. C. A. 468. 
 
 Assignment is to a refusal to charge that: " Inasmuch as plaintiff has not 
 nroven that it would have received any order for its switching devices from 
 Sex ofthe defendants, it cannot recover." We t^-nk ^^is re^ue^^^^^^^^^^ 
 sound It would require plaintiff specifically to prove what in the nature 
 of th ngs can oniv be estiJ^lished by inference. When a Per-n buys and 
 installs an infringing device, it is assumed he does so because he find, ^t de- 
 sSe o necesslry to do so; and the natural inference would be that, if 
 he had no got the infringing device from the infringing manufacturer, he 
 would have got the equivalent device of the patent from some one licensed 
 To make it ov if no one is so licensed, and the owner of the patent himse f 
 manufactures, then from such owner. - Transit Development Co. .. Cheat- 
 ham, 194 Fed. 963; 114 C. C. A. 599. 
 
 § 289. Measure — Deductions and Mitigations. 
 
 That the complainant mav have been a party to an unlawful trust or com- 
 biJa'fon Xch ?aised the prices of the articles made -d -Id^-ot a grouiKl 
 for mitigating or refusing damages, see -Novelty v. Brookfaeld, i/U rea. 
 946; 95 C. C. A. 516. 
 
 St. Louis V. Terre Haute, 145 U. S. 393. 
 
 S 202. Measure — License Fee. 
 
 The master found that the evidence failed to establish a uniform license 
 fee for Sie machhies when used both night and day, as but a single instance 
 of a Ucen^e^or such work was shown. This proposition is not seriously de- 
 puted b^t Se complainant contends that there was ^n established licence 
 Tp for dav work and as the defendant used the machines night and da> , 
 he should nJcomplain if required to pay the fee charged for day work.
 
 948 THE FIXED LAW OF PATENTS §299 
 
 This contention certainly seems plausible, but we liesitate to adopt 
 it in the absence of proof. Are we permitted to infer that a license fee for a 
 machine working night and day must, under all conditions, exceed, or at 
 least equal, a license fee for a machine working by day only? W e cannot 
 think that the affirmative of this proposition is entirely free from doubt. 
 
 Laconibe, J. dissenting: I cannot concur in the proposition tliat we may 
 assume, without proof, that a patentee who has an established license fee 
 for the use of his machine for day work only, would be likely to allow its use 
 for day and night work both at any less rate. — Brown v. Drohcn, 175 Fed. 
 576; 99 C. C. A. 192. 
 
 Note: It is difficult to follow the reasoning of Judge Coxe in this case, 
 and it would seem that the dissent of Judge Lacombe is justified. 
 
 This conclusion (for nominal damages) was reached upon the theory that 
 unless a uniform rate of license fee, or at least a uniform rate for the particu- 
 lar period during which the defendant's infringement began, can be shown, 
 nothing at all can be recovered. We do not agree with this conclusion. The 
 patent had a career of vicissitude?. Sometimes it was held valid, sometimes 
 void. In consequence the owner could not always get the same license fee. 
 * * * Upon such a state of facts we are of the opinion that the mfrmger 
 should be held to have danaged the owner to the extent of what such m- 
 fringer would have had to pay for a license at tlie lowest rate for which licenses 
 had been issued, had he not infringed but conceded the validity of the 
 patent at the outset. An owner may not announce some fixed rate, and then 
 constantlv depart from it for one reason or aiother, and at the same time 
 insist that an infringer shall pay this rate, which tlie owner finds it impossible 
 to collect from all others who use his improvement. It would be reasonable 
 to assume that, had the infringer put the owner to an election either to abate 
 from his announced rate or to undertake an infringement suit, such owner 
 would have been willing to accept a rate as low as he had already accepted 
 from others who possibly had put him to a like election in their cases. But 
 it is a very different thing to hold that where there is a lowest limit below 
 which the owner has never gone, preferring to bring suit rather than accept 
 so little, an infringer may appropriate the invention feeling assured that, 
 because all licensees have not paid exactly the same rate, he will never have 
 to pay anjrthing. Such a rule seems to us to be most inequitable, and the 
 one indicated above is certainly fair to both sides. * * * We find nothing 
 in the frequent statement that an " established rate " cannot be proved 
 except by showing uniformitv, to preclude the adoption of the rule above 
 indicated. —Am. Sulphite Pulp Co. v. De Grasse, 193 Fed. &53; 113 C. C. A. 
 521. 
 
 Seymour v. McCormick, 57 U. S. 480; Packet Co. v. Sickles, 86 U. S. 
 611; Rude v. Westcott, 130 U. S. 152. 
 
 Note: Is this rule " certainly fair to both sides? " The reversal of the 
 court below was clearly proper, but should an infringer be entitled to dictate 
 the terms of a license or the amount he will pay for infringement? If an 
 infringer is a tort feasor, why should it be his privilege, established by law, 
 to drive a better bargain by committing a tort than he would have been able 
 to make had he acted lawfully? 
 
 § 299. Miscellaneous Rulings. 
 
 It is said that the glass company was a non-exclusive licensee by suffer- 
 ance, and that the damages which it suffered must be recovered, if at all, 
 by the owner prosecuting in its behalf. This, no doubt, is the law. Bird-
 
 §§322-323 ' DEFENSES 949 
 
 sell V. Shaliol, 112 U. S. 48-5, But it does not necessarily dispose of the case. 
 Neither is it ruled by Yale v. Sargent, 117 U. S. 552, where the owner of the 
 patent was allowed to recover damages to a partnership of which he was a 
 member. Nor is Tilghman v. Proctor, 125 U. S. 136, applicable, there being 
 no proof there that any one beside the plaintiff had an interest, legal or 
 equitable, in the patent, and the question being not as to the plaintiff's 
 damages, but the defendant's profits, which the plaintilJ was held entitled 
 to recover, no matter to whom they were eventually to go. The bill pro- 
 ceeds in the interest and for the benefit of the owner of the parent alone, 
 and it is not at this stage to be transformed into something else. It is only 
 where the licensee, exclusive or nonexclusive, is in fact, in whole or in part, 
 the beneficial party, that anything can be claimed by way of damages on 
 his account. — Brookfield v. Novelty, 170 Fed. 960; 96 C. C. A. 127. 
 
 The bill charged that the defendant maliciously and for the purpose of 
 delaying the issue of complainant's patent caused an interfering application 
 to be filed, and by delays and repeated appeals delayed the issue of the 
 patent for some three years, and sought damages therefor. Held: The case, 
 if any case can be made upon the facts detailed, is one in the nature of tres- 
 pass on the case for injury and damage to the plaintiff in error, growing out 
 of the postponement of its coming into enjoyment of his grant, due to the 
 alleged malicious conduct of the defendant in error. But to support such 
 an action, if such an action exists at law, it is essential that plaintiff in error 
 should have suffered some specific damage due to the postponement, and that 
 such damage should be specially set forth in the complaint. — Avery v. 
 Case, 174 Fed. 147; 98 C. C. A. 181. 
 
 DEFENSES. 
 
 § 322. Miscellaneous. 
 
 The validity of a patent is not affected by nonuser. But it may be said 
 to have a bearing upon its construction. — Westinghouse v. Toledo, 172 
 Fed. 371; 97 C. C. A. 69. 
 
 Continental v. Eastern, 210 U. S. 405; Bradford v. Belknap, 105 Fed. 63. 
 
 If the defendant's answer had set up as the sole defense no notice other 
 than that contained in the bill of complaint, and that immediately upon 
 the commencement of the suit it had dismantled the machine it had been 
 using, the contention might, perhaps, be good. — Morton Trust v. Standard, 
 177 Fed. 931; 101 C. C. A. 211. 
 
 Note: It is thought special emphasis should be put upon the word " per- 
 haps." 
 
 DEMURRER. 
 
 § 323. Dismissing Bill on. 
 
 Courts are slow to sustain demurrers on the ground that the letters patent 
 are void on their face, as showing no patentable invention. They, however, 
 recognize the duty imposed upon them, where it is clear that the device of 
 the patent in suit does lack patentable invention, to so declare, and to dis- 
 pose of the case on demurrer, and thus put an end to useless and expensive 
 litigation. — Victor v. Hawthorne, 178 Fed. 455; 101 C. C. A. 439. 
 
 Rule and authorities stated in — Boldt v. Nevison, 194 Fed. 871; 114 
 C. C. A. 617.
 
 950 THE FIXED LAW OF PATENTS §§324-331 
 
 §324. Judicial Notice. 
 
 Of course, every bill is written against the background of common knowl- 
 edge; and in that view a demurrer may be said to invite the chancellor to 
 take judicial notice of the background. But if a bill, in and by its own 
 averments, states a prima facie case, that case cannot properly be over- 
 thrown by the chancellor merely on the ground that he juilicially knows 
 of facts that would support an answer. His judicial knowleilge must go 
 farther, and be so broad and all-embracing that he can properly hold that 
 no facts exist that would tend to controvert the supposed answer anil support 
 a replication and the bill. This is so because, if such facts exist, the com- 
 plainant is entitled to a hearing where he can present and argue the facts, 
 and such a hearing cannot be hal on demurrer to the bill. — Lange v. Mc- 
 Guin, 177 Fed. 219; 101 C. C. A. 389. 
 
 See foot-note to this case with list of authorities. 
 
 § 325. Patentability and Novelty. 
 
 It is true that, in a case where there is doubt whether the patent involves 
 invention or utility, the power of the court to pass upon its validity in ad- 
 vance of proofs which might be adduced to sustain it shouhl be exercised 
 with caution. What was said (in Richards v. Cha^e, 158 U. S. 299) is appli- 
 cable with greater force in a case in which the pure question of law is pre- 
 sented whether the invention is or is not within the class of those which the 
 law makes patentable. In such a case no light can come from testimony. 
 — Am. Disappearing Bed v. Arnaelsteen, 182 Fed. 324; 105 C. C. A. 40. 
 
 There seems to be sufficient doubt about the question of patentability 
 to call for a disposition of the case similar to that made in Beer v. Walbridge, 
 100 Fed. 465, National v. Stolts, 174 Fed. 413, and Lyons v. Drucker, 100 
 Fed. 416, where we reversed decisions sustaining demurrers. In patent 
 causes, moreover, there is always the chance that evidence as to conditions 
 prior and subsequent to the patentee's publication of his improved device 
 may be introduced which induce the reversal even of a very strong impres- 
 sion formed merely from a perusal of the patent itself in the light of common 
 knowledge. Such instances are within the experience of this court. See 
 Schenck v. Singer, 77 Fed. 841; Brunswick-Balke-Collender v. Thum, 111 
 Fed. 904. — Stilwell v. McPherson, 183 Fed. 586; 106 C. C. A. 354. 
 
 § 327. Miscellaneous. 
 
 The records in the former litigations are not before us and cannot be in- 
 troduced upon the issue presented by the bill and demurrer. The demurrer 
 admits what the bill alleges, but the bill does not allege that the original 
 patent was held invalid because of lack of patentability. The courts may, 
 of course, in considering a demurrer, take judicial notice of matters within 
 the common knowledge of the people, but we have grave doubt whether we 
 are justified in considering the testimony and exhibits produced before us 
 at an argument which took place two years ago. The evidence of the wit- 
 ness who testified to a prior use in the suit on the original patent may be 
 decisive of this case also, but his testimony is not before us and it would, 
 we think, be establishing a dangerous precedent were we in aid of a demurrer 
 to resort to testimony not in the record. — National v. Stolts, 174 Fed. 413; 
 98 C. C. A. 617. 
 
 DESIGNS. 
 
 § 331. Infringement. 
 
 Design patents are to make that, which otherwise is useful, ornamental 
 as well. Many designs, while differing in detail, may present to the ordinary
 
 §§332-340 DISCLAIMER 951 
 
 observer the same appearance. " Sameness of appearance " is " identity 
 of design." But the object in a design patent is not to identify the article 
 as an article of trade, but to ornament it so as to make it pleasing to the eye, 
 the true rule being, What is the aesthetic effect? And does the alleged in- 
 fringing device produce upon the eye of the ordinary observer the same 
 aesthetic effect ? The " sameness of appearance " is the sameness of aes- 
 thetic effect upon the eye. — Bolte v. Knight, 180 Fed. 414; 103 C. C. A. 
 558. 
 
 Smith V. Whitman, 148 U. S. 680; Jennings v. Kibbe, 10 Fed. 669. 
 
 That while the absence of a description accompanying the drawing m 
 a design patent does not render the patent void, it limits the construction 
 to the precise showing of the drawing, and the court cannot hold any ele- 
 ment shown to be nonessential, see ^ Ashley v. Tatum, 186 Fed. 339; 108 
 C. C. A. 539. 
 
 Dobson V. Dornan, 118 U. S. 10; Ex parte Mygatt, 117 O. G. 538; Ex 
 parte Freeman, 109 O. G. 1339; Ex parte Mygatt, 121 O. G. 1676; Tompkins 
 V. N. Y. 159 Fed. 133. 
 
 § 332. Invention. 
 
 We think it distinctly the better view that the patentee, while availing 
 himself of parts old in the art, so united them in his design as to produce a 
 completed whole having a new and pleasing effect distinct from the effect 
 of the separate parts — that he obtained a new result, and consequently 
 a valid patent. — Crier v. Innes, 170 Fed. 324; 95 C. C. A. 508. 
 
 § 334. Novelty, 
 
 In order to sustain a patent, whether for mechanical construction or for 
 design, it must appear that there was exercise of the inventive faculties. 
 A mere change in construction which shows no originality and adds no beauty 
 to existing structures is not sufficient to sustain a patent for a design. — ■ 
 Mygatt V. Schauffer-Flaum, 191 Fed. 836; 112 C. C. A. 350. 
 
 § 335- Patentability. 
 
 A monument is manufactured, and in our opinion is a " manufacture," 
 and not a species of architecture. — Crier v. Innes, 170 Fed. 324; 95 C. C. A. 
 508. 
 
 That under § 4929 as amended a design must be " ornamental " and that 
 the term " useful " is omitted; and for a most instructive discussion of the 
 patentability of designs, see — Phoenix Knitting Wks. v. Hygienic, 194 
 Fed. 696; — C. C. A. — . 
 
 Familiar rule and cases cited in — Boldt v. Nevison, 194 Fed. 871; 114 
 C. C. A. 617. 
 
 DISCLAIMER. 
 
 § 340. Delay. 
 
 That where, upon the affirmance of a decree dismissing a bill, the com- 
 plainant files a disclaimer and asks amendment of the mandate to permit 
 the filing of a supplemental bill in the nature of a bill of review, such motion 
 is made in season, see — Fellows v. Borden's, 187 Fed. 1005; 109 C. C. A. 
 535.
 
 952 THE FIXED LAW OF PATENTS §§341-344 
 
 §341. Effect of. 
 
 The effect of the disclaimer was not to broaden the chiim, but to Hmit it 
 to the construction, described and shown. Until this disclaimer was allowed 
 it was possible to contend for a construction broad enough to include a 
 structure described in the language disclaimed. That this was a proper 
 case for a disclaimer and that the language disclaimed is no longer a i)art 
 of the specification are propositions which are sustained bj^ the authorities. 
 * * * The statement eliminated by the disclaimer was unneceseary and was 
 not advisedly inserted, but there is nothing of which to predicate a fraudu- 
 lent intent. — Simplex Railway v. Pressed Steel, 189 Fed. 70; 110 C. C. A. 
 634. 
 
 Dunbar v. Meyers, 94 U. S. 187; Accumulator v. Julien, 38 Fed. 117, and 
 cases cited; Carnegie v. Cambria, 185 U. S. 403. 
 
 § 342. Failure to File. 
 
 The decree must be affirmed as to claim 2; but there being no disclaimer 
 as to the others, it will be without costs. And this applies as well to the 
 costs in this court as in the court below. — Novelty v. Brookfield, 172 Fed. 
 221; 97 C. C. A. 25. 
 
 That failure to file a disclaimer which may bar costs in no wise bars the 
 right to an accounting, see — Novelty v. Brookfield, 172 Fed. 221; 97 
 C. C. A. 25. 
 
 § 344. Purpose and Effect of. 
 
 The old and inequitable rule of the Second Circuit that a complainant 
 succeeding on one claim and another claim sued on being held bad must 
 disclaim the latter before decree, is, by this decision affirmatively revoked, 
 the court saying: Such an interpretation of the section seems unreasonable, 
 and the so-called " rule of practice " in the Second Circuit will no longer 
 be followed. — Page v. Dow, 168 Fed. 703; 94 C. C. A. 209. 
 
 Revg. the rule applied in Myers v. Frame, Fed. Cas. 9991; Burdett v. Estey, 
 Fed. Cas. 2145; Christman ?;. Rumsey, Fed. Cas. 2704; Schillinger v. Gunther, 
 Fed. Cas. 12,458; Atwater v. Beecher, 8 Fed. 610; Tyler v. Galloway, 12 Fed. 
 567; Brainard y. Gramme, 12 Fed. 621; Matthews v. Spagenberg, 19 Fed. 823; 
 Hake v. Brown, 37 Fed. 783; Union v. Waterbury, 39 Fed. 389; Electric v. 
 Julien, 38 Fed. 117; Steam Gauge v. Kennedy, 41 Fed. 38; Brush v. Electric, 
 47 Fed. 48; Ballard v. McCluskey, 58 Fed. 880. 
 
 That where certain claims sued on are held void on appeal and certain 
 claims are sustained, the appellate court maj'^ compel complainant to make 
 disclaimer upon the claims held void before entering decree upon the others, 
 see — Morgan Engineering v. Alliance, 176 Fed. 100; 100 C. C. A. 30. 
 
 Morgan v. Alliance, 176 Fed. 100, followed in — Herman v. Youngstown, 
 191 Fed. 579; 112 C. C. A. 185. 
 
 Under the practice pointed out in Morgan v. Alliance, 176 Fed. 100, and 
 Herman v. Youngstown, 191 Fed. 579; the complainant should have 30 days 
 after the mandate is filed in the court below within which to file a certified 
 copy of a disclaimer as to claims 7, 8, 9, and 10, and, in the absence of such 
 disclaimer, the bill should be dismissed. — Cummer v. Atlas, 193 Fed. 993; 
 113 C. C. A. 611.
 
 §§ 347-354 DISCOVERY 953 
 
 DISCOVERY. 
 
 § 347- General Statement and Definition. 
 
 The prior art had no teaching on the subject, and Byerley discovered it, 
 not by any process of reasoning or building upon former methods, but ac- 
 cidentally and without design. Byerley on one occasion and trom mere 
 curiosity carried the distilling process beyond the usual point, and to nis 
 surprise found it resulted in an unlooked-for and unknown chemical action 
 and product, namely, the artificial asphalt of his second claim. — Byerley 
 V. Sun, 184 Fed. 455; 106 C. C. A. 537. 
 
 DIVISIONAL PATENTING. 
 § 348. Statute and General Rule. 
 
 One who makes several patentable inventions that result in a new and 
 useful machine or process, or both, may have as many separate valid patents 
 as he makes patentable inventions. — Century Electric v. Westinghouse, 
 191 Fed. 350; 112 C. C. A. 8. . 
 
 Rob Pat §465; Expanded «;. Bradford, 214 U. S. 366; Badische ^^ Khpstein, 
 125 Fed. 543! Westinghouse v. Dayton, 106 Fed. 724; Westmghouse v. Electric 
 Appliance, 142 Fed. 545. 
 
 § 349. Co-Pending Applications. 
 
 Where each of several applications which subsequently ripen into patents 
 to the same inventor describes the same machine and process and the inven- 
 tions claimed in all the applications, but no one of the applications claims 
 any invention claimed in any of the others and they are all pending 
 at the same time, the respective dates when the applications were hied are 
 immaterial, and the applications and patents cannot be used to anticipate 
 or avoid each other. — Century Electric v. Westinghouse, 191 Fed. 350, 
 
 119 (~< A Q 
 
 Ida". Trorlicht, 115 Fed. 137; Walk. Pat. §180; Suffolk r Hayden, 
 3 Wall. 315; Westinghouse v. Dayton, 106 Fed. 724; Graham v. McCormick, 
 11 Fed. 859; Graham v. Manufacturing Co. 11 Fed. 138. 
 
 § 351. Distinguished from Double Patenting. 
 
 That one application for a patent may be a continuation of a prior appli- 
 cation for the same thing under certain circumstances is unquestioned - 
 Model Bottling Mach. v. Anheuser-Busch, 190 Fed. 573; 111 C. C. A. 389. 
 
 Hayes-Young v. St. Louis, 137 Fed. 80. 
 
 § 354- Identity. 
 
 A patent for an invention does not avoid a later patent for an improve- 
 ment thereon nor does a patent for an improvement avoid a later patent tor 
 the invention on which the improvement is made The sum of the whde 
 matter is that while an eariier patent avoids a later patent to the same 
 patentee for the invention claimed and secured bj;;^the former, it does not 
 invalidate a later patent to him for a distinct, different and separable in- 
 vention whether generic or specific, whether an origma machine or process 
 or both, or an improvement thereon which is not actually claimed or secured 
 bv the eariier patent. — Century Electric v. Westinghouse, 191 Fed. 350; 
 
 1 1 9 ri Q j^ g 
 
 Thomson-Houston v. Ohio, 80 Fed. 712; Thomson-Houston v. Elmira, 71 Fed. 
 396; Electrical Accumulator v. Brush, 52 Fed. 130.
 
 954 THE FIXED LAW OF PATENTS §§358-366 
 
 DOUBLE PATENTING. 
 
 § 358. Extending the Monopoly. 
 
 That an attempt to secure by subsequent patent application claims upon 
 combinations fully disclosed but not claimed in tlie prior jjatent — wiiich 
 claims might have been made part of the original patent or secured in it 
 by a reissue, is double patenting and the latter patent void, see — Union 
 Typewriter v. Smith, 181 Fed. 966; 104 C. C. A. 430. 
 
 That where an invention is patented with specific claims, the issuance of 
 subse 
 extend 
 
 a subsequent patent with generic claims would be double patenting antl 
 ctend the monopoly, see — Gold v. Gold, 1S7 Fed. 273; 109 C. C. A. 615. 
 
 An inventor may not sustain a subsequent patent for an invention actually 
 claimed and secured in a former patent. Nor may he sustain a subsequent 
 patent for an essential element of an invention securetl l)y a former patent 
 without which that invention would not have been patentable. — Century 
 Electric v. Westinghouse, 191 Fed. 350; 112 C. C. A. 8. 
 
 Miller v. Eagle, 151 U. S. 186; Mosler v. Moslcr, 127 U. S. 3.55; Otis 
 V. Portland, 127 Fed. 557; Western Electric v. Williams-Abbott, 108 Fed. 952; 
 Thomson-Houston v. Hoosick, 82 Fed. 461; Palmer v. Lozier, 90 Fed. 732; 
 Industrial v. Wilcox, 112 Fed. 535. 
 
 DRAWINGS. 
 
 § 363. General Statement and General Rules. 
 
 The rule is, of course, appreciated that while the drawings of a patent 
 serv^e to make plain doubtful or ambiguous statements in the written de- 
 scription, they cannot go further and supply the entire absence of the written 
 description required by the statute. A strict application of this rule would 
 probably prevent us from considering what the drawings show concerning 
 the gearing ratio or the working of the cylinders — these subjects not being 
 mentioned in the description. But in view of the stated objects of the 
 patent and in view of the fact that changes in the Brayton structure referred 
 to in the description tend to increase speed capabilities, we have thought 
 that the rule should not be strictly applied in this case and that some weight 
 should be given to what the drawings disclose in that direction, as sup- 
 plementing the written description and not altogether as supplying its ab- 
 sence. — Columbia V. Duerr, 184 Fed. 893 (note, p. 907); 107 C. C. A. 215. 
 
 EMPLOYER AND EMPLOYEE. 
 
 § 365. Contract — Future Inventions. 
 
 The law is settled that, in the absence of an express contract or agreement, 
 the relation of employer and employee, under whatever circumstances, short 
 of specific employment to make an invention, does not invest the employer 
 with the entire property right in an ir^vention of the employee. — Johnson 
 V. Western, 178 Fed. 819; 102 C. C. A. 267. 
 
 Pressed Steel v. Hanson, 137 Fed. 403; Hapgood v. Hewitt, 11 Fed. 422; affd. 
 119 U. S. 226. 
 
 § 366. License — Implied. 
 
 (1) It was one of the duties of the plaintiff's emploA-ment to improve the 
 defendant's machinery. (2) The plaintiff used the property of the defend- 
 ant and the assistance of its other employes in developing and putting into 
 practical form his invention. (3) The defendant also paid the expenses of 
 taking out the patent. (4) The defendant also paid for the machines which 
 were installed in the defendant's factory under the direction of the plaintiff.
 
 §371 EQUITY 955 
 
 (5) In addition to these material facts the salary of plaintiff was raised from 
 $1800 to $5000 per annum, and the plaintiff also had quite a large mterest 
 in the profits of the business. Upon this state of facts, the defendant, under 
 well settled rules governing this class of cases, clearly had at least a shop 
 ricrht or implied license to use these particular machmes without compensa- 
 tion * * * In the absence of an express agreement on the part ot the de- 
 fendant to pay for the use of these machines, the court below properly 
 directed a verdict for the defendant. - Wilson v. Am. Circular Loom, 187 
 Fed. 840; 109 C. C. A. 600. 
 
 Solomons v U S. 137 U. S. 342; Gill v. U. S. 160 U. S. 426; McClurg 
 . KinSand'-i How 202; Barry v. Crane, 22 Fed. 396; Withmgton «;• Kmney, 
 68 Fed 500 \m Tube Wks. v. Bridgewater, 26 Fed. 334; Magoun v. New Eng- 
 fand Fed Cas 89(50; Blauvelt .. Interior, 80 Fed. 906; Barber v. National, 
 129 Fed. 370; Fuller Bartlett, 68 Wise. 73. 
 
 EQUITY. 
 
 § 371. Jurisdiction. 
 
 Defendant held a patent and threatened to bring suit for infringement 
 aeainst complainant, but failed and refused so to do. Complainant brought 
 Sto pe petuate testimony, alleging such proof sufficient to establish the 
 invalidity of the patent and danger of such testimony being lost. Red 
 The jurisdiction of courts of equity to entertain bills for the perpetuat on 
 of testimony is undoubted. It is by origma bill (under the second clau e 
 of §886 R S ) and exists where the complainant has an interest which he 
 cinnot make ihe subject of judicial inquiry, and ^he testimoi^ in su^^^^ 
 of such interest may be lost before such mqmry is made. - Westinghouse v. 
 Electric, 170 Fed. 430; 95 C. C. A. 600. 
 
 Vni Miv V \rmstrong, 26 Ky. 261; Hall v. Stout, 4 Del. Ch. 272 9 Am. cV 
 
 Q7 C C A 27 
 
 Root 'v. Railway, 105 U. S. 189; Consolidated v. Ashton, 26 Fed. 319; dia- 
 tinguishing McDonald v. Miller, 84 Fed. 344. 
 
 Eauity in seeking justice between man and man not obtainable at law 
 does S stop precislly where the cases already decided have stopped The 
 iTnc'etf has'n'ow. Is had the chancellor in th^past^^^^^^^^^^^ 
 to aDDlv old principles to new cases involving new relationshipb. i nere 
 
 exisSd then between these parties, as we view it, a relationship that 
 made them appellee as well as appellants, agents to a common enterprise 
 -asentsVagreement-the principal being the common enterprise it- 
 self a relalo^hip that, faithfully carried out by appellants required that 
 S; nut n the name of the appellee, but for the common enterprise, what- 
 ever they mightTvent in that line; and that, faithfully carried out by 
 rnnellee required Siat he extend (the appeUants fulfilhng their obligations) 
 ?hT cope oTthe common enterprise to mclude the whole of the U..ted 
 ■ States - the specific option contracts being the mode employed. In what 
 respect his tWs relationship failed? That ^PPellants stand ma^^^^^^^^^ 
 relationship with respect to these inventions, to this «™^^^",fS: 
 we think is clear That appellee stands, m relation to this common enter 
 prise as trustee also, we thfnk is clear. This clothes the court with power
 
 956 THE FIXED LAW OF PATENTS §§373-376 
 
 to enter a decree of some kind. It is the form of the decree that remains 
 to be determined. — Nat. Wire Bound Box v. Ilealy, ISO Fed. 49; 1 10 C. L . A. 
 613. 
 
 The owner of a patent cannot recover, in a suit against a manufacturer 
 of an infringing article which he sells to retailers, the full relief to which he 
 is entitled in suits against the retailers, and a decree for an injunction aiul 
 damages against a manufacturer is no bar to suits against those who pur- 
 chase from the manufacturer and use or sell to others. — Kryptok v. f^toad, 
 190 Fed. 767; 111 C. C. A. 495. 
 
 Birdsell v. Shaliol, 112 U. S. 485. 
 
 That in an action by an assignor for an accounting and a rc-assignmcnt 
 there is no adequate remedy at law, and equity will take jurisdiction, see 
 — Neenan v. Otis Elevator, 194 Fed. 414; 114 C. C. A. 376. 
 
 EQUIVALENTS. 
 
 § 373. General Statement and Definitions. 
 
 To be substantially equivalent means, they must perform the same office 
 by a similar organization and mode of operation. — Chicago Grain Door v. 
 National, 173 Fed. 918; 97 C. C. A. 324. 
 
 § 374. Combinations. 
 
 The elements of the combination are things and not names. In this as 
 in other patents for comlMiiations, we think that the unity of the combina- 
 tion will not be affected by the substitution of elements which, however 
 they may be classified or designated, perform the same function in sub- 
 stantially the same way, while it will be destroyed by the substitution of 
 elements which do not perform the same office in substantially the same 
 manner. — Columbia v. Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 The doctrine, of mechanical equivalents is governed by the same rules 
 and has the same application when the infringement of a patent for a com- 
 bination is in question as when the issue is over the infringement of a patent 
 for any other invention. Dissenting opinion of Judge Sanborn in — Elec- 
 tric Protection v. American, 184 Fed. 916; 107 C. C. A. 238. 
 
 Imhauser v. Buerk, 101 U. S. 647; Griswold v. Marker, 62 Fed. 389; Fay 
 V. Cordesman, 109 U. S. 408; Union v. Desper, 101 U. S. 3.32. 
 
 § 376. Improvements. 
 
 Where a patent depends for its novelty over the prior art upon a single 
 limited feature of construction, the claims cannot be expanded by any 
 doctrine of equivalents, to cover a device which lacks the essential feature. 
 — Liberman v. Ruwell, 170 Fed. 590; 95 C. C. A. 134. 
 
 Wagner v. Wycoff, 151 Fed. 585. 
 
 That the broad rule of equivalents applicable to pioneer patents, as stated 
 in Morley v. Lancaster, 129 U. S. 263, does not apply to an improvement 
 patent, see — National v. Ralston, 172 Fed. 393; 97 C. C. A. 91. 
 
 That an invention which is merely an improvement may partake of the 
 nature of a pioneer invention sufficiently to give it some range of equivalency, 
 see — Am. Pneumatic v. Snyder, 180 Fed. 712; 104 C. C. A. 78. 
 
 Paper Bag Case, 210 U. S. 405.
 
 378-379 EQUIVALENTS 
 
 957 
 
 Since the invention is a secondary improvement marking only a small 
 step in the art, and with comparatively small meritoriousness in the improve- 
 ment, the range of equivalents is correspondingly narrow and the doctrme 
 of equivalents should be less liberally applied in its favor. — Jackson v. 
 D'Arcey, 181 Fed. 340; 104 C. C. A. 170. 
 
 Miller v. Eagle, 151 U. S. 86; Bundy v. Detroit, 94 Fed. 525; King v. Hub- 
 bard, 97 Fed. 795; Taber v. Meriden, 103 Fed. 83. 
 
 Considering the prior art, we cannot believe that the patent is entitled 
 to a broad construction; on the contrary, in view of the earlier uses made 
 of the condenser, we think the patent can be accorded only a narrow con- 
 struction. — Kellogg V. Dean, 182 Fed. 991; 105 C. C. A. 545. 
 
 National v. Buckeye, 171 Fed. 847. 
 
 When an invention is a primary one, and the inventor a pioneer in the 
 art to which it relates, he is justly entitled to a wide range of equivalents; 
 but when it is for a slight improvement upon prior efforts which have met 
 with more or less success, its range of equivalents should be correspondingly 
 limited- and when the patent is for described means or mechanism to ac- 
 complish a specified improvement, it will be limited to the particular means 
 described in the specification, or their clear mechanical equivalents.— 
 Electric Protection v. American, 184 Fed. 916; 107 C. C. A. 238. 
 
 Union t». Diamond, 162 Fed. 148; Boyd v. Janesville, 158 U.S. 260; Knapp 
 t;. Morss, 150 U. S. 221; National v. Interchangeable, 106 Fed. 693. 
 
 § 378. Range of. 
 
 The main contention of the defendant is that if a patentee in describing 
 one feature of his invention, as, for example, a stop, says that it may consist 
 of two forms and in his claim he describes only one form, his claim is thereby 
 limited to that form, and cannot be construed to coyer the other form as 
 an equivalent. In support of this proposition the defendant cites ^ 4888 
 T{ S and a lone list of cases, from which it is sufficient to refer to the Ian- 
 guage of the SupCe Court in Miller .. Brass Co. 104 U. S. 350, 352. While 
 the rule laid down in Miller v. Brass Co. and many other cases cited by the 
 defendant has long been recognized, we do not think it has any application 
 to the case at bar. This is not a case where the patentee, having failed to 
 include in his claim a feature of his invention described in his specification, 
 is s-eking to hare that feature read into his claim; but it is a case where the 
 claim includes one form of the feature described in the specification, and 
 where the only question is whether the claim does not also cover, under the 
 doctrine of equivalents, the equivalent form described in the specification. 
 — Whitin V. Houghton, 178 Fed. 444; 101 C. C. A. 344. 
 
 This question of breadth of equivalents again depends upon the extent 
 of the advance which the inventor has made m the art. — bly v. Kusseil, 
 189Fed. 61; HOC. C. A. 62.5. . .. ou 
 
 Penfield v. Chambers, 92 Fed.. 630; Bundy .. Detroit, 94 Fed^424; McSherry 
 t^. Dowagiac, 101 Fed. 716; Winans r. Denmead, 15 How. 330, Metallic v. 
 Brown, 104 Fed. 345; Vrooman v. Penhollow, 179 led. 29b. 
 
 § 379. Identity. 
 
 It is of course, true that for one thing to be the equivalent of another it 
 must perform the function of that other, and the function must be performed 
 in substantiallv the same way by the alleged equivalent as by the thing of 
 which it is alleged to be the equivalent. But it is not necessary that this
 
 958 THE FIXED LAW OF PATENTS §§381-384 
 
 function be performed in identically the same way, or to the same extent. 
 
 — Sly V. Russell, 189 Fed. 61; 110 C. C. A. 625. 
 
 ESTOPPEL. 
 
 § 381. Corporations. 
 
 That an estoppel arising out of the assignment of the patent in suit against 
 the assignor who subsequently assigns another patent to and becomes the 
 employee of a corporation does not extend to include such corporation, see 
 
 — Babcock v. Toledo, 170 Fed. 81; 95 C. C. A. 363. 
 
 Babcock v. Clarkson, 63 Fed. 607; Hall v. Conder, 2 C. B. (N. S.) 22; 
 Noonan v. Chester, 99 Fed. 90; Boston v. Woodward, 82 Fed. 97; Anieric-an 
 V. Phoenix, 113 Fed. 629; distinguishing Daniel v. Miller, 81 Fed. 1000; Time 
 Tel. V. Himmer, 19 Fed. 322; Continental v. Penderga.st,r26 Fed. 381 ; Woodward 
 V. Boston, 60 Fed. 283; Noonan v. Chester, supra; Lamb i'. Lamb, 120 Fed. 267. 
 
 The defendant Sachs is the patentee. He assigned the patent to complain- 
 ant and subsequently organized the Sachs Company, of which he is a large 
 stockholder and the moving spirit. If the prior state of the art were such 
 that his assertions of novelty were fallacious, there would be no real inven- 
 tion disclosed, his claims would be unwarranted, and his patent void. But 
 in a suit for infringement brought by the person to whom the patentee sold 
 his patent at its face value, against him and the company he has created 
 and controls, an inquiry into the prior art for such purpose is not to be under- 
 taken. — Johns-Pratt v. Sachs, 175 Fed. 70; 99 C. C. A. 92. 
 
 Nor is such estoppel of Parkinson (who effected the sale of the patent) 
 to be evaded by his organizing the Furnace Company and operating through 
 it. It and his associates interested in said corporation were in privity with 
 him and are equally estopped. — Johnson v. Western, 178 Fed. 819; 102 
 C. C. A. 267. 
 
 Force v. Sawyer-Boss, 111 Fed. 902; Siemens -Halske v. Duncan, 142 
 Fed. 157; Mellor v. Carroll, 141 Fed. 992; N. Y. Phonograph v. National, 163 
 Fed. 534; Mathews v. Lister, 154 Fed. 490; Nat. Recording v. International, 
 158 Fed. 824; Continental Wire v. Pendergast, 126 Fed. 381; Woodward v. 
 Boston, 60 Fed. 622. 
 
 § 384. Licensor or Former Owner. 
 
 Parkinson participated with Johnson in the sale of the patent to Burns 
 for complainant, and Parkinson received one-eighth of the consideration 
 therefor. He, and all in privity with him, are estopped from now alleging 
 the invalidity of the patent. The estoppel against the assignor is not based 
 simply upon the covenants expressed and implied in his conveyance. It 
 rests upon the broad and equitable doctrine that one who receives and 
 retains a portion of the fruits of a sale of a patent which he has assisted in 
 making to another is estopped from claiming that such patent is invalid 
 and worthless. This principle applies to Parkinson as well as Johnson. 
 The equitable garment fits each alike and they must each wear it. — Johnson 
 V. Western, 178 Fed. 819; 102 C. C. A. 267. 
 
 Daniel v. Miller, 81 Fed. 1000; Force v. Sawyer-Boss, 111 Fed. 902; Time 
 Te!. V. Himmer, 19 Fed. 322; Siemens-Halske v. Duncan, 142 Fed. 157. 
 
 FmIs: The president of defendant company had been a stockholder and 
 officer of complainant company and gone into other business. Defendant 
 company's predecessor sought and engaged him to reorganize and manage 
 its business, which he did by financing the defendant company, taking for 
 cash a considerable block of stock. Previously, complainant company had 
 sued defendant company's predecessor on this"^ same patent and the patent
 
 §385 ESTOPPEL 959 
 
 was held invalid (Gio -Wernicke v. Macej^, 119 Fed. 696). On this suit 
 complainant claims estoppel against the present company defendant to ques- 
 tion the validitj^ of complainant's patent issued to the president of defendant, 
 formerly assignee-patentee to complainant and officer of complainant. 
 Defendant sets up the former suit against its predecessor as res judicata, 
 and complainant contends that defendant is estopped from raising such 
 defense in bar. Held : No estoppel and res judicata. — Macey v. Globe- 
 Wernicke, 180 Fed. -401 ; 103 C. C. A. 547. 
 
 Bostoa V. Woodward, 82 Fed. 97; Regent v. Penn, 121 Fed. 80; Babcock v. 
 Toledo, 170 Fed. 81 ; Belknap v. Schild, 161 U. S. 10. 
 
 The court ruled that Christopherson (an inventor-assignor) by his assign- 
 ment was to be regarded as representing that the patent was' what it pur- 
 ported to be, was valid in accordance with its terms, that it was to be fairly 
 construed, and that the prior art could not be invoked to limit its terms. 
 This is the length to which the rule may be properly carried. It has never 
 been held to estop an assignor from thereafter employing his genius in a 
 new field of the same art, nor to deny him the fruits of such effort. It does 
 not preclude him from denying infringement, nor of invoking the prior art 
 for the purpose of showing that no infringement in fact exists. — Leather 
 Grille v. Christopherson, 182 Fed. 817; 105 C. C. A. 249. 
 
 Siomens-Halske v. Duncan, 142 Fed. 157; Noonan v. Chester, 99 Fed. 90, 
 
 § 385. Owner of Patent or Licensee. 
 
 Hibbard, the licensor to the old company, brought suit against the 
 new company for infringement, claiming that the assignment did 
 not pass to the new company from the old company, which contention 
 was upheld. Held: If the suit were against the old company for further 
 royalties, that company would be estopped from contending that the de- 
 vices stamped and put forth by it as the patented devices were not in truth 
 within the patents. But as to the new company, Hibbard cannot both deny 
 the relation of licensor and licensee and also claim the benefit of the estoppel 
 that would arise from the relationship. — Niagara v. Hibbard, 179 Fed. 
 844; 103 C. C. A. 330. 
 
 Sproull V. Pratt, 97 Fed. 807; Piaget v. Headley, 108 Fed. 870. 
 
 The defendant was a licensee under the patent in suit for the life of the 
 patent, had paid royalties in full and was bound to pay royalties in the future 
 if the patent was held valid. In a suit against a third party this defendant, 
 by permission of the court, filed a brief in that case attacking the validity 
 of the patent. Held: These royalties were large; the monopoly itself, if 
 upheld, was extremely valuable; and the question whether the monopoly 
 had been judicially determined, was, therefore, a matter of deep consequence 
 to appellee (the licensee). Why may not the appellee, without violation of 
 its contract, or violation of any ethical duty it owes to appellant, contribute 
 toward clarifjdng the vision of the Court by which this judicial determina- 
 tion is to be made both right and final? We see nothing in the conduct of 
 appellee that is a renunciation, repudiation or forfeiture of its contract; on 
 the contrary we see simply a precaution upon its part that the judgment of 
 the Court, upon which its additional obligations and its additional advan- 
 tages alike depend, shall be as free from error as a full discussion of the record 
 before the Court can make the judgment, that is to follow, free from error. 
 — Comptograph v. Burroughs, 183 Fed. 321; 105 C. C. A. 533. 
 
 Note: In my opinion, this is not only bad law and bad ethics, but it is an 
 utter misinterpretation of the authorities cited. Such a rule opens wide the
 
 960 THE FIXED LAW OF PATENTS §§386-387 
 
 door for a licensee to entirely avoid the rule of estoppel by coming in behind 
 a third party, furnishing the sinews of war, and defeating a patent whenever 
 it is to the interest of the licensee so to do. The " clarifying the vision of 
 the Court " is too screamingly specious for argument. 
 
 § 386. Privity. 
 
 The president of the defendant companies testified " we have undertaken 
 to assist in bearing the burdens of this defense, and have contributed to 
 the defense financially and otherwise; " but it was not shown that, as be- 
 tween the present and former defendants, either company had the right 
 to intermeddle in any way in the conduct of the case. Tiie companies would 
 have been glad to see the patent declared void, and were willing to pay 
 something to that end. That was all, and that did not make them privies. 
 — Rumford v. Hygienic, 125 U. S. 156; 54 L. Ed. 137; 30 S. Ct. 45. 
 
 Litchfield v. Goodnow's, 123 U. S. 549. 
 
 This action is brought against a copartnership consisting of three members. 
 The two members of the firm who took part, respectively, in the two prior 
 actions are not shown to have acted for or represented the firm or their co- 
 partners in so doing, or to have had other interest in such litigation than 
 such as belonged to them in their attitude of stockholders in the respective 
 corporations defendant therein. The parties, therefore, are not the same, 
 and the judgments do not estop the present defendants. — Wilgus v. Ger- 
 main, 72 Fed. 773; 19 C. C. A. 188. 
 
 In order that one not a party may be precluded by a former adjudication, 
 he must have been privy to the former proceedings, or connected therewith 
 in such a way that he had the right to control the litigation, or at least the 
 right to appear by counsel and make motions and offer evidence and exam- 
 ine witnesses. To prove that one was a witness in a cause, and took a lead- 
 ing part in the defense thereof, without further information concerning the 
 nature of his connection therewith, is not equivalent to proof that he had or 
 assumed the right to control the proceedings, or to adduce or cross-examine 
 witnesses, or to appeal from the judgment; and there is no such privity 
 between a private corporation and its stockholders that a judgment obtained 
 against the one is res judicata as to the other. — Wilgus v. Germain, 72 Fed. 
 773; 19 C. C. A. 188. 
 
 Miller v. Tobacco Co. 7 Fed. 92; Robbins v. Chicago, 4 Wall. 657; Litchfield 
 V. Goodnow's, 123 U. S. 549; Hawkins v. Glenn, 131 U. S. 329; Schrader v. 
 Bank, 133 U. S. 67; Glenn v. Liggett, 135 U. S. 533; Hawes v. Petroleum, 101 
 Mass. 385. 
 
 That although a party may have paid the attorney in the former suit, 
 and paid part or all of the costs, so long as it does not appear that he had 
 control of the litigation, he is not bound by it, see — General v. Morgan- 
 Gardner, 168 Fed. 52; 93 C. C. A. 474. 
 
 § 387. Miscellaneous. 
 
 The patentee, in prosecuting his application, distinguished his applica- 
 tion from a prior patent to him. Having purchased a still earlier applica- 
 tion of another inventor, he incorporated such broader claims therein. It 
 was sought to extend the estoppel to such earlier case. Held: This would 
 carry the doctrine of estoppel or abandonment by reason of conceding the 
 soundness of departmental criticisms far beyond any recorded decision, 
 and we cannot assent to any such extension. — Armstrong v. Belding, 174 
 Fed. 410; 98 C. C. A. 361.
 
 §§ 389-398 EVIDENCE 961 
 
 Defendant acknowledged infringement and agreed not to infringe further, 
 and afterwards put out a somewhat different device which it contended was 
 not an infringement. As to the claimed estoppel, held: While defendant 
 may not dispute the validity of the patent, nor such a construction of its 
 claims as will cover kettles of the type it first made, it may show if it can, 
 that those of the later type are not within the patent; and in considering 
 this question the court may look into the prior art and construe the specifi- 
 cations in the light of the file wrapper, in order to determine whether the 
 new style of kettle also infringes the patent. — Am. Specialty v. New Eng- 
 land, 176 Fed. 557; 100 C. C. A. 193. 
 
 The defendants have adopted this construction and obtained whatever 
 advantage in it there may be, and they cannot dispute its patentable utiUty. 
 — Cummer v. Atlas, 193 Fed. 993; 113 C. C. A. 611. 
 
 Diamond Rubber Tire v. Consolidated, 220 U. S. 428. 
 
 EVIDENCE. 
 
 § 389. Anticipation — Prior Art. 
 
 Proof was taken by the complainant, but none by the respondents, al- 
 though by their answer they had specified by name and place 60 prior uses, 
 and in addition cited 70 patents as anticipations. In the absence of proof 
 on the respondents' part, the case is therefore before us as if on demurrer. 
 — Greenwald v. Enochs, 183 Fed 583; 106 C. C. A. 351. 
 
 § 390. Anticipation — Prior Patent or Publication. 
 
 The patent was not pleaded in the answer, and cannot be used as an antic- 
 ipation. It may be considered as showing the prior art. — Roth v. Harris, 
 168 Fed. 279; 93 C. C. A. 581. 
 
 The record discloses attempts to demonstrate their actual identity (the 
 chemical constituency of the patent in suit and the prior patent), but these 
 are not produced in such shape as to avail the appellant. Courts place little 
 weight on ex parte demonstrations in any case, but especially is this true 
 wath regard to experiments in chemicals. — Kuehmsted v. Farbenfabriken, 
 179 Fed. 701; 103 C. C. A. 243. 
 
 §391. Anticipation — Prior Use. 
 
 It is well settled that the defense of prior use must be established by evi- 
 dence which proves it beyond a reasonable doubt. — Parker v. Stebler, 177 
 Fed. 210; 101 C. C. A. 380. 
 
 Turrill v. Railroad, 1 Wall. 491. 
 
 § 395. Depositions. 
 
 That where the answers to interrogatories in a deposition are not respon- 
 sive and the interrogator has had opportunity to secure correction, such 
 evidence maybe admitted, see — Varley v. Ostheimer, 186 Fed. 171; 108 
 C. C. A. 303. 
 
 § 398. Expert. 
 
 We should regret to be compelled to decide a case by the acceptance or 
 rejection of a theoretic explanation upon which it still is possible that authori- 
 ties in science disagree. — Steward v. American, 215 U. S. 161; 54 L. Ed. 
 139; 30 S. Ct. 46.
 
 962 THE FIXED LAW OF PATENTS §§ 400-42U 
 
 It is only where the court requires the explanation of technical terms or 
 the language of any particular art to enable it to understand a specification 
 that the evidence of those expert in the art is pertinent. The province of 
 such expert testimony is to remove uncertainty where the terms used are 
 obscure, and is not to create uncertainty where the language is plain. — 
 Iirupp V. Midvale, 191 Fed. 588; 112 C. C. A. 194. 
 
 § 400. Invention — Fact of. 
 
 To find any substantial validity in these claims, we must determine 
 whether invention was involved in such adaptation. Such a (jucstion is 
 essentially one of fact. — Herman v. Youngstown, 191 Fed. 57!>; 112 C. C. A. 
 185. 
 
 National Tube v. Aikin, 1G3 Fed. 2.54; Electric v. Wcstinghousc, 171 Fed. 
 83; Morgan y. Alliance, 17(' Fed. 100. 
 
 § 403. Law Actions — Facts - For Court. 
 
 That the question of range of equivalents in a given case is a question of 
 law to be determined by the court and given to the jury as instruction, see 
 — Holt V. Best, 172 Fed. 409; 97 C. C. A. 107. 
 
 § 404. Law Actions — Facts — For Jury. 
 
 Where the determination of the question of invention was left with the 
 jury, we think it clear that nothing tending to show the true state of the art 
 at the date of the claimed invention should be excluded from their consider- 
 ation. — Holt V. Best, 172 Fed. 409; 97 C. C. A. 107. 
 
 Rob. Pat. § 1020; Aron v. Manhattan, 132 U. 8. S4; Ponn. Rv. v. Truck Co. 
 110 U. S. 490; Benbow-Brammer v. Richmond, 159 Fed. IGl. 
 
 Upon conflicting proof it is a question for the jury to pass upon whether 
 a patented invention is of a primary character and the ]>atent a " pioneer 
 patent." — Transit Development Co. v. Cheatham, 194 Fed. 903; 1 14 C. C. A. 
 599. 
 
 Royer v. Schultz, 135 U. S. 319. 
 
 That questions of invention and of infringement, in the presence of con- 
 flicting proofs, are for the jurv, see — Transit Development Co. v. Cheat- 
 ham, 194 Fed. 963; 114 C. C.'A. 599. 
 
 Heide v. Panoulias, 188 Fed. 915; Bischoff v. Wethered, 76 U. S. 812. 
 
 EXPERIMENT. 
 
 § 414. Experimental Use. 
 
 The use was not an abandoned experiment but an abandoned attempt 
 to induce the railway company to equip the cars with the Brayton engine. 
 The perfected structure was capable of practical use, although there was 
 much room for improvement. — Columbia v. Duerr, 184 Fed. 893; 107 
 C. C. A. 215. 
 
 FOREIGN PATENT. 
 
 § 420. General Rulings. 
 
 In ascertaining the true scope and meaning of an invention, the impor- 
 tance of looking at the claims is recognized in England. And the necessity 
 for doing so in this country is found in the established rule. And it would 
 seem that the rule in this behalf prevailing in this country should be applied 
 to a foreign patent as well as to a domestic patent, where the court is called
 
 §421 FOREIGN PATENT 963 
 
 upon to determine the effect of the duration of the grant of tiie former upon 
 tliat of the latter. — Acme Acetylene v. Commercial, 192 Fed. 321; 112 
 C. C. A. 573. 
 
 Presto Gear v. Orme, 18 R. P. C. 17; Fulton Pat. 98; Keystone v. Phoenix, 
 95 U. S. 274; Railroad v. Mellon, 104 U. S. 112; Leeds v. Victor, 213 U. S. 301. 
 
 §421. Expiration of. 
 
 The passage (A patent cannot be exempt from the operation of the law by 
 adding some new improvements to the invention; and cannot be construed 
 as running partly from one date and partly from another, Siemen v. Sellers, 
 123 U. S. 276) must be construed by what precedes it. It was said there 
 was no essential difference between the patents. " They described the same 
 functions in all essential particulars," is the language used. " The princi- 
 pal invention," therefore, was " the same in both," and the improvements, 
 which it was asserted the American patent contained, did not destroy its 
 essence or its identity with the English patent; necessarily, therefore, did 
 not save it " from the operation of the law." And the court meant no more 
 than that. It was not said that a patentable improvement could not be made 
 which could be secured by a patent which would endure beyond the expira- 
 tion of a prior foreign patent for that which was improved. Such a ruhng 
 would contravene the right given by the statute. § 4886 provides 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, * * * may * * * obtain a patent therefor." The improvement 
 would 'be the invention and would endure for the period given to it by law. 
 Besides, a patent may embrace more than one invention. A process and 
 an apparatus by which it is performed are distinct things. They may be 
 found in one patent; they may be made the subject of different patents. 
 So may other dependent and related inventions. If patented separately, a 
 foreign patent for either would not affect the other. Why should such effect 
 follow if they are embraced in the same patent? — Leeds v. Victor, 213 U. S. 
 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 Steinmetz v. Allen, 192 U. S. 543; distinguishing Siemens v. Sellers, 123 US. 
 27G; Western v. Citizens, 106 Fed. 215; Sawyer v. Carpenter, 133 fed. 238; 
 affd. 143 Fed. 976; Thomson-Houston v. McLean, 153 Fed. 883. 
 
 A French patent for the same invention was previously issued and two 
 additions were applied for prior to the filing of the U. S. application. Nor- 
 mally, under § 4887, as then applicable, the U. S. patent would have expired 
 with the original French patent, which, under the French law, carried the 
 additions with it. The French patent and its additions were held void by 
 the French courts, thus wiping out the French grant. While Judge Gray 
 held that the voidance of the French patent by the. courts relieved the U. b. 
 patent from its operation, and while Judge Buffington dissented in a separate 
 opinion, holding that the U. S. patent was limited from the day of its grant- 
 ing by the existence of the French patent then valid on its face. Judge Arch- 
 bald concurred in the result reached by Judge Gray, but upon the ground 
 that the treaty of Brussels took the U. S. patent out from under the opera- 
 tion of § 4887, holding: The article must be regarded as self-executing. A 
 contrary opinion was given by the Attorney General as to the treaty of 1883. 
 19 Op. Atty. Gen. 275. And this was followed by the Patent Office. Ex 
 parte Zwack, 76 O. G. 1855; Butterworth v. Boral, 97 O. G. 1596. It was 
 accepted also by the Court of Appeals, D. C. Parker v. Appert, 75 O G. 
 1201; Rousseau v. Brown, 104 0. G. 1120. In United v. Duplessis, 155 Fed. 
 842, also, it was held by the Court of Appeals for the First Circuit, that, 
 although article 4 bis on its face was self-executing, it was controlled by 
 implication by the passage by Congress of act Mar. 3, 1903, to give effect
 
 964 THE FIXED LAW OF PATENTS §421 
 
 to it. Taking treaty and acts of Congress together, tiierefore, the case stands 
 this way: By §4887 a domestic patent for the same invention previously 
 patented abroad was made dependent upon tlie term of such foreign patent, 
 by which it was Umited. The act of Alar. 3, 1897, remo\-ed this restriction, 
 but provided (§ 8) that it sliouid nut apply to patents granted prior to Jan! 
 1, 1898, nor to appUcations tiled before tliat on wliich patents were subse- 
 quently granted. This prevented the patent in suit, for the time, from hav- 
 ing the benefit of this legislation. Then the additional act of Brussels of 
 1900 was ratified, by wiiich, according to art. 4 bis, there was a complete 
 unfettering of foreign and domestic patents for the same invention; and 
 this by express terms was made to apply to existing patents. Such was the 
 state of the law and such the position of the patent in suit when the act of 
 Mar. 3, 1903, came into existence. As just stated, this could not undo what 
 had already been done, nor put back the patent into its former dependent 
 condition. Having become entitled to the full term of 17 years according 
 to patents generally, it could not thereafter be again restricted. Nor did 
 the act of 1903 undertake to do so. It simply re-enacted § 4887 as amended 
 by the act of 1897, leaving out the limitation which time and treaty had 
 doubly disposed of, and introducing certain provisions in conformity with 
 the treaty. — Hennebique v. Myers, 172 Fed. 869; 97 C. C. A. 289. 
 
 Note: It will thus be seen that the Third and First Circuits are at variance 
 upon the construction of the legislation as to this treaty, and that this case 
 presents two unsettled questions to be passed upon by the Supreme Court. 
 
 A French patent for the same invention was previously i-ssued and two 
 additions were applied for prior to the filing of the U. S. application. Nor- 
 mally, under § 4887 as then applicable, the U. S. patent would have 
 expired with the original French patent, which, under the P>ench law, 
 carried the additions with it. The French patent and its additions 
 were held absolutely void by the French courts, thus wiping out the foreign 
 grant. Held: The words " foreign patent " and " patented in a foreign 
 country," in § 4887, must be taken to connote matters of substance, and 
 not of mere form, and the French patent and the addition thereto, though 
 regular in form, conferred no such privilege or monopoly as would bring 
 them within the purview of the section referred to. They conveyed to the 
 patentee no substantial rights, and secured to him no valuable monopoly. 
 Hennebique v. Myers, 172 Fed. 869; 97 C. C. A. 289. 
 
 Note: This opinion of Judge Gray is rigorously dissented to by Judge 
 Buflfington in a separate opinion, and is concurred in as to results by Judge 
 Archbald in a separate opinion, but on wholly different grounds, viz. that 
 by the treaty of Brussels, art. 4 bis, the U. S. patent was relieved from the 
 operation of § 4887 as it stood at the time the U. S. patent was applied for, 
 and thus disagreeing with and refusing to follow the First Circuit in United 
 V. Duplessis, 155 Fed. 842. It would seem that two questions are here raised 
 and left in dispute which must be passed upon by the Supreme Court. 
 
 Clearly, the patent granted and so limited in this country must be for 
 an invention previously patented in a foreign country, and they must in 
 essential features be the same. — Acme Acetylene v. Commercial, 192 Fed. 
 321; 112 C. C. A. 573. 
 
 Leeds v. Victor, 213 U. S. 301; Siemens v. Sellers, 123 U. S. 276; Westing- 
 house V. Stanley, 138 Fed. 823.
 
 §§ 422-434 FUNCTION 965 
 
 § 422. Lapse of. 
 
 That the lapse or forfeiture of a foreign patent by reason of failure such 
 as failure to extend does not affect the domestic patent for the same inven- 
 tion, see — Leeds v. Victor, 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 Pohl V. Anchor, 134 U. S. 381. 
 
 FUNCTION. 
 
 § 426. Patentability. 
 
 It is undoubtedly true, and all xhe cases agree, that the mere function or 
 effect of the operation of a machine cannot be the subject of a lawful patent. 
 - Expanded ?. Bradford, 214 U. S. 366; 53 L. Ed. 1034; 29 S. Ct. 652. 
 
 GOVERNMENT. 
 
 § 428. Statutory Provisions. 
 
 By act of June 25, 1910, the following provision was made as " additional 
 protection for owners of patents: '' , . , , , + . ^f +. ^ 
 
 That whenever an invention described m and covered by a patent ot the 
 United States shall hereafter be used by the United States without hcense 
 of the owner thereof or lawful right to use the same, such owner may recover 
 reasonable compensation for such use by suit in the court of claims: Pro- 
 vided however, That said court of claims shall not entertain a smt or award 
 compensation under the provisions of this act where the claim for compensa- 
 tion is based on the use by the United States of any article heretof op owned 
 leased, used by, or in the possession of, the Umted States: Provided, further 
 That in any such suit the United States may avail itself of any and all 
 defenses, general or special, which may be pleaded by ^ defendant in an 
 action for infringement, as set forth in title sixty of the Revised Statutes 
 or otherwise: And pro^dded further. That the benefits of this act shall not 
 inure to anv patentee who, when he makes such claim, is m the employment 
 or service of the government of the United States; or the assignee of any 
 sich patentee; nor shall this act apply to any device discovered or invented 
 by such employee during the time of his employment or service. 
 
 IMPROVEMENT. 
 
 § 430. Statute Authority and General Statement. 
 
 Invention, in the nature of improvements, is the double mental act of 
 discernhinn existing machines, or processes or articles, some deficiency, 
 and porting out the means of overcoming it. -General Electric .. San- 
 gamo, 174 Fed. 246; 98 C. C. A. 154. 
 
 Note- This clear-cut definition ought to induce the Patent Office to correct 
 its loose and improper use of the term " improvement. 
 
 §434. General Rule. 
 
 Singer's invention may not be a great or a pioneer one. That invention 
 and the prior art present one of those causes in which several inventors pro- 
 duce by different processes different compositions which collect dust with 
 varying degrees of operative success. Under such circumstances, each 
 Wntor is entitled to his own method and composition so long as they differ 
 rom hose of his competitors, a.d do not include theirs. Dissenting opinion 
 of Judge Sanborn in - Cotto-Waxo v. Perolm, I80 Fed. 267; 107 C. C. A. 
 
 373 
 
 Railway v. Sayles, 97 U. S. 554; McCormick .. Talcott, 20 How. 402.
 
 QQQ THE FIXED LAW OF PATENTS §§ 4a5-456 
 
 § 435- Generic. 
 
 Whether an invention be a pioneer, or, being of small importance, is ranked 
 at the foot of the line, the rule is that each shall be judged on its own merits; 
 that is to say, according to the advance it haa made in novelty and utility 
 beyond the former art. And in its own peculiar field it is not upon this record 
 to be denied that this invention was the first, and for that reason and be- 
 cause it has proved useful to the public, should be dealt with as one standing 
 at the head of its line and entitled to be i:)rotectcd accordingly. — \'rooinan 
 V. Pcnhollow, 179 Fed. 296; 102 C. C. A. 484. 
 
 McSherry v. Dowagiac, 101 Fed. 716; Penfield v. Chambers, 92 Fed. 639; 
 Paper Bag Case, 210 U, S. 405. 
 
 § 440. Patentability. 
 
 And it (the law) recognizes degrees of change, dividing inventions hito 
 primary and secondary, ami as they are, one or the other, gives a proportion- 
 ate dominion to its patent grant. In other words, the invention may be 
 broadly new, subjecting all that comes after it to tribute; it may Ijc the 
 successor, in a sense, of all that went before, a step only in the march of im- 
 provement, and limited, therefore, to its precise form and elements, as the 
 patent in suit is conceded to be. In its narrow and humble form it ma}- not 
 excite our wonder as may the broader or pretentious form, but it has as firm 
 a right to protection. — Diamond Rubber v. Consolidated, 220 U. S. 428; 
 55 L. Ed. 527; 31 S. Ct. 444. 
 
 Chicago V. Sayles, 97 U. S. 554. 
 
 § 441. Scope — Limitations. 
 
 Where an art is crowded and so old that no pioneer patent exists therein 
 and many inventors have conceived and made machines, coml)inations and 
 improvements in it which accomplish the desideratum with varying degrees 
 of success, each is entitled to his own machine or combination or improve- 
 ment, so long as it differs from those of his competitors and does not include 
 theirs. — Wayne v. Benbow-Brammer, 168 Fed. 271; 93 C. C. A. 573. 
 
 Railway v. Sayles, 97 U. S. 554; McCormick v. Talcott, 20 How. 402; 
 Stirrat v. Excelsior, 61 Fed. 980; National v. Interchangeable, 106 Fed. 693. 
 
 When each of two inventors improves upon the former art, each in his 
 own distinct and separate way, they shall each be credited with his own 
 improvement. — Duncan v. Cincinnati, 171 Fed. 656; 96 C. C. A. 400. 
 
 Once, therefore, that an automatic cut-off was made use of in either of 
 these earlier devices, it was conclusive upon the novelty of the idea upon 
 everyone coming after; and the only thing open to later inventors was the 
 particular means that might be adopted for the accomplishment of this 
 pm-pose. — Elliott v. Youngstown, 181 Fed. 345; 104 C. C. A. 175. 
 
 INFRINGEMENT. 
 
 §452. Avoidance — Adding Elements or Functions. 
 
 That mere addition of an element to avoid a combination \vith no change 
 of function does not avoid infringement, see — Western Telephone v. Swe- 
 dish-American, 194 Fed. 104; 114 C. C. A. 182. 
 
 § 456. Avoidance — Omitting Element. 
 
 If any essential element of the combination is omitted from an alleged 
 infringing device without substituting therefor its clear mechanical equiva-
 
 §§ 457-459 INFRINGEMENT 967 
 
 lent, the charge of infringement is not sustained. — Acme v. Meredith, 183 
 Fed. 124; 105 C. C. A. 420. 
 
 Fay V. Cordesman, 109 U. S. 408; Boyd v. Janesville, 158 U. S. 260; 
 Cimiotti V. American, 198 U. S. 399; Fames v. Godfrey, 1 Wall. 78; Rowell v. 
 Linsay, 113 U. S. 97; Union v. Diamond, 162 Fed. 148. 
 
 If the defendants do not use the modified Brayton engine and do use the 
 modified Otto engine, tliey escape infringement unless the latter is an equiv- 
 alent of the former. It is well settled that to establish infringement of a 
 combination, the use of ever}^ element of the combination must be shown, — 
 Columbia v. Duerr, 184 Fed. 893 (note, p. 910) ; 107 C. C. A. 215. 
 
 The use of any two of these parts only, or of two combined with a third, 
 which is substantially different in form or in the manner of its arrangement 
 with the others, is, therefore, not the thing patented. It is not the same 
 combination if it substantially differs from it in any of its parts. — Electric 
 Protection v. American, 184 Fed. 916; 107 C. C. A. 238. 
 
 Fames v. Godfrey, 1 Wall. 78. 
 
 It is settled that a claun for a combination is not infringed if any one of 
 the elements is omitted without substitution of an equivalent. — Union 
 Paper Bag v. Advance, 194 Fed. 126; 114 C. C. A. 204. 
 
 Citing old and familiar cases. 
 
 § 457. Avoidance — Transposition of Parts. 
 
 Assuming that the defendant makes the asserted transposition, which is 
 bv no means clear on the proof, we are satisfied that infringement is not 
 thus avoided. — General Electric v. Hill- Wright, 174 Fed. 996; 98 C. C. A. 
 566. 
 
 § 458. Avoidance — Miscellaneous Conditions. 
 
 Appellant complains because after the decision in the former case respond- 
 ent deliberately set about devising, with the aid of patent experts, a machine 
 which would produce the Bates fence, without infringing the Bates patent. 
 It is sufficient to answer that complaint in the language of Mr. Justine Grier 
 in Burr v. Durj'ee, 1 Wall. 531 : " Every man has a right to evade a patent, 
 provided he does not invade the rights of the patentee." — Am. Steel & 
 Wire V. New Jersey, 194 Fed. 117; 114 C. C. A. 195. 
 
 § 459. Change of Form — Colorable. 
 
 Mere changes of the fonn of a device do not avoid infringement, where the 
 principle of the invention is taken, unless the form modified is the distm- 
 guishing characteristic of the invention. — Wayne v. Benbow-Brammer, 
 168 Fed. 271; 93 C. C. A. 573. 
 
 National v. Interchangeable, 106 Fed. 693; Columbus v. Robbins, 64 Fed. 
 384. 
 
 Mere changes of form or composition of a device or of some of the mechan- 
 ical elements of a combination wiU not avoid infringement, where the prin- 
 ciple or mode of operation of the patented improvement or combination is 
 adopted, unless the form or composition is the distinguishing characteristic 
 of the irlvention. — Owens v. Twin City, 168 Fed. 259; 93 C. C. A. 561. 
 
 Columbus V. Robbins, 64 Fed. .384; New Departure w Bevin 64 Fed. 
 859; Machine v. Murphy, 97 Fed. 125; Winans v. Denmead 15 How. 342; Rob. 
 Pat! § 141; Blandv v. Griffith, Fed. Cas. 1.529; Bonnette v. Koehler, 82 Fed. 431; 
 National v. Interchangeable, 106 Fed. 693.
 
 958 THE FIXED LAW OF PATENTS §§460-469 
 
 Mere changes of the form of some of the mechanical elements of a combi- 
 nation secured by patent will not avoid infringement, where the principle of 
 the patented invention is adopted, unless the form ot the elements changed is 
 the distinguishing characteristic of the invention Dissenting opinion of San- 
 born, J. in — Electric Protection v. American, 184 led. 91b; 107 C. C. A. 
 
 238 
 
 Watch Co. V. Robbins, 04 Fed. 384; New Departure c. lievin 64 Fed. 859; 
 Kinloch v. Western, 113 Fed. 652; Lourie v. Lenhart, 130 l-ed. 122. 
 
 § 460. Change of Form — Location. 
 
 It is evident, therefore, that the respondent has availed itself of the sub- 
 stance of Conley's device by a mere shifting of parts, which in the shifted 
 position still exert the identical functions of the device Conley hrst con- 
 tributed to the art. It follows, therefore, the respondent must be held to 
 infringe. — Conley v. King Bridge, 187 Fed. 137; 109 C. C. A. 412. 
 
 § 461. Change of Form — Modification. 
 
 Infringement is not avoided by the fact that one of the integral elements 
 is separated into two or more distinct parts, so long as the function and 
 operation remain substantially the same. — Kings County v. U. b. Consoli- 
 dated, 182 Fed. 59; 104 C. C. A. 499. 
 
 Kalamazoo v. Duff, 113 Fed. 264; Bundy v. Detroit, 94 Fed. 524; Brammer 
 V. Witte, 159 Fed. 726. 
 
 § 462. Change of Form — Number of Parts. 
 
 The first element of the claim is a frame, and any one who uses it in com- 
 bination with the other elements is an infringer, whether the frame is com- 
 posed of one piece or fifty. — Waterbury v. Aston, 183 Fed. 120; 105 C. C. A. 
 410. 
 
 § 468. Combination — Equivalents. 
 
 We have seen De Bange describe what he conceived to be the best form 
 of his invention, and contemplated that it could be represented in other 
 forms and proportions. This, however, was unnecessary, for the law would 
 secure him against imitation by other forms and proportions. — United 
 States V. Societe Anonyme &c. 224 U. S. 309; 56 L. Ed. 224; 32 S. Ct. 479. 
 
 Winans v. Denmead, 15 How. 330; Hotchkiss v. Greenwood, 11 How. 248; 
 Western Electric v. LaRue, 139 U. S. 601. 
 
 The use of the tang in question in place of the lower central gripper does 
 not amount to the substitution of a mechanical equivalent; for that would 
 be to treat the paper made into diamond folds by the machine as an element 
 of the patent. — Union Paper Bag v. Advance, 194 Fed. 126; 114 C. C. A. 
 204. 
 
 Morgan v. Albany, 152 U. S. 425; Am. Tobacco v. Streat, 83 Fed. 700. 
 
 § 469. Combinations — Identity. 
 
 A patent for a mechanical combination is not infringed except by a device 
 containing all the elements of that combination. The elements of the in- 
 fringing device must be the very elements of the patented combination or 
 clear mechanical equivalents thereof . — Ohl v. Falstrom, 175 Fed. 67; 99 
 C. C. A. 89. 
 
 A combination claim is never infringed, except by the use of that which 
 embodies every element of the combination or its equivalent. — Morton 
 Trust V. Standard, 177 Fed. 931; 101 C. C. A. 211.
 
 §§ 474-477 INFRINGEMENT 969 
 
 § 474. Contributory — Furnishing Material. 
 
 The case (Morgan v. Albany, 152 US. 425) has no P^^ciP^^ o™f n|ng 
 aoDhcable to the case at bar. The disc is not a mere concomitant to the 
 stylus it coacts with the stylus to produce a result. To confound its active 
 oter'ationfth the mere passivity of the paper in the -echa-«"^^f^e^^^^^^^^ 
 in the Morgan Envelope Company is not only to confound e^hential clih- 
 iLctas Se by the pLnt laws, but essential ^if -Uons between^^^^ 
 different things. Besides, the lower courts found that the dibCb weie nm 
 perSle Can petitioner find justification under the "ght o repair and 
 Replacement? The sales of petitioner, as ound by the cour s bebw a^d a. 
 established by the evidence, were not to f^^^msh new records dentical with 
 those originally offered by the Victor Company, but, to use ^he language ot 
 Judge Lacombe, " more frequently in order to increase the ^Pe^oryo tunes 
 than as substitute for worn-out records." ^iie right o subs tu^^^^^^^ 
 " resupply " of an element depends upon the same test. The li<=ense gra^^ 
 
 to a purchaser of a patented combination is to P^^ff ^'^^;]^,,^^""f' ^ ^ ^o 
 so fai- as it may be affected by wear or breakage. I^^yond thi. there 1. no 
 license. - Leeds v. Victor, 213 U. S. 325; 53 L. Ed. 816; 29 S. Ct. 503. 
 Wilson V. Simpson, 9 How. 109; Chaffee v. Boston, 22 How. 21/. 
 
 § 476. Contributory — Making Elements. ^ 
 
 A combination is a composition of elements, some of which may be old 
 and otrrs new, or all old or all new. It is, however, the combination that 
 S^the nventLn, and is as much a unit in contemp ation of law as a single 
 or noncomposit; instrument. Whoever uses it .vathout permission is an 
 Sfringer of it. Whoever contributes to such use is an mfrmger of it. 
 it rafy be well here to get rid of a misleading consideration 
 It cSf make no difference as to the infringement or noninfringement of a 
 ombL^tfon that one of its elements or all of its elements are unpatented. 
 - Leeds V. Victor, 213 U. S. 325; 53 L. Ed. 816; 29 S. Ct. 503. 
 
 That building a machine which embodies a part of and inessential to the 
 carrying out of a process is infringement, see-Naylor v. Alsop, 168 led. 
 911; 94G. C. A. 315. 
 
 That furnishing material to be used in connection with an infringing de- 
 vice-such as refilling acetylene gas tanks which are patented -1. con- 
 Sbutory infringement, see - Acme Acetylene v. Commercial, 192 Fed. 
 321; 112 c. C. A. 573. , 
 
 Leeds V. Victor, 213 U. S. 325; Commercial Acetylene .^ Autolux 181 ^ecL 
 
 U. S. 55. 
 
 S 477. Contributory — Rules. 
 
 "Contributory infringement," says Judge Townsend i^.TJ^J^^^^;^^^^^^^ 
 ton .. Kelsey, " has been weU defined as th^. mtentional aiding of one p^^^^^^^ 
 by another iA the unlawful making, or selling or ^^"^^ ?/ .^^^^^PfXiegokl 
 vention." * * * There must be an intent and purpose that the article so a 
 ;m be so used. Such a presumption arises when the f^i^if^^^^ ^f ^^^^p^^J. 
 adapted to an infringing use. It may also be mjerred where its most on^^^^^^^ 
 uous use is one which will co-operate in an infringement when such sale to 
 such user is invoked by advertisement. — Henry v. Dick, 224 U. fe. i, ^o 
 L. Ed. 645; 32 S. Ct. 364. 
 
 Thomson-Houston .. Kelsey, 72 Fed 1016; Wallace .. Holmes, 29 Fed. Caj. 
 79- Risdon V. Trent, 92 Fed. 375; Thomson-Houston v. Ohio, 80 i^ed. iZl,
 
 970 THE FIXED LAW OF PATENTS §§481-490 
 
 Am. Graphophone v. Hawthorne, 92 Fed. 51G; Rupp v. Elliott, 131 Fed. 730; 
 Kalem v. Harper, 222 U. S. 55. 
 
 §481. Corporations^ — Officers of. 
 
 This court absolutely and entirely rejects the not uncommon view that 
 the fiction of distinct corporate existence can be made to serve a.s a shield 
 against the consequences of individual wrongdoing. Upon the presentation 
 of a case showing active participation by an oificer of a corporation in the 
 infringement of a patent, we have been, and shall be, not slow to disregard 
 the corporate device and enforce personal responsibility, — Weston v. Em- 
 pire, 177 Fed. 1006; 100 C. C. A. G70. 
 
 That the question of the non-liability of an officer of a corporation, in th: 
 absence of evidence, cannot be raised for the fir t time 01 appeal, see — 
 Vrooman v. Penhollow, 179 Fed. 296; 102 C. (". X. si. 
 
 § 485. Division or Union of Parts or Elements. 
 
 A mere 
 maining 
 Fed. 984; 106 C. C. A. 324. 
 
 re splitting up of the parts of a patented structure, the functions re- 
 the same, does not avoid infringement. — Nu Bone v. Spirella, 183 
 
 § 487. Evidence of — Acts of Defendant. 
 
 That where the defendant conccdcxl the validity of the patent, agreed to 
 discontinue infringement and was released from liability for its past acts, 
 the mere fact that the defendant continued to show the infringing article 
 in its advertisements thereafter — there being no other proof of infringement 
 subsequent to such release — is insufficient to warrant a preliminary injunc- 
 tion, see — Am. Specialty v. New England, 176 Fed. 557; 100 C. C. A. 193. 
 
 That the motives or conduct of a defendant when acting within his rights 
 cannot be construed as evidence of infringement, see — Twentieth Century 
 V. Taplin, 181 Fed. 96; 104 C. C. A. 156. 
 
 Bauer solved the problem; his simple changes have produced strength 
 where formerly there was weakness and stability where there was infirmity. 
 No better proof of this is needed than the tenacity with which the defendant 
 has insisted upon using the patented structure. — Simple.x Railway v. 
 Pressed Steel, 189 Fed. 70; 110 C. C. A. 634. 
 
 § 488. Evidence of — Burden. 
 
 Infringement is not only a question of fact, but it is a tort or wrong, the 
 burden of establishing which, as in all torts, clearly rests on those who charge 
 such wrong. The absence of actual proof is not met by the presence of 
 expert speculations, no' matter how voluminous. — Krupp v. Midvale. 191 
 Fed. 588; 112 C. C. A. 194. 
 
 § 489. Evidence of — Expert. 
 
 The absence of actual proof is not met by the presence of expert specula- 
 tions, no matter how voluminous. — Krupp v. Midvale, 191 Fed. 588; 112 
 C. C. A. 194. ' 
 
 § 490. Evidence of — Function. 
 
 Tx^-?"^P^^"^^^*'^ and defendant's grates each perform the same functions. 
 While it is necessary to constitute infringement that each should perform
 
 §§491-497 INFRINGEMENT 971 
 
 the same function, performance of the same function does not alone consti- 
 tute infringement. - Johnson v. Western, 178 Fed. 819; 102 C. C. A. 26/. 
 
 Eames v. Godfrey. 1 Wall. 78; Burr v. Duryee, 1 Wall. 531; Westmghouse 
 V. Boyden, 170 U. S. 568. 
 
 That identity of function or result is not evidence of i^^i^gement where 
 the means or methods employed differ, see - Kellogg v. Dean, 182 Fed. 991; 
 105 C. C. A. 545. 
 
 That while the difference between simultaneous or continuous operation 
 and successive or intermittent operation may not be proof of i^omnfnnge- 
 ment it argues therefor, see - Am. Steel & Wye v. New Jersey, 194 Fed. 
 117; 'll4 C. C. A. 195. 
 
 . §491. Evidence of — Identity. 
 
 The mere fact that the defendant's de^^ce may be within the letter of the 
 claim sued on is not conclusive proof of infringement. This ^^^^^^^/^ \^^ 
 opinion of Judge Cross in the court below (171 Fed. 666). —Gen. Electric 
 t;. Allis-Chalmers, 178 Fed. 273; 101 C. C. A. 537. 
 
 Patentable difference does not of itself tend to negative infringement. It 
 mav just as weU be based upon infringement plus improvement; and im- 
 nrovement may He in addition, simplification, or variance. - Herman v. 
 Youngsto^m, 191 Fed. 579; 112 C. C. A. 185. 
 
 § 494. Evidence of — Sufficiency. 
 
 It would seem that where there is both a method and machine patent and 
 the method is clearly patentable and the machine patent is doubtful, the 
 doub? should be resolved in favor of the defendant on the ground that 
 complatnant has adequate relief under the other patent. - General Knit 
 Fabric V. Steber, 194 Fed. 99; 114 C. C. A. 177. 
 
 & 405. Evidence of — UtiUty — Use by Defendant. 
 
 The Datent itself was e^ddence of the utility of claim 4 and the defend- 
 an?4re"opped from denying that it was of value. -Westmghouse .. 
 Wagner, 225 U. S. 604; 56 L. Ed. -; 32 S. Ct. 691. 
 
 Lehnbeuter v. Holthaus, 105 U. S. 94. 
 
 &496 Evidence of — Miscellaneous Holdings. 
 
 The last item of proof in the case is a blue-print of the machine which the 
 dJendaSsTow using. There is not a line of testimony explaimng the 
 elibit It is a Complicated drawing, and it would be highly presumptuous 
 in us to say it shows infringement. - Morton Trust .. Standard, 177 Fed. 
 931; 101C.C.A.21L 
 
 TV,o fnrt that the formulae are identical cuts little figure. A chemical 
 
 C. C. A. 243. 
 
 S 497. Generic Patent. 
 
 It i^a general rule that there is a presumption that a process or apparatus 
 .f t iftPr natent does not infringe the process or apparatus of an earlier patent 
 
 1% nf to the sar^e subiect. There is also a general rule that there is a 
 ';r:SXXltTv^c^^ or apparatus of a later patent does not iixfringe
 
 972 THE FIXED LAW OF PATENTS §§498-503 
 
 the process or apparatus of an earlier patent between which the Commis- 
 sioner of Patents has decided that there was no interference. But there is 
 an exception to this rule that where a patentee has made a primary invention 
 of a new and useful process or apparatus which accomplishes a result never 
 before produced by such a process or machine, the presum[)lion that a process 
 or apparatus of a later patent on the same subject is iov a subordinate im- 
 provement or modification of the primary invention and hence subject to 
 an infringement of the earlier patent whicli secures it, is at least as strong 
 as the presumptions of the general rules, because there are many more 
 patents for subordinate improvements and modifications of primary inven- 
 tions than there are for such inventions, and hence more probability that a 
 given process or apparatus is of the former than that it is of the latter class. 
 — Century Electric v. Westinghouse, 191 Fed. 350; 112 C. C. A. 8. 
 
 Ries V. Barth, 136 Fed. 8.50; Boyd v. Jancsville, 1.58 U. S. 2t)0; Con.solidated 
 V. Crosby, 113 U. S. 157; Morley v. Lancaster, 129 U. S. 2G3; National v. Inter- 
 changeable, 106 Fed. 693; Crown v. Aluminum, 108 Fed. 845. 
 
 § 498. By Government. 
 
 The text of this statute (Act June 25, 1910, see App. § 428) leaves no room 
 to doubt that it was adopted in contemplation of the contingency of the 
 assertion by a patentee that rights secured to him by a patent had been 
 invaded for the benefit of the United States by one of its officers; that is, 
 that such officer, under the conditions stated, had infringed a patent. The 
 enactment of the statute, we think, grew out of the operation of the prior 
 statute law concerning the right to sue the United States for the act of an 
 officer in infringing a patent, as interpreted by repeated decisions of this 
 court. — Crozier v. Krupp, 224 U. S. 290; 56 L. Ed. 771; 32 S. Ct. 488. 
 
 United States v. Palmer, 128 U. S. 262; Schillinger i-. U. S. 155 U. S. 163; 
 United States v. Berdan, 156 U. S. 552; Russel v. U. S. 182 U. S. 516; Harley 
 V. U. S. 198 U. S. 229. 
 
 § 500. Identity — Means Employed. 
 
 It does not necessarily follow that, because the separate elements un- 
 affected by their special adaptations might be found in both patents, the 
 combinations are therefore the same. — Duncan v. Cincinnati, 171 Fed. 656; 
 96 C. C. A. 400. 
 
 Westinghouse v. Boyden, 170 Fed. 537. 
 
 It is no defense to a charge of infringement of a process, a machine or a 
 combination clearly described and claimed in a patent that it, or some part 
 of it, was misnamed therein, or that the infringer had called it by a name 
 different from that applied to it by the patentee. Patents protect new and 
 useful processes, machines and combinations, whatever their names, when 
 they are clearly described and claimed in the specification. — Century 
 Electric v. Westinghouse, 191 Fed. 350; 112 C. C. A. 8. 
 
 § 503. Identity — Tests of. 
 
 To sustain the charge of infringement the infringing device must be sub- 
 stantially identical with the one alleged to be infringed in (1) the result 
 attained; (2) the means of attaining that result; and (3) the manner in 
 which its different parts operate and co-operate to produce the result. If 
 the devices are substantially different in either of these respects the charge 
 of infringement is not sustained. — Electric Protection v. American, 184 
 Fed. 916; 107 C. C. A. 238. 
 
 Machine Co. v. Murphy, 97 U. S. 120; Eames v. Godfrey, 1 Wall. 78; National 
 V. Interchangeable, 106 Fed. 693; Adams v. Lindell, 77 Fed. 432.
 
 505-510 INFRINGEMENT 
 
 973 
 
 § 505. Importation and Exportation. 
 
 The use of articles covered by a United States patent within the United 
 States can no more be controlled by foreign law than the sale can. Ihe sale 
 by a German patentee of a patented article may take it out of the monopoly 
 of the German patent, but how can it take it out of the monopoly of the 
 American patentee who has not sold? — Daimler v. Conklm, 1/0 l^ed. 70, 
 95 C. C. A. 346. 
 
 Featherstone v. Ormonde, 53 Fed. 110. 
 
 § 506. Improvement — By an Improvement. 
 
 The mechanism of defendant differs in some respects from that of the 
 patent. It is made under a later patent issued to defendant, but that cir- 
 cumstance does not necessarily negative infringement. The later patent 
 expressly states that it relates to improvements m stitch-forramg mechamsna 
 su?h as is illustrated in the patent in suit. It not infrequently happens that 
 some improvement of an older device exhibits patentable novelty, but 
 camiot be put in practice ^vnthout infringement of the ongmal device winch 
 it has unproved. — Acme-Keystone v. Dearborn, 185 Fed. 503, 107 O. U. A. 
 603. 
 
 § 507. Improvement — Of an Improvement. 
 
 That in determining whether there is infi-ingement of an improvement 
 the scope of the prior patent must be determined, see - Herman v. \oung.- 
 town, 191 Fed. 579; 112 C. C. A. 185. 
 
 § 508. Intent. 
 
 The infringement of a patented combination is complete when the com- 
 nonent part^ of the combination are made or sold, fitted to be put together 
 andTntended to be put together. The infringement m tns case was clearly 
 rdirect Sngement. The facts do not show a partia infringement m aid 
 of a complete infringement. He sold both parts of the combination ma 
 conditioTready to be put together to make a. completed structure. Hs 
 offense contai/ed aU the elements of a direct infringement. - Kreplik .. 
 Couch Patents, 190 Fed. 565; HI C. C. A. 381. 
 
 Goodyear v. Jackson, 112 Fed. 148; Bullock v. Westinghouse, 129 Fed. lOo. 
 
 S qio. License — By Licensee. . 
 
 That a patentee may effectually restrict the time, place or manner of using 
 a Rented machTne so that a prohibited use will constitute an infringement 
 /fv;! ItpTiif il V conceded * * * The books abound in cases uphold- 
 t tL^tht'o'afay^^^^^^^^ of a machine to license another to use it 
 
 subiec? to any qualification in respect of time, place, manner or purpose 
 nf use which the Ucensee agrees to accept. Any use in excess of the license 
 t^lt^oX be an i^§nging use and ^.e^^^^^^^^ be no defei.e. 
 
 — Henry v. Dick, 224 U. S. 1; 56 L. Ed. 64o, 32 Is. Ut. db4. 
 
 Note: This is final authority; see long list of cases cited by Justice Lm-ton 
 in foot-note. 
 
 r^mnlnmant and defendant entered into a cross-license agreement per- 
 Complainant ^^a aeienaa ^^ ^^^ ^^^^^ Defendant took
 
 974 THE FIXED LAW OF PATENTS §§519-536 
 
 would not be a contempt, but a breach of contract, to be remedied in an action 
 at law. — Am. Graphophone v. Victor, 183 Fed. 580; 106 C. C. A. 348. 
 Washburn v. Southern, 37 Fed. 428. 
 
 §519. Process — Tests of. 
 
 The real test of infringement is not identity of product which is not par 
 tented, but identity of patented process in producing an unpatented prod- 
 uct. — Krupp V. Midvale, 191 Fed. 088; 112 C. C. A. 194. 
 
 § 520. Process — Miscellaneous. 
 
 The patentee is entitled to tlie protection of his process against its use by 
 such a subsequently invented machine, and also to protection of his appara- 
 tus against its infringement by its mechanical equivalents. — Century 
 Electric v. Westinghouse, 191 Fed. 350; • 112 C. C. A. 8. 
 
 § 528. Tests — Interchangeability. 
 
 The mechanism of the two hammers is not interchangeable, and noninter- 
 changeability is an important test in determining the question of infringe- 
 ment. — Boyer v. Cleveland, 185 Fed. 808; 108 C. C. A. 40. 
 
 Miller v. Eagle, 151 U. S. 18G. 
 
 §531. Tests — Miscellaneous. 
 
 Infringement is to be judged by the state of the art when it takes place, 
 and not by something which has come in since. — Novelty v. Brookfield, 
 170 Fed. 946; 95 C. C. A. 516. 
 
 INJUNCTION. 
 
 § 535. Appeals — Comity. 
 
 Judge Coxe states the principles which should control when application 
 for a preliminary injunction is subsequently made and resisted on ex parte 
 affidavits, as follows: " There can be no doubt that the doctrine of comity 
 not only, but the orderly administration of justice, requires that the Circuit 
 Court should adopt and follow the decisions of the Circuit Courts of Appeals 
 in other circuits than their own, rendered upon facts substantially identical. 
 Any other rule would lead to confusion and injustice. Of course in such 
 circumstances the defendant in patent causes may introduce new evidence 
 of anticipation and may show tliat the facts on which infringement is based 
 are essentially different from those in the adjudicated case. Such proof 
 must carry conviction with it." Appellant's brief bitterly attacks this state- 
 ment, but we understand it to be an accurate presentation of the law and 
 find nothing in Mast v. Stover, 177 U. S. 488, which calls for a different 
 conclusion. The practice indicated by Judge Coxe has been uniformlv 
 followed in this circuit. — Warren Bros. v. City of N. Y. 187 Fed. 831; 109 
 C. C. A. 591. 
 
 Box Co. V. Paper Co. 51 Fed. 229; Doig v. Morgan, 91 Fed. 1001; N. Y.. Fil- 
 ter V. Niagara, 80 Fed. 924; Consolidated Rubber Tire v. Diamond, 157 Fed. 
 677. 
 
 § 536. Appeals — Contempt, General. 
 
 _ Writ of error will lie only when thq fine is cleaily punitive, and in vindica- 
 tion of the authority of the court, as in the case where the fine is made pay- 
 able in whole or in part to the United States. — Heller v. National, 168 Fed. 
 249; 93 C. C. A. 551. 
 
 In re Christensen, 194 U. S. 458.
 
 §§538-544 INJUNCTION 975 
 
 A contempt case like the present one, where the fine imposed is payable 
 to the United States, and where the party adjudged to be in contempt is 
 not a party to the cause in which the contempt occui's, is in its nature a crim- 
 inal and not a civil proceeding. The judgment is final. For these reasons 
 it is reviewable on a writ of error. — In re Grove, 180 Fed. 62; 103 C. C. A. 
 416. 
 
 § 538. Appeals — Contempt — Reverse of Rule in Debs Case. 
 
 The matter sought to be reviewed is an order adjudging Heniy S. Grove 
 (president of defendant) guilty of contempt for having refused to produce 
 before the examiner, in response to a subpoena duces tecmn. The penaltj^ 
 imposed was a fine of $1 payable to the United States. The case is therefore 
 one in which the fine was punitive and in vindication of the authority of the 
 court, and not compensatory to the complainants in the principal case. 
 It follows that the order of the circuit court is reviewable on a writ of error. 
 
 — In re Grove, 180 Fed. 62; 103 C. C. A. 416. 
 
 Bessette v. Conkey, 194 U. S. 324; id., 133 Fed. 163; In re Christensen, 194 
 U. S. 458. 
 
 § 539. Appeals — Decision on Merits. 
 
 Familiar rule and familiar citations in — Sheffield v. D'Arcey, 194 Fed. 
 686; — C. C. A. — . 
 
 § 540. Appeals — Dismissing BiU. 
 
 It is now well settled by the supreme court that the com't, in passing upon 
 an appeal of this character (appeal from order granting an injunction), may 
 consider and decide the case on the merits. — Berliner v. Seaman, 110 Fed. 
 30; 49 C. C. A. 99. 
 
 Smith V. Iron Works, 165 U. S. 518. 
 
 § 543. Appeals — Sound Discretion. 
 
 That the refusal of the trial court to permit the complainant to adduce 
 evidence to show the amount of his damage by reason of the violation of 
 injunction by defendant is a matter of discretion and not appealable, see — 
 Cazier v. Mackie-Lovejoy, 168 Fed. 701; 94 C. C. A. 215. 
 
 That where the primar}'' question is that of discretion exercised b}^ the 
 court below, the appellate court will not go further into the case, see — 
 Grushlaw v. Phoenix, 183 Fed. 222; 105 C. C. A. 484. 
 
 The general rule is that unless it explicitly appears that the court has pro- 
 ceeded upon an erroneous h5q)othesis of pertinent fact or law, or has im- 
 providently exercised its legal discretion, the order will not be disturbed. 
 
 — Acme Acetylene v. Commercial, 192 Fed. 321; 112 C. C. A. 573. 
 Interurban v. Westinghouse, 186 Fed. 166; Shelbyville v. Glover, 184 Fed. 
 
 234. 
 
 § 544. Appeals — What Considered on. 
 
 The granting or refusing of a preliminary injunction ordinarily rests in the 
 sound discretion of the trial court, and the review thereof by an appellate 
 court is limited to the inquiry whether there was abuse of discretion in 
 granting the ^\Tit. — Kings County v. U. S. Consolidated, 182 Fed. 59; 104 
 C. C. A. 499. 
 
 Blount V. Societe, 53 Fed. 98; Jensen v. Norton, 64 Fed. 662; Southern v. 
 Earl, 82 Fed. 690.
 
 976 THE FIXED LAW OF PATENTS §§545-548 
 
 The general rule is that the (injunction) order will not Ijc disturbed unless 
 it clearly appears that the court below has exercised the discretion, which 
 it admittedly has, upon a wholly wrong comprehension of tlie facts or law 
 of the case. — Interurban v. Westinghouse, 185 Fed. 106; 108 C C. A. 298. 
 
 Thomson-Houston v. Ohio, 80 Fed. 712; Loew v. German-American, 107 Fed. 
 949; Proctor v. Globe, 92 Fed. 357; Paris v. Hill, 102 Fed. 148. 
 
 We may say with respect to the present case that this rule (sound dis- 
 cretion) requires us to pass upon any question of law, the determination 
 of which was necessarily involved in the granting of the order. — Acme 
 Acetylene v. Commercial, 192 Fed. 321; 112 C. C. A. 573. 
 
 Bissell V. Goshen, 72 Fed. 545. 
 
 § 545- Appeals — Miscellaxieous Rulings. 
 
 We cannot agree with the proposition of counsel that once this court had 
 declared the validity and infringement of the letters patent, and remanded 
 the case for further proceedings not inconsistent with its opinion, the right 
 of an injunction followed as a matter of course, and that the circuit court 
 was without discretion in the premises. No ruling to tliat effect has been 
 cited, and, instead of there being no authority to the contrary, there are 
 many cases at circuit in which such discretion has been exercised. — In re 
 Chicago Sugar Ref. 87 Fed. 750; 31 C. C. A. 221. 
 
 § 546. Bond. 
 
 That although a patent may have been sustained on appeal in another 
 circuit, where the injunction would work hardship and the defendant is 
 entirely responsible, a bond may be required in lieu, see — Westinghouse 
 V. Burton, 77 Fed. 301; 23 C. C. A. 174. 
 
 That where an injunction is granted conditioned upon complainant giving 
 a bond in a sum specified, in the event of failure of complainant to succeed, 
 the damages which defendant can recover cannot exceed the amount of the 
 bond, see — Cimiotti v. American, 168 Fed. 529; 93 C. C. A. 546. 
 
 That where the patent has but a short time to run, and the granting of a 
 preliminary injunction would work serious consequences with the defend- 
 ant, the injunction may be suspended pending appeal with proper bond, 
 see — Interurban v. Westinghouse, 186 Fed. 166; 108 C. C. A. 298. 
 
 § 548. Discontinuance or Non-Use. 
 
 The fact that a defendant has ceased to infringe and promised not to 
 infringe in the future does not necessarily prevent an injunction issuing 
 against him. Indeed, under such conditions, an injunction would ordi- 
 narily issue. But still an injunction is only granted to prevent threatened 
 injury. If it is clear that no injury is threatened, it should not issue. — Crier 
 V. Innes, 170 Fed. 324; 95 C. C. A. 508. 
 
 The appellant for two or three months at a period of about one year before 
 the bill was filed, made and sold some of these sockets; they then discon- 
 tinued the use of that form and adopted the later numbered styles. It does 
 not appear that the appellee was notified of the discontinuance of the in- 
 fringing style or had any knowledge that it had been discontinued. We 
 cannot say that it had no reason for apprehending that its use would be 
 discontinued, or would not be renewed. In these circumstances, the appellee 
 was entitled to file its bill for an injunction. — Yost v. Perkins, 179 Fed. 
 511; 103 C. C. A. 116.
 
 §§ 549-561 INJUNCTION 977 
 
 § 549. Discretion of Court. 
 
 The grant of a preliminary injunction rests in the discretion of the trial 
 court, not in its arbitrary, whimsical will, but in its sound judicial discretion, 
 informed and guided by the established principles, rules, and practice of 
 equity jurisprudence; and where the court has not departed from them, 
 its in junctional orders may not be reversed without clear proof of an abuse 
 of its discretion. — Kryptok v. Stead, 190 Fed. 767; 111 C. C. A. 495. 
 
 § 552. General Rules for Refusing. 
 
 Injunction is not the appropriate remedy to procure relief for past injuries, 
 and is to be used only in the prevention of further injury when further mjury 
 is actually threatened. — Kennicott v. Bain, 185 Fed. 520; 107 C. C. A. 626. 
 
 High, Inj. §23; Gen. Electric v. New England, 123 Fed. 310; Odell v. Stout, 
 22 Fed. 159. 
 
 § 554. Grounds for Granting — Acquiescence. 
 
 The patent in suit has never been adjudicated, and it is, of course, the 
 general rule that a preliminary injunction will not be issued upon an unad- 
 judicated patent. But exceptions to this rule exist in cases where the validity 
 of the patent has been admitted and acquiesced in. — Standard Typewriter 
 V. Standard, 181 Fed. 500; 104 C. C. A. 248. 
 
 That where a patent has been upheld in a prior suit and the defendant 
 there and others took out licenses under the patent, such acquiescence is 
 persuasive, see — Grushlaw v. Phoenix, 183 Fed. 222; 105 C. C. A. 484. 
 
 § 555- Grounds for Granting — Conduct of Defendant. 
 
 For a case specifying a number of acts, any one of which should entitle 
 complainant to an injunction, see — Standard Typewriter v. Standard, 181 
 Fed. 500; 104 C. C. A. 248. 
 
 § 559- Grounds for Granting — Nature of Act. 
 
 Appellant takes the position that a well-grounded apprehension of in- 
 fringement may, in a proper case, alone suffice to support a bill quia timet 
 for an injunction, without any established breach; that the patent being 
 valid the fact of a breach has ordinarily been held sufficient to justify an 
 injunction because of a well-grounded apprehension of a repetition ot the 
 infringement. From this position, as a proposition of law, we do not dis- 
 sent. — Kennicott v. Bain, 185 Fed. 520; 107 C. C. A. 626. 
 
 Woolworth V. Stone, Fed. Gas. 18,021; Facers;. Midvale 38 Fed. 231; Gellu- 
 loid V Arlington, 34 Fed. 324; Brookfield v. Elmer, 132 Fed 312; Sawyer v. 
 Turner 55 Fed. 979; Kane v. Gandy Go. 44 Fed 287; Matthews i;. National, 
 71 Fed 518; Gavuta v. Kennedy, 127 Fed. 355; Potter v. Growell, Fed. Gas 
 11 323; N. Y. Filter v. Ghemical, 93 Fed. 827; Winchester v. American, 54 
 Fed. 703; Gen. Electric v. New England, 128 Fed. 738. 
 
 § 561. Grounds for Granting — Prior Adjudication. 
 
 In passing on the other foreign patents, the circuit court considered that 
 the prior adjudications fortified the presumption of validity of the patent 
 in suit, and estabhshed its scope, and that the new matter introduced did 
 not repel the presumption or limit the extent of the patent. That the lower 
 courts' properly regarded the prior adjudications as a ground of preliminary 
 injunction is established by the cases cited Walk. Pat. §§ 665 et sq and 
 Rob Pat §§ 117 et sq. And in that aspect the question must be considered, 
 and so considering it, we may pass the defenses of anticipation, whether
 
 978 THE FIXED LAW OF PATENTS §§502.^4 
 
 complete or partial, and the defense of infringement. — Leeds v. Victor, 
 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 Note: This ruling should put a stop to the tendency in certain circuits, 
 especially the seventh, to disregard prior adjudications, especially those of 
 other circuits. 
 
 When there has been a prior adjudication sustaining the patent and the 
 infringement thereof is the same or in anotlier circuit, where the validity 
 of the patent has been contested upon full proofs, the circuit court should, 
 upon a motion for preliminary injunction, sustain the patent, and leave the 
 determination of the question of its validity to be determined upon the firral 
 hearing. This rule is even more emphatic when the former decision was 
 made by the federal court in the same circuit. — Interurban v. Westinghouse, 
 186 Fed. 16G; 108 C. C. A. 298. 
 
 Duplex V. Campbell, G9 Fed. 250. 
 
 That where a patent has been sustained upon full proofs in a prior suit, 
 the trial court should, on motion for a preliminary injunction, sustain the 
 patent and leave the proofs to final hearing, see — Acme Acetylene v. Com- 
 mercial, 192 Fed. 321; 112 C. C. A. 573. 
 
 Interurban v. Westinghouse, 186 Fed. 166; Leeds v. Victor, 213 U. S. 302; 
 Commercial Acetylene v. Acme, 188 Fed. 89. 
 
 § 562. Grounds for Granting — Sufficiency — General. 
 
 To entitle the complainant to a preliminary injunction in a suit for the 
 infringement of a patent prior to a trial on the merits, he must show three 
 things: a clear title to the patent; its presumptive validity; threatened 
 infringement by the defendant. — Kings County v. U. S. Consolidated, 182 
 Fed. 59; 104 C. C. A. 499. 
 
 Edison v. Beacon, 54 Fed. 679; Norton v. Can Co. 57 Fed. 929. 
 
 § 564. Grounds for Refusing — Conflicting Proofs. 
 
 The contention is that, the (irant patent having been declared invalid 
 by the circuit court of appeals for the sixth circuit and by the circuit court 
 for the district of Indiana in the seventh circuit, the rubber company should 
 not have been enjoined from the handling or sale of tires manufactured in 
 the sixth and seventh circuits, and cites Kessler v. Eldred, 20(3 U. S. 285. 
 The court of appeals practically reserved the question. It modified the decree 
 of the circuit court so far as it prevented the handling, using, or selling tires 
 and rims authorized by any judicial decree, recognizing, as it said, the 
 applicability of Kessler v. Eldred. But it fm-ther said: " Whether it should 
 be given a broader interpretation is a question upon which we express no 
 opinion, deeming it more prudent to wait until the facts are fully devel- 
 oped." * * * We concur in these remarks. — Diamond Rubber v. Con- 
 solidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 There is a sharp conflict of evidence, numerous affiants testifying. All 
 their statements are ex parte affidavits made without any opportunity to 
 test their probative force by cross-examination. Under such circumstances, 
 it seems to us, irrespective of any of the other questions in the case, that 
 infringement was not so clearlv established as to justify a preliminary in- 
 junction. — Wright V. Herring-Curtiss, 180 Fed. 110; 103 C. C. A. 31. 
 
 Westinghouse v. Montgomery, 139 Fed. 868; Hall v. General, 153 Fed. 907.
 
 §§ 566-577 INJUNCTION 979 
 
 § 566. Grounds for Refusing — Infringement not Clear. 
 
 The most favorable view for the comphiinant is that the question of in- 
 fringement is involved in doubt, and a preliminary injunction should not 
 be granted in a doubtful case. — Ferry-Hallock v. Herman, 178 Fed. 550; 
 101 C. C. A. 230. 
 
 That where infringement is in doubt, injunction should be refused pen- 
 dente lite, see — Wright v. Paulhan, 180 Fed. 112; 103 C. C. A. 32. 
 Wright V. Herring-Curtiss, 180 Fed. 110. 
 
 § 574. Non-User. 
 
 Doubtless, in the present case, the complainant was entitled to an in- 
 junction restraining further infringement. It was entitled to that relief 
 whether it made use of the patent or not. — Lorain v. N. Y. Switch, 184 
 Fed. 301; 106 C. C. A. 443. 
 
 Paper Bag Case, 210 U. S. 405. 
 
 It is sufficient to sustain the decree of the court below, that, as a matter 
 of fact, appellee did, in good faith, cease the use of the infringing device, 
 and that appellant had full opportunity to make itself acquainted with this 
 fact before it filed its bill. — Kennicott v. Bain, 185 Fed. 520; 107 C. C. A. 
 626. 
 
 § 576. Powers and Scope. 
 
 Where a court of equity has jurisdiction of appellants, it may enjoin them 
 by decree in personam from doing any acts at places beyond the jurisdiction 
 of the court, as well as within it. — Rubber Tire v. Goodyear, 183 Fed. 978; 
 106 C. C. A. 318. 
 
 § 577' Violation of — Contempt. 
 
 It is true that the corporation is not expressly named as defendant, but 
 it could not have had more direct and explicit notice of the injunction if 
 it had been so named. It was cited by an order of the Circuit Court to ap- 
 pear and show cause why it should not be punished for contempt in violating 
 the injunction and was given full opportunity to purge itself. In organizing 
 the corporation Bernard was the moving spirit. That it was organized for 
 the purpose of escaping the consequences of the infringement of the patent 
 which Bernard had sold and assigned to the complainants, is too plain for 
 controversy. A person who, with full knowledge of its provisions, has vio- 
 lated an injunction may be punished for conteiupt, although not a party to 
 it. — Bernard v. Frank, 179 Fed. 516; 101 C. C. A. 459. 
 
 In re Lennon, 166 U. S. 548; In re Debs, 158 U. S. 564; Bessette v. Conkey, 194 
 U. S. 324. 
 
 That it is not contempt for a party to refuse to produce and exhibit rec- 
 ords which he is under injunction from a department of the government to 
 keep secret and which the head of such department has advised him not to 
 disclose, see — In re Grove, 180 Fed. 62; 103 C. C. A. 416. 
 
 The injunction against which the offense was committed was an injunc- 
 tion against " directly or indirectly " infringing the patent. The learned 
 judge who sat in the Circuit Court adjudged that the defendant violated 
 the injunction. We find this judgment free from error, whether the defend- 
 ant is held to be guilty of a direct or a merely contributory infringement. — 
 Kreplik v. Couch Patents, 190 Fed. 565; 111 C. C. A. 381.
 
 ggQ THE FIXED LAW OF PATENTS §§578-579 
 
 The courts of the United States recognize that the process of contempt 
 has two distinct aspects - one criminal, to puiiisli tor disobetUence; and 
 tlie other remedial and civil to enforce a decree ot the court, and to com- 
 pensate private persons. * * * The two aspects ot contempt procee.hngs 
 have often been before the Circuit Court in this circuit, where it \m^ been 
 clearlv recognized that in an equity case a hue tor contempt imposed for he 
 use of the petitioner is not a punitive hue, but merely mdeinnity to the 
 netitioner for the loss occasioned to him by the offensive acts ot the defend- 
 ant * * * The Circuit Court made its two awards, its compensatory award 
 and its punitive award, in one proceeding. In doing so it toUowed the prac- 
 tice of the courts in this circuit and in other circmts ' in patent ca.stis 
 the practice has been to combine the two under a proper proceeding, and to 
 order punishment, if it is thought proper, and to niJemiufy the p aint.tT if 
 it is thought proper, or to do both if justice re(iuires. * * * In the Compers 
 Case the court has nowhere said that this practice of tlie several circuits 
 in patent causes is improper or illegal. Under tiie principles announced in 
 that case, it must, of course, appear in a case in etjuity that, l)elore imposing 
 a sentence for criminal contempt, the court distinctly gave tiie defendant 
 ins day in court and allowed him a full and fair hearing upon a cnnunal 
 chart^e * * * The Supreme Court further said that, where a court is pro- 
 ceedmg in vindication of its authority, this element dominates the proceed- 
 ing and is reviewable by tlie Circuit Court of Appeals on writ of error. It 
 is clear then, that in a proceeding where both the remedial and pumlive 
 elements are brought before the court, the criminal element must control. 
 — Kreplik v. Couch Patents, 190 Fed. 565; 111 C. C. A. 381. 
 
 Re Christensen, 194 U. S. 458; Bessette v. Conkey ^^^ ^ ^^^ 324; Gompers 
 V. Bucks, 221 U. S. 418; Hendryx v. Fitzpatnck, 19 Fed. 810; Re Chiles, 22 
 Wall. 157; Anderson v. Dunn, 6 Wheat. 204. 
 
 § 578. Violation of — Miscellaneous Rules. 
 
 When the validity of a patent has been established, and the defending 
 party decreed to be an infringer on account of certain specific devices brought 
 before the court, the infringing party may not, by mere colorable changes 
 avoid the effect of the decree as an adjudication between the parties; and 
 the offending party may be reached either by separate suit or by a supple- 
 mental bill. — Cazier v. Mackie-Lovejoy, 168 led. 701; 94 C. C. A. 2ib. 
 
 Murray v. Orr, 153 Fed. 369. 
 
 § 579, Miscellaneous Injunction Decisions. 
 
 Cruikshank (one of the partners) died before the commencement of the 
 suit and the defendant Marr is his administrator. An injunction cannot 
 run against the former, nor against the latter as administrator on account ot 
 his intestate's infringing act. — Crier v. Innes, 170 Fed. 324; 9o C. C. A. 
 508. 
 
 That the fact that there are other suits pending upon the same patent in 
 other circuits against other infringers is not a ground for refusing injunction, 
 see — Interurban v. Westinghouse, 186 Fed. 166; 108 C. C. A. 29b. 
 
 That an injunction should be refused if its granting will cause greater 
 injury than its refusal, see — Kryptok v. Stead, 190 Fed. /67; 111 C. C. A. 
 767. 
 
 Russell V. Farley, 105 U. S. 433; Shubert v. Woodward, 167 Fed. 47; Blount 
 V. Societe, 53 Fed. 98. 
 
 That a defendant manufacturer may not restrain a complainant from 
 bringing suits against its customers or dealers merely because such course
 
 §§ 584-594 INTERFERENCES 981 
 
 may cause expense and loss to the original defendant or to such other 
 persons sued, see — Kryptok v. Stead, 190 Fed. 767; 111 C. C. A. 767. 
 Acetylene v. Avery, 152 Fed. 642. 
 
 INTERFERENCES. 
 § 584. Conclusiveness. 
 
 It was so decided in the interference proceedings, which, while not con- 
 clusive upon us, it is or the defendants to overcome. — Novelty v. Brook- 
 field, 170 Fed. 946; 95 C. C. A. 516. 
 
 Morgan v. Daniels, 153 U. S. 120, 
 
 That an interference adjudication is conclusive in a subsequent suit be- 
 tween the same parties only upon the issues there determined, and upon 
 those issues only in the absence of further and persuading proofs, see — El- 
 liott V. Youngstown, 181 Fed. 345; 104 C. C. A. 175. 
 
 That an interference adjudication is presumed to be conclusive against 
 the defeated party and his privies until such presumption is overcome, see 
 — Hillard v. Remington, 186 Fed. 334; 108 C. C. A. 534. 
 
 Morgan v. Daniels, 153 U. S. 120. 
 
 That an interference or the failure to declare an interference has small 
 evidential weight, see — Herman v. Youngstown, 191 Fed. 579; 112 C. C. A. 
 185. 
 
 § 585. Miscellaneous. 
 
 The patentee, after succeeding in interference, appropriated the claims 
 of the defeated party. Held: True, the fact that Cox (the patentee) may 
 have mistakenly regarded these things as not new, and therefore not the 
 subject of a patent, would not have prevented him from correcting his mis- 
 take if done in apt time, by amending his application and broadening his 
 claims. But this must be done by a showing in his application that the con- 
 ception was his, and that it was new and novel; and this he did not do. 
 His application, either before or after the new claims were inserted, discloses 
 no conception of the deficiency to which the interfering patent was directed, 
 antedating it. — General Electric v. Sangamo, 174 Fed. 246; 98 C. C. A. 
 154. 
 
 The result of the interference was adverse to Harder; but the result does 
 not establish the proposition as against the rest of the world that the paten- 
 tees had perfected their invention prior to September 12, 1904. — Dey v. 
 Bundy, 178 Fed. 812; 102 C. C. A. 260. 
 
 INVENTION. 
 
 §591. Adaptation — Arrangement or Grouping. 
 
 That mere arrangement of a part, such as giving a certain inclination to 
 the moldboard or disk of a plow, is not invention, see — Torrey v. Hancock, 
 184 Fed. 61; 107 C. C. A. 79. 
 
 Eddy V. Dennis, 95 U. S. 560. 
 
 § 594. Aggregation — Co-action Wanting. 
 
 The patent concerns metallic or pressed steel cars provided with double 
 hopper-bottoms. In the device as a whole there was no interchange of 
 mechanical function between the several parts, and no new result from their
 
 982 THE FIXED LAW OF PATENTS §§596-598 
 
 contiguity. Each maintained its independent function, which, whether in 
 isolation or companionship, remained the same. There being ah.sence of new 
 functional co-operation, and the position and relation of the several parts 
 being wholly structural, we cannot regard the construction as inventive in 
 character. — Am. Car & Foundry v. Morton Trust, 175 Fed. 568; 99 C. C. 
 A. 190. 
 
 The mere bringing together of old parts and allowing each to work out 
 its own old effect, without producing some new machine or product, is nol 
 invention. It is necessary always to determine whether the concejjtion of a 
 combination of old parts results from the intuition of the inventor as dis- 
 tinguished from the skill of the mechanic. — Warner v. Stewart, 185 Fed. 
 507; 107 C. C. A. 607. 
 
 Ileekendorfer v. Faber, 92 U. S. 347. 
 
 That a tool embracing means for performing a plurality of functions, 
 lacking co-action, though convenient and useful, is not patentable, see — 
 Irvington v. Utica Drop Forge, 191 Fed. 169; HI C. C. A. 647. 
 
 § 596. Aggregation — Not Invention. 
 
 Tlie specifications of the patent acknowledge " that scorching devices and 
 burning tools are separately old." If the patent consists in simply bringing 
 together into one tool these two things, it is not invention. It is mere aggre- 
 gation. — Tyssowski v. Thayer, 174 Fed. 43; 98 C. C. A. 29. 
 
 Mere simultaneous treatment of two objects by the same process previ- 
 ously applied to one is not invention. — Krupp v. Midvale, 191 Fed. 588; 1 12 
 C. C. A. 194. 
 
 § 597. Aggregation — Old Elements, Old Result. 
 
 To sustain a patent with a combiuatiou of old ek ments, it is well settled 
 that a new result must be obtained, which is due to the joint and co-opera- 
 ting action of all the old elements. Either this must be accomplished, or a 
 new machine of distinct character and function must be constructed. If 
 several old devices are so put together to produce even a better machine or 
 instrument than was formerly in use, but each of the old devices does what 
 it had formerly done in the machine or instraraent from which it was bor- 
 rowed, and in the old way, witliout uniting with other old devices to perform 
 any joint function, it seems that the conbi nation is not patentable. — Anton 
 V. Grier, 185 Fed. 796; 108 C. C. A. 17.3. 
 
 Brinkerhoff v. Aloe, 146 U. S. 515; Pi'^kering v. McCullough. 104 U. S. 310; 
 Reckendorfer v. Faber, 92 U. S. 347; Hailes v. Van Wormer, 87 U. S. 353; Spe- 
 cialty V. Fenton, 174 U. S. 492. 
 
 § 598. Beneicial Uses and Scope of. 
 
 We should be slow to infer such ignorance. * * * When a person produces 
 a useful instrument, to say that he did not know what he was about is at 
 least confusing. To take from him the advantage of it upon nice speculation 
 as to whether itwas an ignorant guess or confident knowlodc:e and adapta- 
 tion might do him great injustice. His success is his title to consideration. 
 — Diamond Rubber v. Consolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 
 444. 
 
 Even if the patentee at the time of making his application did not know 
 of this advantage, or knowing failed distinctly to express it, he, in view of
 
 §§ 599-601 INVENTION 983 
 
 what he did state and show, is entitled to have his invention considered with 
 reference to it. — Morgan Engineering v. AlUance, 176 Fed. 100; 100 C. U. A. 
 
 Goshen v. Bissell, 72 Fed. 67; Dowagiac v. Superior, 115 Fed. 886; Stilwell- 
 Bierce v. Eufaula, 117 Fed. 410. 
 
 It is possible that in Forster's device the water, to some extent, impinges 
 upon the inside of the " tubular body," though he does not suggest it But 
 he would be entitled to the benefit of that feature, if in fact it existed. - 
 Forest City v. Barnard, 176 Fed. 561; 100 C. C. A. 197. 
 
 Goshen v. Bissell, 72 Fed. 67; Goodyear j. Rubber 116 Fed. 363; Stilwell- 
 Bierce v. Eufaula, 117 Fed, 410; Fames v. Worcester, 123 Fed. 67. 
 
 A patentee who has plainly described and claimed his machine or combina- 
 tion has the right to every use to which his device can be applied, and to 
 every way in which it can be utilized to perform its function, whether he was 
 aware of these uses or methods of use when he claimed l^^^^f^fJ^'V^?- 
 nopoly or not. — Warren Webster v. Dunham, 181 Fed. 836; 104 0. C. A. 
 
 National v. Interchangeable, 106 Fed. 693; Roberta w.Ryer 91 U. S. 150; 
 MnierTMfg. Co. 151 U. S. 186; Goshen .. Bissell, 72 Fed 67; Stearns ..Russell, 
 85 Fed. 218r Mfg. Co. v. Neal, 90 Fed. 725; Tire Co. v. Lozier, 90 Fed. 732. 
 
 It is objected that the advantage of avoiding side tones is not mentioned 
 in the specification. This is true. But this omission was not fatal if the 
 advantage was necessarily achieved through the invention. - Kellogg v. 
 Dean 182 Fed. 991; 105 C. C. A. 545. 
 
 Goshen v. Bissell, 72 Fed. 67; Dowagiac ^- ?.uP^"oV7A^lHi'of ^' ^^ 
 Bierce v. Eufaula, 117 Fed. 410; Morgan v. Alliance, 176 Fed. 100. 
 
 § 599- Carrying Forward. 
 
 The rule of Smith v. Nichols, 21 Wall. 112, quoted and applied in - Neu- 
 reuther v. Mineral Point, 179 Fed. 850; 103 C. C. A. 336. 
 Smith V. Nichols, supra; Wilce v. Bush, 134 Fed. 389. 
 
 In Smith V Nichols, 21 Wall. 119, it was held that a mere carrying forward 
 of a^i original conception patented, a new and more extended application o 
 ^t ^nvol^ng no change of form, proportion, or degree, the substitution of 
 equivaAents doing the same thing as did the original mvention by substan- 
 ISte same means with better effects %--\^-^\.^^'^'fZr 
 tain a patent. — Yost v. Perkins, 179 Fed. 511; 103 C. C. A. lib. 
 ta.n a paieiiu^ PhiUins v Detroit, 111 U. S. 604; Burt v. 
 
 Ev^o?v"l'3Vu''r349! Ansonia'^: iSXu^ U. S. 19; Lovell .. Gary. 147 
 U. S:623. 
 
 § 6oi. Change of Form — Mere Change. 
 
 If it were shown to be true that a machine with knives set at a particular 
 an4e hid distinct advantages over a machine with knives set at any other 
 ande the discovery and embodiment of the fact m a working machine ought, 
 wPsnnDose to be deemed patentable. But nothing of the kind is shown here. 
 It foTowfthlt there is no^patentability in that particdar, even ^ 3^ b^ -- 
 cecedThat the drawings of the patent are to be regarded as work mg plans 
 showing, the particular angle stated, - a propo.sition which m v ew of the 
 Srihat the'specification is^silent on the subject, is not deemed tenable. 
 — Caverly v. Deere, 66 Fed. 305; 13 C. C. A. 40^:.
 
 984 THE FIXED LAW OF PATENTS §§602-004 
 
 Any changes made were in degree, proportion, or sj'mmetry. The plow of 
 his patent did the same thing in the same way, and l)y substantially the same 
 means as before, and although it produced better results it did not rise to 
 the dignity of invention. — Torrcy v. Hancock, 184 Fed. 61; 107 C. C. A. 
 79. 
 
 Smith V. Nichols, 21 Wall. 112; Balding v. Corn Planter, 152 U. S. 100. 
 
 § 6o2. Change of Form — When Patentable. 
 
 But the law has other tests of invention than subtle conjectures of what 
 might have been and yet was not. It regards a change as evidence of novelty, 
 the acceptance and utility of change, even as demonstration. — Diamoiul 
 Rubber v. Consolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 The structure on which invention is predicated is unquestionably new, 
 there being a readjustment of materials, by which new and highly useful 
 results are brought about. — Edison v. Novelty, 167 Fed. 977; 93 C. C. A. 
 381. 
 
 Rainear v. Western, 1.59 Fed. 431. 
 
 § 603. Combinations — Co-Action of Elements. 
 
 When the complete machine of the patent is used, the crushing and sepa- 
 rating elements do, in our opinion, co-operate to produce a new, final and 
 unitar}'^ result, to wit, the complete separation of the cinder from the iron 
 and the ejection of the former from the mill and the leaving of the latter 
 therein. This constitutes invention. — Sly v. Russell, 189 Fed. 61; 110 
 C. C. A. 625. 
 
 Nat. Cash Register v. American, 53 Fed. 367; Walk. Pat. § 33. 
 
 An aggregation is the mere assembling of separate elements without 
 changing their respective functions or accomplishing any result other than 
 the added result of those functions. In order to be patentable a combination 
 of elements must in their co-relation produce a different force, or effect, or 
 result, from the sum of that which is produced by their separate parts. It 
 is not necessary that each element in performing its own function shall also 
 modify the function performed by the others. It is generally sufficient if 
 there be such coaction that a result is produced which is new, and the result 
 is new if it is substantially a better result than that which has been accom- 
 plished by the other combinations. — Pelton v. Doble, 190 Fed. 760; HI 
 C. C. A. 488. 
 
 Reckendorfer v. Faber, 92 U. S, 347; Hailes v. VanWormer, 20 Wall. 353; 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 § 604. Combinations — Entirety. 
 
 A combination is a union of elements, which may be partly old and partly 
 new, or wholly old or wholly new. But whether new or old, the combina- 
 tion is a means — an invention — distinct from them. They, if new, may 
 be inventions and the proper subject of patents, or they may be covered 
 by claims in the same patent with the combination. — Leeds v. Victor, 
 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 The novelty as well as the virtue of the invention depends upon the ma- 
 chine as a whole. — Novelty v. Brookfield, 170 Fed. 946; 95 C. C. A. 516. 
 Brookfield v. Novelty, 154 Fed. 197.
 
 §§608-615 INVENTION 985 
 
 The test is whether there is a new unitary result, to the production of 
 which the different elements coact. — Novelty v. Brookfield, 170 Fed. 946; 
 95 C. C. A. 516. 
 
 BUss V. Reed, 106 Fed. 314; National v. Aiken, 163 Fed. 264. 
 
 It is sufficient to sustain the claim to hold that the combination embraced 
 a novel clement. The claim is held to be valid as covering a combination in 
 a road locomotive of the different elements with a liciuid hydrocarbon com- 
 pression engine of the Bray ton type. — Columbia v. Duerr, 184 Fed. 893; 
 107 C. C. A. 215. 
 
 A number of the elements of this combination are undoubtedly old, but, 
 by reason of its compact unitary structure and easy accessibility for purposes 
 of inspection and repair, and other advantages, it has achieved a result which 
 entitled it to be characterized as an advance in the art. — AUis-Chalmers v. 
 Westinghouse, 184 Fed. 722; 107 C. C. A. 541. 
 
 The fact that there is novelty in one of the elements does not justify a 
 claim to a combination of the elements unless there is co-action between 
 them to produce a new result, and a combination is not unpatentable merely 
 because the result might have been accomplished by other combinations. — 
 Pelton V. Doble, 190 Fed. 760; 111 C. C. A. 488. 
 
 § 6o8. Combinations — Old Elements, New Results. 
 
 It is perfectly well settled that a new combination of elements, old in them- 
 selves, but which produce a new and useful result, entitles the inventor to 
 the protection of a patent. — Expanded v. Bradford, 214 U. S. 366; 53 L. Ed. 
 1034; 29S. Ct. 652. 
 
 Loom Co. V. Higgins, 105 U. S. 580. 
 
 A combination of old elements which accomplishes a new and beneficial 
 result, or attains an old result in a more facile, economical, or efficient way, 
 may be protected by patent as securely as a new machine or composition of 
 matter. — Dissenting opinion of Judge Sanborn in — Electric Protection 
 V. American, 184 Fed. 916; 107 C. C. A. 238. 
 
 Seymour v. Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 187; Thomson 
 V. Bank, 53 Fed. 250. 
 
 While the desirability of insulating the inside of a socket was recognized, 
 while the use of insulating material retained in place by its yielding nature 
 in other portions of a socket was common, and while it was known to the 
 bottle-stopping art that a yielding lining material could be sprung into the 
 interior of a stopper and there retained, yet the existence of these elements 
 in severalty suggested to no one their combined use to fill a recognized want 
 in electric lighting. — Freeman Co. v. General Electric, 191 Fed. 168; 111 
 C. C. A. 646. 
 
 § 614. Definition of. 
 
 In the eyes of the patent law, the real device is this case is not the skill 
 of the dressmaker in making the skirt after she is once told how, but in the 
 original thought that discovered and originated the device without being 
 told. — Greenwald v. Enochs, 183 Fed. 583; 106 C. C. A. 351. 
 
 § 615. Dividing or Uniting Parts. 
 
 Being obvious and self evident, the remedy employed of cutting the horn 
 in two sections, was equally obvious and self evident, and to claim a patent
 
 986 THE FIXED LAW OF PATENTS §§616-623 
 
 monopoly therefor is a misuse of the patent laws which are to foster invention 
 alone The device of the patent in suit, to overcome the mconvenience of 
 handUng and packing a one-piece horn, no more mvolves mvention than 
 cutting a length of stove-pipe into two sections and proy.dmg for their being 
 united and fitted together, by slightly crimping the end of one section that 
 it may enter and be pressed into the end of the other. - Victor v. Hawthorne, 
 178 Fed. 455; 101 C. C. A. 439. 
 
 The general rule stated and followed in — Gould v. Cinciimati, 194 Fed. 
 680; —CCA.—. 
 
 Standard v. Caster, 113 Fed. 162; National v. Aiken. 16.3 Fed. 254; Hermua 
 V. Youngstown, 191 Fed. 579. 
 
 Familiar rule foUowed and familiar cases cited in — Sheffield v. D'Arcy, 
 194 Fed. 686; — C C A. — . 
 
 § 6i6. Double or Analogous Use -^ Analogous Use Non-Patent- 
 
 able. 
 
 That the adaptation of a device for printing pictures to making bue-prints 
 is mere double use, see — Elliott v. Youngstown, IM Fed. .i4o; 104 C L . A. 
 175. 
 
 But conceding that the complainant is entitled to all the uses and ad- 
 vantages which may arise from the slot, whether he conceived the idea ot 
 all of tliem or not (Roberts v. Ryer, 91 U. S. 150), the fact still remains that 
 the only feature of his device not found in the prior art is the slot or slidal)le 
 connection of the braces. * * * Misapplication of the slot or slidable connec- 
 tion (known in an art clearly analogous) did not involve patentable inven- 
 tion. — Stevens v. Rodgers, 180 Fed. 631 ; 108 C C A. 495. 
 
 Smyth V. Sheridan, 149 Fed. 208. 
 
 § 620. Evidence of — Acquiescence. 
 
 That acquiescence by the public and purchase of the patent or license 
 under it by manufacturers may be evidence of invention, but of slight weight 
 in view of other facts, see — Elliott v. Youngstown, 181 Fed. 345; 104 
 C C A. 175. 
 
 § 622. Evidence of — Commercial Success. 
 
 The unsuccessful experiments on the part of those not only skilled in the 
 art but under the sharp spur of competition, the success and usefulness of 
 the device and its speedy general adoption, furnish persuasive evidence ot 
 » invention. — Electric v. Westinghouse, 171 Fed. 83; 96 C C A. 187. 
 
 Keystone v. Adams, 151 U. S. 139; Potts i^ Creager, 155 U. S. 597; Hobbs 
 V. Beach, 180 U. S. 383; Star v. General, 111 Fed. 398; Kalamazoo v. Duff, 113 
 Fed. 264; Dowagiac v. Superior, 115 Fed. 886. 
 
 Peller has produced a device the value of which has been demonstrated 
 not only by its popularity in the trade but by the persistent contest m the 
 patent office for the honor of being its inventor. — Waterbury v. Aston, 183 
 Fed. 120; 105 C C A. 410. 
 
 Topliff V. Topliff, 145 U. S. 1.56. 
 
 § 623. Evidence of — Commercial Success — When Not. 
 
 It may be admitted that the commercial utility of a patented device^ 
 sometimes persuasive evidence of invention. But it is not corclusive. 
 Victor V. Hawthorne, 178 Fed. 455; 101 C C A. 439.
 
 §§624-626 INVENTION 987 
 
 The rule is that general public acceptance and use of the patented device 
 is only a fact to be considered with all the other facts in the case on the issue 
 of patentable noveltj', and is most appropriately resorted to in cases where 
 the issue is in grave doubt. — Torrey v. Hancock, 184 Fed. 61; 107 C. C. A. 
 79. 
 
 Smith V. Goodyear, 93 U. S. 486. 
 
 § 624. Evidence of — Einciency. 
 
 If the combination of elements described in the patent in suit furnishes a 
 machine that bends pipes and tubes in a more rapid, economical, efficient, or 
 advantageous way than any of the machines of the prior art, it is an impor- 
 tant fact in solving the question of the validitv of the patent. — Morton 
 Trust V. Standard, 177 Fed. 931; 101 C. C. A. 211. 
 
 § 625. Evidence of — Extensive Litigation. 
 
 The utility of a device may be attested by the litigation over it, as liti- 
 gation " shows and measures the existence of the public demand for its use." 
 — Diamond Rubber v. Consohdated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 
 444. 
 
 Eames v. Andrews, 122 U. S. 40. 
 
 For 10 years now sohcitors and courts have been searching the records 
 and the law to decide attacks upon the validity of this patent, and no court 
 has ever held that the Palmer patent anticipated or rendered it void. These 
 facts are too persuasive and compelling to permit us to hold that there was 
 no invention. — Wayne v. Benbow-Brammer, 168 Fed. 271; 93 C. C. A. 
 573. 
 
 The protracted and stubbornly contested interference is wholly inconsist- 
 ent with defendant's present contention that the patent is void for lack of 
 patentability. Men do not struggle for years to secure a valueless thing. — 
 Roth V. Harris, 168 Fed. 279; 93 C. C. A. 581. 
 
 Peller has produced a de\dce the value of which has been demonstrated 
 not only by its popularity in the trade, but by the persistent contest in the 
 patent office for the honor of being its inventor. — Waterbury v. Aston, 183 
 Fed. 120; 105 C. C. A. 410. 
 
 § 626. Evidence of — Extensive Use. 
 
 We can understand that some advertising was necessary to bring it into 
 notice, and give it a certain use, but the extensive use which it attained, and 
 more certainly the exclusive use which it attained, could only have been the 
 result of its essential excellence, indeed its pronounced superiority over all 
 other forms. Here, again, in our discussion, a comparison is suggested be- 
 tween it and other tires, and the inquiry occurs why capital has selected 
 to invest in and advertise, and not one of the tires of the prior art, if it be 
 not better than they? But the effect of advertising is mere speculation; 
 to the utility and use of an article the law assigns a definite presumption 
 of its character, as we have seen, and which we are impelled by the facts of 
 this record to follow. — Diamond Rubber v. Consolidated, 220 U. S. 428; 
 55 L. Ed. 527; 31 S. Ct. 444. 
 
 But the law has other tests of invention than subtle conjectures of what 
 might have been and j^et were not. It regards a change as evidence of nov- 
 elty, the acceptance and utility of change as a further evidence, even as
 
 988 THE FIXED LAW OF PATENTS §§627-631 
 
 demonstration. — Diamond Rubber v. Consolidated, 220 U. S. 428; 55 
 L. Ed. 527; 31 S. Ct. 444. 
 
 Note: This case, next to the Barbed Wire Case, illustrates a condition 
 where the question of doubtful novelty has been overcome solely by utility 
 of an extreme nature. It cannot be said that this case sets any new rule in 
 this respect, but it certainly serves to put a period to the expression of certain 
 judges to the effect that utility in the absence of novelty which they have 
 predetermined, is not evidence of invention. 
 
 § 627. Evidence of — Extensive Use — When Not. 
 
 General use alone does wot show invention. — De Long v. Francis, 168 
 Fed. 900; 94 C. C. A. 240. 
 
 § 628. Evidence of — Obvious Demand. 
 
 Manufacturers of these supi)lics were consluiitly seeking, through skilled 
 engineers, economics in material and form of unitary transformers which 
 were thus obtained bj^ Kurda's combination, and we believe it to be fairly 
 attributable to invention, rather than an obvious expedient of the engineer; 
 that without great advance in the art his new combination is entitled to 
 protection within its narrow scope. — Gen. Electric v. Winona, 183 Fed. 
 418; 105 C. C. A. 652. 
 
 § 629. Evidence of — Patent Prima Facie. 
 
 The records of the Patent Ollicc disclose only the fact that a patent was 
 issued to Wilgus upon an application in which he stated that he was aware 
 of the Gauthier patent, and called attention to the features which distin- 
 guished his invention. The issuance of the patent, under these circum- 
 stances, created only a prima facie presumption that the invention of the 
 patentee was not anticipated by the prior invention. — Wilgus v. Germain, 
 72 Fed. 773; 19 C. C. A. 188. 
 
 Corning v. Burden, 15 How. 265; Miller v. Mfg. Co. 151 U. S. 208; Boyd v. 
 Tool Co. 158 U. S. 260; Pavement Co. v. Elizabeth, Fed. Caa. 312; Ransome 
 V. Hyatt, 69 Fed. 148. 
 
 The presumption of validity arising from the grant is of no avail where 
 the prior art excludes all reasonable presumption of noveltv or the exercise 
 of inventive genius. — Trcthaway v. Bertels, 180 Fed. 730; "^104 C. C. A. 96. 
 
 § 631. Evidence of — Prior Failures. 
 
 It is often difficult to determine whether a given improvement is a mere 
 mechanical advance, or the result of the exercise of the creative faculty 
 amounting to a meritorious invention. The fact that the invention seems 
 simple after it is made does not determine the question; if this were the rule, 
 many of the most beneficial patents would be stricken down. It may be 
 safely said that if those skilled in the mechanical arts are working in a given 
 field, and have failed, after repeated efforts, to discover a certain new and 
 useful improvement, that he who first makes the discovery has done more 
 than make the obvious improvement which would suggest itself to a me- 
 chanic skilled in the art, and is entitled to protection as an inventor. — Ex- 
 panded V. Bradford, 214 U. S. 366; 53 L. Ed. 1034; 29 S. Ct. 652. 
 
 That the fact that skilled inventors had labored long to attain the result 
 is evidence that the end was inobvious and involved invention, see — Edison 
 V. Novelty, 167 Fed. 977; 93 C. C. A. 387.
 
 §632 INVENTION 989 
 
 It affirms rather than lessens the achievement that the different parts 
 were brought together from the scrap heap, to which they had been con- 
 signed. — Novelty v. Brookfield, 170 Fed. 946; 95 C. C. A. 516. 
 
 That the fact that a device was well known in other arts, and that no one 
 had previously contemplated its use in the art in question is evidence of 
 invention, see — Am. Laundry Mach. v. Troy, 174 Fed. 415; 98 C. C. A. 
 612. 
 
 But the fact that the electrical world, with the knowledge of the use of 
 both rotary converter and auxiliary exciter, during the several years the 
 difficulty existed, made no such combination as Lamme's, is highly suggest- 
 ive that it required more than mere engineering advance of the electrical 
 art. — Westinghouse v. Allis-Chalmers, 176 Fed. 362; 100 C. C. A. 408. 
 
 While it may not always be helpful in determining whether a given act 
 or result involves the exercise of constructive faculty rather than mechanical 
 skill to resort either to the fact that the matter in dispute had been allowed 
 to lie dormant for years in the face of needed solution, or to the approval 
 accorded to such solution by men of scientific knowledge and practical ex- 
 perience immediately upon becoming aware of it, yet it is not always easy or 
 advisable to repel the influence of such facts. — Morgan Engineering v. 
 Alliance, 176 Fed. 100; 100 C. C. A. 30. 
 
 The fact that so many persons caught the idea (four applications being 
 made about the same time) goes rather to prove that it was simple and ob- 
 vious, and not that it required inventive genius to conceive. It is not like 
 the case where the art is waiting for the device, and inventors striving un- 
 successfully to produce it, under which circumstances invention may well 
 be held to appear. — Elliott v. Youngstown, 181 Fed. 345; 104 C. C. A. 175. 
 
 Dean was the first to get the voice currents into the receiver by direct and 
 continuous path, and at the same time to practically exclude the energizing 
 current. He did this by placing an old device in a new location, and so, 
 through combination with other elements old in themselves, secured a new 
 result. We are therefore of opinion that Dean made an improvement of such 
 merit as to entitle it to the rank of patentable invention. It is true there 
 was left to him but a " short step," but if this step was within the skill of the 
 art, why was it not taken in the long struggle that we have but outlined? -^ 
 Kellogg V. Dean, 182 Fed. 991; 105 C. C. A. 545. 
 
 Morgan v. Alliance, 176 Fed. 100. 
 
 Moreover, it must not be overlooked that the improvement was made in 
 a long-developed art, in which there was meagre sphere for invention. Where 
 a field is barren, a marked improvement in product evidences corresponding 
 originality in making such improvement. — Greenwald v. Enochs, 183 Fed. 
 583; 106 C. C. A. 351. 
 
 § 632. Evidence of — Simplicity. 
 
 The fact that the invention is simple and that at the present time it seems 
 as if it might have been obvious to the workers in this art, does not militate 
 against its vaUdity. Many of the most useful inventions depend equally 
 upon simple changes. — General Electric v. Hill- Wright, 174 Fed. 996; 98 
 C. C. A. 566.
 
 990 THE FIXED LAW OF PATENTS §§ 033-<i34 
 
 § 633. Evidence of — Turning Failure into Success. 
 
 Hoffmann has produced a medicine indisputably beneficial to mankintl 
 — something new in a useful art, such as our patent policy was intended to 
 promote. Kraut and his contemporaries, on the other liand, had produced 
 only, at best, a chemical compound iii an impure state. And it makes no 
 difference, so far as patentability is concerned, that the medicine thus pro- 
 duced is lifted out of a mass that contained, chemically, the compound; for, 
 though the difference between Hoffmaim and Kraut be one of purification 
 only — strictly marking the line, however, where the one is therapeutically 
 available and the others were therapeutically unavailable — patental)ility 
 would follow. In the one case the mass is made to yield something to the 
 useful arts; in the other case what is yielded is chiefly interesting as a fact*- 
 in chemical learning. — Kuehmsted v. Farbenfabriken, 179 Fed. 701 ; 103 
 C. C. A. 243. 
 
 Merrill v. Youmans, 94 U. S. 5G9; Badische v. Kallc, 104 Fed. 802; Badischc 
 V. Klipstein, 125 Fed. 543. 
 
 In addition to the presumption which arises from the issuance of the patent, 
 there are to be taken into consideratiorx, a.s sustaining the patent, the further 
 fact that, when his invention was made, there was want in the art for such 
 a device, that in the prior art there were well recognized and admitted defects, 
 and that the appellee's device eliminated those defects and went into general 
 and successful use. — Kitchen v. Levison, 188 Fed. 658; 110 C. C. A. 424. 
 
 § 634. Evidence of — Use by Defendant. 
 
 It is conceded that the invention is a narrow one, — a step beyond the prior 
 art, — built upon it, it may be, and only an improvement upon it. Its legal 
 evasion may be the easier, and hence we see the strength of the concession 
 to its advance beyond the prior art and of its novelty and utility by the 
 runner companj^'s imitation of it. The prior art was open to the rubber 
 company. That "art was crowded," it says, "with numerous prototypes 
 and predecessors " of the Grant tire, and they, it is insisted, possessed all 
 of the qualities which the dreams of experts attributed to the Grant tire. 
 And yet the rubber company uses the Grant tire. It gives the tribute of its 
 praise to the prior art; it gives the Grant tire the tribute of its imitation, as 
 others have done. And yet the narrowness of the claims seemed to make 
 legal evasion easy. Why, then, was there not evasion by a variation of the 
 details of the patented arrangement? Business interests urged to it as much 
 as to infringement. We can find no answ^er except that given by the tire 
 company: " The patented organization must be the one that is essential. 
 Its use in the precise form described and shown in the patent must be in- 
 evitablv necessary." — Diamond Rubber v. Consolidated, 220 U. S. 428; 55 
 L. Ed. 527; 31 S. Ct. 444. 
 
 Chicago V. Sayles, 97 U. S. 554. 
 
 When a defendant persists in using such an improvement in preference to 
 prior devices which he insists are equally efficacious, he tacitly concedes 
 its superiority. It is difficult to reconcile his persistent use, even though it 
 involves him in an infringement suit, with the contention that other devices 
 which he is free to use are equally good. — Rajah v. Grossman, 188 Fed. 73; 
 110 C. C. A. 143. 
 
 The defendants are not in a position to deny that the Scott patent discloses 
 both novelty and invention in view of the fact that the defendant Steber, 
 in March, 1910, received a patent for a knitted fabric which contains all the 
 prominent features of the complainant's fabric, and differs only in details
 
 §§635-636 INVENTION 991 
 
 which do not alter its usefulness or its appearance. In other words, one who 
 receives a patent for the Steber fabric in 1910 is hardly in a position to deny 
 patentability to the Scott fabric of 1908. — General Knit Fabric v. Steber, 
 194 Fed. 99; 114 CCA. 177. 
 
 § 635. Evidence of — Utility — When Evidence. 
 
 We think the invention may be said to be useful within the meaning of the 
 statute, and, that being true, the rule is that the court would not be justified 
 in declaring the patent void. — St. Louis v. Sanitary, 178 Fed. 923; 103 
 C C A. 565. 
 
 Seymour v. Osborne, 11 Wall. 516; Wilbur v. Beecher, Fed. Cas. 17,634; 
 Lehnbeuter v. Holthaus, 105 U. S. 94; Gibbs v. Hoefner, 19 Fed. 323. 
 
 Note: This clearly is not an exact statement of the law. 
 
 Facts: The claim was for crystalline CaC2 in aggregated masses. Amor- 
 phous carbide was old, but was not of practical commercial value. Held: 
 that the difference of character of the products and the difference in utility 
 constituted novelty. — Union Carbide v. Am. Carbide, 181 Fed. 104; 104 
 C C A. 522. 
 
 In view of the presumption arising from the grant, the further fact that the 
 prior art fails to disclose any device showing the same combination, the 
 further fact that its utility is such that it has come into demand, together 
 with the rule of law which requires that doubt be solved in favor of the 
 validity of the patent, it is our opinion that the patent discloses patentable 
 novelty, though of a low order. — Mueller v. Glauber, 184 Fed. 609; 106 
 C C A. 613. 
 
 For an instance of saving a patent from falling within ordinary mechanical 
 skill upon very narrow grounds of patentable utility, see — General Electric 
 V. Hartman, 187 Fed. 131; 109 C C A. 49. 
 
 § 636. Evidence of — Utility — When Not. 
 
 Utility alone is not enough to establish invention. Jacobs v. Almond, 177 
 Fed. 935; 101 C C A. 215. 
 
 In doubtful cases the fact that a patented article has gone into extensive 
 or general use is evidence of its utility ; but that is by no means conclusive 
 of its patentability. Wiien there is no invention, the extent of the use is a 
 matter of no importance. — Boss v. Thomas, 182 Fed. 811 ; 105 C C A. 243. 
 
 McClain v. Ortmayer, 141 U. S. 419; Adams v. Bellaire, 141 U. S. 539; Duer 
 V. Corbin, 149 U. S. 216. 
 
 The considerations of prior demand, unsuccessful attempts to supply the 
 demand, utility, and public favor, are evidence of invention, and in an other- 
 wise doubtful case might turn the scale in favor of its existence. But neither 
 or all of these considerations, regardless of all others, necessarily prove in- 
 vention, the existence of which is always ultimately a question of fact, to 
 be determined upon a consideration of all applicable facts and conditions. 
 — Gould V. Cincinnati, 194 Fed. 680; — C C A. — . 
 
 Familiar rule and authorities stated in — Boldt v. Nevison, 194 Fed. 871; 
 114 C C A. 617.
 
 992 THE FIXED LAW OF PATENTS §§637-655 
 
 § 637. Evidence of — Want of Invention. 
 
 That while the fact that a patent has never gone into general use cannot 
 defeat a patent, it may be considered in construing the patent, see — Na- 
 tional V. Buckeye, 171 Fed. 847; 96 C. C. A. 515. 
 
 Bradford v. Belknap, 105 Fed. 63; Crown v. Aluminum, 108 Fed. 845. 
 
 It would seem that, in a case of doubtful novelty, the fact that a feature 
 relied upon in the patent as important possessed little utility and was dis- 
 placed by a different construction, such fact is pertinent upon the question 
 of novelty, see — Hay ward v. Ellis, 187 Fed. 128; 109 C. C. A. 46. 
 
 § 646. Improvement — Non-Patentable. 
 
 While the policy of our law is to encourage inventions, we siiould in this 
 age of rapid and marvelous improvements in mechanical appliances, when 
 dealing with patents, be careful to distinguish between those improvements 
 which do and tho.se which do not involve real inventive genius. The me- 
 chanical art should not be burdened with patents for those improvements 
 which involve only the skill of the mechanic. — Standard Macliine v. Rambo, 
 188 Fed. 323; 110 C. C. A. 301. 
 
 § 649. Manufacture. 
 
 Facts: The claim was for crystalline CaC2 in aggregated mas.ses. Amor- 
 phous carbide was old, but was not of practical commercial value. Held: 
 that the difference in character of the products and the difference in utility 
 constituted novelty. — Union Carbide v. Am. Carbide, 181 Fed. 104; 104 
 C. C. A. 522. 
 
 § 652. Mechanical Skill — Adaptation. 
 
 That mere change of construction, such as the extension of a lug, turning 
 it in an opposite direction or attaching by means of a screw instead of a rivet, 
 does not rise to the dignity of invention, see — Boss v. Thomas, 182 Fed. 
 811; 105 C. C. A. 243. 
 
 Richards v. Cha.se, 158 U. S. 299; Mast v. Stover, 177 U. S. 485; Ross v. 
 Dovvden, 157 Fed. G81. 
 
 § 653. Mechanical Skill — Aggregation. 
 
 A mere improvement in the method of doing the work does not necessarily 
 lie within the boundaries of patentable invention. — Winston v. Croton Falls, 
 194 Fed. 123; 114 C. C. A. 201. 
 
 Dodge V. N. Y. C. 150 Fed. 738; Dunbar v. Eastern, 81 Fed. 201; Fowler 
 V. City of N. Y. 121 Fed. 747; Richards v. Chase, 158 U. S. 299. 
 
 § 654. Mechanical Skill — Carrying Forward. 
 
 That improvements, though useful, which would occur to those familiar 
 with the electrical art, are not patentable invention, see — General Electric 
 V. Winona, 188 Fed. 77; 110 C. C. A. 147. 
 
 § 655. Mechanical Skill — Change of Form. 
 
 That they discharge into an air current going on one direction, instead of 
 in another, or that they admit only part instead of all the gases, is not a new 
 result, nor does it involve novel co-action so as to support a claim whose only 
 novelty lies therein. — Cummer v. Atlas, 193 Fed. 993; 113 C. C. A. 611. 
 
 Electric v. Perkins, 179 Fed. 511; Nat. Tube v. Aikin, 163 Fed. 260.
 
 §§656-666 INVENTION • 993 
 
 §656. Mechanical Skill — Definition and Distinction from In- 
 vention. 
 
 Many things which seemed indicative of invention in earlier times have 
 lapsed into the domain of the skill and prevision of the artisan, and the test 
 of invention in the mechanical arts has risen to a higher plane as the eye, the 
 hand, the intelligence of the workman have been educated to higher issues. 
 The fruits of the progress thus made belong to the general public, and the 
 danger is that too many of the utilities of life may be covered by thcever- 
 increasing flood of patents, too many of which may have little or no right to 
 a monopoly. — Duncan v. Cincinnati, 171 Fed. 656; 96 C. C. A. 400. 
 
 The question is whether the improvement is the result of mere mechanical 
 skill or involves the higher quality of invention. This question might be 
 answered differently by persons of equal intelligence. — Bossert v. Pratt, 
 179 Fed. 385; 103 C. C. A. 45. 
 
 Western v. LaRue, 139 U. S. 601; Potts v. Creager, 155 U. S. 597; Hobbs 
 V. Beach, 180 U. S. 383; O'Rourke v. McMuUen, 160 Fed. 936. 
 
 § 657. Mechanical Skill — Degree of Knowledge and Skill. 
 
 Mechanical skill is not converted into invention because it is applied to a 
 structure showing the highest degree of inventive genius. If the problena be 
 to construct a key for a lock, it can make no difference whether the lock is 
 attached to a typewriter or an ice box. — Hillard v. Remington, 186 Fea. 334; 
 108 C. C. A. 534. 
 
 § 658. Mechanical Skill — Dividing or Uniting Parts. 
 
 There was no invention in making two parts or two pieces of the integral 
 member employed by the earlier patent. — Chicago Grain Door v. National, 
 173 Fed. 918; 97 C. C. A. 324. 
 
 Bundy v. Detroit, 94 Fed. 524; D'Arcy v. Staples, 161 Fed. 733, and cases 
 cited at page 742. 
 
 To divide the handle midway of the collar would not have constituted 
 invention. — Hilker v. U. S. Mop, 191 Fed. 613; 112 C. C. A. 176. 
 Standard v. Caster, 113 Fed. 162. 
 
 §660. Mechanical Skill — Increased Efficiency. 
 
 That a mere difference in speed or skill is not patentable, see — Highland 
 V. Schmertz, 178 Fed. 944; 102 C. C. A. 316. 
 
 §665. Mechanical Skill — Strengthening or Increasing. 
 
 For a case which comes perilously near holding that strengthening and 
 arranging and adapting parts may involve invention, see — Morgan Engi- 
 neering V. AlUance, 176 Fed. 100; 100 C. C. A. 30. 
 
 §666. Mechanical Skill — Miscellaneous Decisions. 
 
 That merely securing two rows of articles by a single line of stitching 
 instead of two lines is not invention, see — De Long v. Francis, 168 Fed. 900; 
 94 C. C. A. 240. 
 
 That it does not involve invention to put the operating key of a line lock 
 on a tvoewriter in a more convenient place, employing well-known mecha- 
 nisms see - Hillard V. Remington, 186 Fed. 334; 108 C. C. A. 534. 
 
 Mann's v. Monarch, 34 Fed. 130; Aron v. R. R. 132 U. S. 84; Stephenson v. 
 Brooklyn, 114 U. S. 149.
 
 994 THE FIXED LAW OF PATENTS §§6t)7-G71 
 
 § 667. Novelty — Definitions and Distinctions. 
 
 Nor does it detract from its merit tliat it is tlvo result of experiment and not 
 the instant and perfect product of inventive power. A patentee may be 
 baldly empirical, seeing nothing beyond his expwiments and tlwj result; yet 
 if he has added a new and valuable article to the world's utilities, he is en- 
 titled to the rank and protection of an inventor. — Diamond Rubber v. 
 Consolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 Aside from those contentions and the ability l)y which they are supported, 
 we might point out what it does as a demonstration of its difference from all 
 that preceded it, attribute or force, —something which is the law of its 
 organization and function, and raises it above a mere aggregation of elements 
 to a patentable combination. — Diamond Rubber v. Consolidated, 220 L . h. 
 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 § 668. Novelty — Evidence of. 
 
 It appears from the record that neither Wightraan not the Potter patent 
 was cited to the examiner in the Patent Office and were overlooked by him. 
 This circumstance affects the presumption in favor of the validity of the 
 patent from its issuance. — Westinghouse v. Toledo, 172 Fed. 371 ; 97 C. C. A. 
 69. 
 
 Cleveland v. Kauffman, 126 Fed. 658; American v. Sample, 130 Fed. 145. 
 
 Note: It is to be noted that of the two authorities cited in support of this 
 rule the first is a reversed case; and that the second is not a case which would 
 warrant drawing a general rule. Such a rule would be, to say the least, 
 dangerous; for as a matter of fact the file wrapper tlisclo.ses, not all of the 
 patents which an examiner may have examined, but onli/ those he may have 
 considered pertinent. Before such a conclusion could be justified it would be 
 necessary to establish by evidence the fact that the examiner had overlooked 
 the patents in question. 
 
 § 671. Old Device, New Use — General Rules. 
 
 But the application of an old device or combination to a new use is not in 
 itself an invention, or capable of protection by a patent. If the relation be- 
 tween the two uses is remote, and the old device or combination produced a 
 new result by virtue of its application, that application may constitute in- 
 vention. Where a machine or a combination is discovered in a remote art, 
 where it is used to perform a different function, and where it was not designed 
 and was not apparently suitable to accomplish the thing desired, the applica- 
 tion of it with proper mechanical adaptation to a new use is often the result 
 of the exercise of the inventive faculty. But the thought that an existing 
 machine or combination discovered in the same art or one nearly analogous 
 to it, designed and suitable to perform a similar function, may be used or 
 adopted to accomplish the desideratum, is not the product of inventive 
 genius, but the result of the application of the skill of the mechanic to the 
 subject under consideration. It is only when the new use is so recondite and 
 remote from that to which the old device and combination has been applied, 
 or for which it was conceived, that its application would not occur to the 
 mind of the ordinary mechanic skilled in the art, seeking to devise means 
 to perform the desired function, with the old machine or combination before 
 him, that its conception may rise to the dignity of invention. — Warren 
 Webster v. Dunham, 181 Fed. 836; 104 C. C. A. 346. 
 
 Potts V. Creager, 155 U. S. 597; Hobbs v. Beach, 180 U. S. 383; Adams v. 
 Lindell, 77 Fed. 432; National v. Interchangeable, 106 Fed. 693.
 
 §§ 672-673 INVENTION 995 
 
 Note- This statement of a most profound mind is open to one serious 
 criticism. Suppose that the invention was not made " with the old machine 
 or combination before him; " does it follow that if re-mvented independently, 
 the rule does not apply? Clearly not; the law assumes that the inventor 
 has before him the prior art and all its analogies. This clause is, therefore, 
 superfluous, and, possibly, misleading. 
 
 § 672. Old Device, New Use — Non-Patentable. 
 
 That the use of a device for mixing concrete which had been used for 
 mixing tea does not involve invention, see - Ransome v. United Concrete, 
 177 Fed. 413; 101 C. C. A. 217. 
 
 Potts V. Creager, 155 U. S. 597; Mast v. Stover, 177 U. S. 48o. 
 
 That where a wood lining had been previously used as a lining for pumps, 
 it did not involve invention to employ that lining for pipes for dredgers for 
 carrying sand and gravel, see — Lewis v. Semple, 177 Fed. 407; 101 ^. U. A. 
 411. 
 
 Even if the Brayton engine had been used only for stationary purposes, 
 it is by no means certain that its mere selection for incorporation ma motor 
 vehicle without adaptation would have involved invention. — Columbia 
 V. Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 Faure's Appeal, 52 O. G. 754; Shaw v. Worthington, 77 Fed. 992. 
 
 The true test is whether Cadman produced a new result or an improved 
 method of producing an old result. Clearly he did not. At the most he 
 applied an old and well-known combination ol elements, each one pertorm- 
 ing its original function, to a new use. Such was not invention. - Warner 
 V. Stewart, 185 Fed. 507; 107 C. C. A. 607. 
 
 Webster v. Dunham, 181 Fed. 836. 
 
 That the art of pasteurizing beer is analogous to that of curing fish, see 
 — Model Bottling Mach. v. Anheuser-Busch, 190 Fed. d73; 111 C. C. A. 389. 
 
 Rrown v Piper 91 U. S. 37; Crescent v. Gottfried, 128 U- S. 158; Aron v. 
 M^lhlttan, IsTu's. 84; Tl^mson-Houston .. Rahway, 95 Fed. 660; Burns 
 V. Mills, 143 Fed. 325; Am. Brake Shoe v. Railway, 143 l^ed. 54U. 
 
 It does not involve invention to apply an old process or machine or idea 
 to a similar or analogous subject, with no change m the manner of apphca- 
 tol aTd no substantiaUy different result. - Myers .. Fan-banks, 194 Fed. 
 971; 114 C. C. A. 546. 
 
 Blake v. San Francisco, 113 U. S. 679. 
 
 § 673. Old Device, New Use — Patentable. 
 
 Such an application of an old machine or device found in an anal-ogous 
 art to a new ilse is invention and is patentable where its applicability woidd 
 not be perceived by a person of ordinary mechamcal skill, where it would 
 Sot perform the same function requisite for the new use without substantial 
 modification, and where it was not designed by its maker, or adapted, or 
 Actually used, to perform such functions. - Wayne v. Benbow-Brammer, 
 168 Fed. 271; 93 C. C. A. 573. 
 
 Topliff V. Tophff, 145 U. S. 156; Potts v. Creager, 155 U. S. 597; Hobbs v. 
 Beach, 180 U. S. 383. 
 
 Unless the uses are so analogous that the application of the old device to 
 the use of the new would occur to a person of ordinary mechamcal skiU,
 
 996 THE FIXED LAW OF PATENTS §§674-682 
 
 inventive faculty may be involved in such new application. — Electric v. 
 Westinghouse, 171 Fed. 83; 96 C. C. A. 187. 
 
 Potts V. Creager, 155 U. S. 597. 
 
 § 674. Old Elements, New Result. 
 
 The elements of a combination may be all old. In making a combination 
 the inventor has the whole field of mechanics to draw from. — Diamond 
 Rubber v. Coasolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 Leeds v. Victor, 123 U. S. 318. 
 
 § 675. Old Elements, Old Result. 
 
 There could have been no invention in bringing these old elements into a 
 new combination, where each would perform the same service as they did 
 in the earlier art. — Yost v. Pcrkms, 179 Fed. 511; 103 C. C. A. 116. 
 
 Burt V. Evory, 133 U. S. 349; Florsheim v. Schilling, 137 U. S. 77; Burnham 
 V. Union, 110 Fed. 765; Overweight v. Vogt, 102 Fed. 957; Campbell v. Duplex. 
 101 Fed. 282. ^ 
 
 Familiar rule and familiar cases cited in — Sheffield v. D'Arcey. 194 Fed 
 686; — C. C. A. — . 
 
 § 676. Old Process, New Use — Non-Patentable. 
 
 That the discovery of new pos.silMlilitvs of an old process or apparatus 
 producing better but analogous results is not patentable, see — Carmichael v. 
 Jackson, 192 Fed. 937; 113 C. C. A. 327. 
 
 § 679. Patentability — Definition. 
 
 Patents may be obtained for any new and useful art, machine, manufac- 
 ture, or composition of matter, or any new and useful improvement thereof, 
 or any new, original, and ornamental design for any article of manufacture. 
 Aside from these specific classes of patentable inventions, no invention or 
 improvement is patentable, however useful and novel it may be. While 
 matiy devices and many novel combinations of materials used in the con- 
 struction of houses are within the protection of the patent laws, it has never 
 been held, so far as we are advised, that any particular form of construction 
 of a room in a Iwuse, or of a recess in a room, is patentable, whether con- 
 sidered by itself or taken in combination with any conceivable use to which 
 it may be put. —Am. Disappearing Bed v. Arnaelsteen, 182 Fed. 324; 105 
 C. C. A. 40. 
 
 Jacobs V. Baker, 7 Wall. 295; Fond du Lac v. May, 137 U. S. 395; Milligan v. 
 Upton, Fed. Cas. 9607; distinguishing Crier v. Innes, 170 Fed. 324. 
 
 § 680. Patentability — Patentable Difference. 
 
 The presumption is that two patents do not cover the same invention, and 
 the burden is heavily on him who asserts to the contrary. It would require 
 cogent proof to convince the court that the Patent Office would, within a 
 month, issue two patents for the same invention to the same inventor. — 
 Gould Storage Battery v. Electric Storage Battery, 192 Fed. 28* 112 C. C. A. 
 416. ' 
 
 § 682. Patentability — Mental Conception. 
 
 The invention must of necessity, if it be such, consist in the device of the 
 patent, and not m the conception of the principle to be utilized. — Gray 
 Tel. V. Baird, 174 Fed. 417; 98 C. G. A. 353. 
 
 Sewall V. Jones, 91 U. S. 171.
 
 QQ7 
 §§684-693 INVENTION ^^ * 
 
 § 684. Patentability — Miscellaneous Rules. ^ 
 
 Semble that a mere architectural expedient is not patentable, see 
 Tayntor v. Goetchius, 183 Fed. 130; 105 C. C. A. 420. 
 
 S 600. Result or Function. 
 
 men we are dealing with electricity, an i^^f ^b intan|ib e^^^^^^ 
 and in itself of different kinds, and when we know that n ^J.^ clitterent pnabes 
 ft may effect or be affected bV, metals and apphances in different ways and 
 wirihoUy different results We must guard against being misled by the 
 mere superficial resemblances of the appliances and machines "sed m con 
 nect'on w'th it; for from an electrical standpoint the real s^g^^^fi^X- work 
 SSnces lies not in their material, external appearance, but m their vvork- 
 fnf recfund^r the influence of diverse electrical factors. - Westmghouse 
 .. Allis-Chalmers, 176 Fed. 362; 100 C. C. A. 408. 
 
 S601. Scientific Principles and Laws. „ ,,, . ^.^ 
 
 And how can it take from his merit that he may not know all of the forces 
 
 220 U. S. 428; 55 Fed. 527; 31 S. Ct. 444 
 
 O t-^ ^T'Alt Se^°J£on;^FS ^^ci^^t « 
 ?37 fJcI. 853; Van Epps ;. uSted, 143 Fed. 869; Westmoreland .. Hogan, 167 
 
 Fed. 327. 
 
 True Parsons had no patent on the law of the structure as such. But he 
 w.; tT; first to see the advantage of such a structure and to construct ac- 
 was the h^^\^^y^^J.''lg t,ag done and patented caimot be trespassed upon 
 cordmgly. And what he ha^^ the structure necessarily turns 
 
 113 C. C. A. 1. 
 
 S602. SimpHcity — Does not Negative Invention. 
 
 Pearl v. Ocean, Fed. Cas. 10,876. 
 
 & 60^. SimpUcity — Ex post facto Judgment. 
 
 Knowledge after the event is always easy, and problems once solved pre- 
 
 STnvention than subtle Jniectures of what fi^l^-^l'^ZreZ^elnl 
 was not. It regards a change as evidence of novelty, the i"^™?*™"* ;^"^ 
 Sty of changS as a further evidence, even 'g d™""*"!" £' -^'™°°<' 
 Rubber v. Consolidated, 220 U. S. 428; oo L. Ed. 527, 31 b. L,t. 444.
 
 998 THE FIXED LAW OF PATENTS §§696-698 
 
 The invention of Peller, like the rubber button in Frost v. Cohn, 112 Fed. 
 1009, and 119 Fed. 505, and the coHar button in Kremcntz v. Cottle, 148 
 U. S. 556, was one of those fortunate discoveries which seem obvious after 
 it has been made. — Waterbury v. Aston, 183 Fed. 120; 105 C. C. A. 410. 
 
 After a thing of tliis kind is accomplished, the point of view makes it seem 
 a simple contrivance, but in dealing with the question of invention, the es- 
 sential view is from the state of the art existing at the time the necessary 
 problem was sought to be solved. — General Electric v. Hartman, 187 Fed. 
 131; 109 C. C. A. 49. 
 
 § 696. Substitution — New Material — Non-Patentable. 
 
 It is a matter of common knowledge that the use of the screw, the nut and 
 bolt, and the rivet as means of uniting or attaching together two or more 
 pieces or parts of material, were well known, and the mechanical equivalents 
 of each other. — Boss v. Thomas, 182 Fed. 811; 105 C. C. A. 243. 
 
 Peters v. Hansen, 129 U. S. 541. 
 
 § 697. Substitution — New Material — Patentable. 
 
 Practical inventions of great merit arc often based upon comparatively 
 simple changes in form or material. And in this connection it should be borne 
 in mind that the various prior attempts in more complicated structures to 
 use metal in place of wood, as exhibited in some seven or eight patents, had 
 proved failures, and that the Houghton device was the first successful at- 
 tempt to rcmed}' the defects in the old wooden finger-head. — Whitin v. 
 Houghton, 178 Fed. 444; 101 C. C. A. 344. 
 
 For quotations from autliorities holding change of material patentable, 
 see — Frost v. Samstag, 180 Fed. 739; 105 C. C. A. 37. 
 
 Frost V. Cohn, 119 Fed. 505; Hicks v. Kelsey, 18 Wall. 670; Union v. Selchow, 
 112 Fed. 1006. 
 
 § 698. Systems and Arrangements. 
 
 That a system, such as a block-signaling system, may be patentable when 
 there is interaction and one unit modifies or controls the action of an adja- 
 cent unit, see — Hall v. General, 169 Fed. 290; 94 C. C. A. 580. 
 
 The patent covered a mileage book in which the units were in terms of 
 currency instead of miles. Held: Unquestionably, the idea embodied in this 
 ticket is a happj'- one. Possibly it has followed naturally, and without the 
 employment of inventive thought, the wider use of interchangeable tickets. 
 Possibly the wider use of interchangeable tickets has followed the embodi- 
 ment of this idea. Which is cause and which is effect, we have no means of 
 determining. * * * All that we know is, that it was not used before appel- 
 lee's patent, and that it has been followed by the widest use. This, it seems 
 to us, implies that the conception of this ticket, at least, helped to bring about 
 the idea of a wide interchangeable use. — Ran(,l, McNally v. Exchange, 187 
 Fed. 984; 110 C. C. A. 322. 
 
 Note: To this holding Judge Carpenter dissents with a substantial review 
 of the authorities. 'Wliile one is not able to judge a holding of this kind, 
 without the record and exhibits in view, the logic and the law would seem to 
 be with Judge Carpenter. 
 
 _ But where " Arrangement " or " Adjustment " makes operative and prac- 
 ticable what was before inoperative and impracticable, and is not itself so 
 obvious that its utilization is not of higher merit than the mechanic's skill.
 
 §§701-714 JOINT INVENTIONS 999 
 
 "Arrangement" or '' Adjustment ''naay be the bas^ of invention.- 
 Excelsior Supply v. Weed Chain, 192 Fed. 3o; 113 C. C. A. 1. 
 
 S 701. Transposition of Parts. 
 
 ^ade -International v. Kellogg, 171 Fed. 6ol; 96 C. C. A. 39o. 
 
 Rapids, 171 Fed. 863; 96 C. C. A. o31 
 
 Campbell .. Duplex, 101 Fed. 282; Sargent . Larned, Fed- Cas. 12,364, 
 AbboU .Bonn, 51 Fed, 223; Machine Co. v. Murphy, 9/ U. fe. 120. 
 
 There would be no patentability in a mere reversal of f^^^^^ions accora- 
 pliSing tL same resul?by making the blade ng.d and the guard adjustable. 
 — Zinn V. Auto Strop, l/o Fed. /8; 99 C. C. A. iuu. 
 
 S 702. Utility. r J •, 4- 
 
 L improvement which reduces, in any degree, the ^.^^^^^^ ^^ fo '^^^^^^^^^^ 
 and coUiLn, and thus safeguards life and property, is ^^^'^^^ \f^^^^^^{ 
 consideration than one which deals only with economic. - Hall v. General, 
 169 Fed. 290; 94 C. C. A. 580. 
 
 Utility alone cannot support a patent monopoly. - Trethaway v. Bertels, 
 180 Fed. 730; 104 C. C. A. 96. 
 
 Mere useful and economic administrative methods, however valuable 
 
 JOINT INVENTIONS. 
 
 S 704. General Statement and Rules. 
 
 The patent was for a combination, and while the evidence would justify 
 
 nnd the issXg of the patent there is, in many instances, a long stretch of 
 trmedevoteTto experiments and the consideration of the form or forms m 
 wMch It may be bjst used. The law -temP^tes^h. and gives time for 
 it. — Vrooman v. PenhoUow, 179 Fed. 296; 102 C. C. A. 4»*. 
 
 JURISDICTION. 
 S 714. Contracts. 
 
 That the license agreement (attached to the ^^f f^^J,,^'' Tt^'defen^ 
 tract not to use the machine in a prohibited manner, s plain. Ihe detenci 
 Ints might be sued upon the broken contract, or for its e-foi-cement r^^^^^ 
 the forfeiture of the license, is likewise plain. But it by tlie u^e o tne nia 
 hLe in a prohibited way Miss Skou infringed the P^t-^' Ah-^.tVfs pr?- 
 liable to an action under the patent law for infringement. Now that is pri
 
 1000 THE FIXED LAW OF PATENTS §§715-717 
 
 marily what the bill alleged, and this suit is one brought to restrain the de- 
 fendants as aiders and abettors to her proposed infringing use. That the 
 patentee may waive the tort and sue upon the broken contract, or in assump- 
 sit, is elementary. But if the patentee elect to waive the tort and sue upon 
 the covenants or for a breach of contract, the suit would not be one depend- 
 ent upon or arising out of the patent law, and a Federal court would ha\'c no 
 jurisdiction unless diversity of citizenship existed. — Henry v. Dick, 224 
 U. S. 1 ; 56 L. Ed. 645; 32 S. Ct. 364. 
 
 Rob. Pat. §§ 1225, 1250 & n.; Steam Cutter v. Sheldon, 15 Foil. 608; Pope 
 V. Owsley, 27 Fed, 100; Button Fastener Cu.ses, 77 Fed. 288, 2<)1; Wilson v. 
 Sanford, 10 How. 99; Magic llulHe v. Elm City, Fed. Cas. 8949; Goodyear v. 
 Union, Fed. Cas. 5586; Goodyear v. Congress, Fed. Cas. 5565. 
 
 That where the gravamen of the bill arises out of contractual relations and 
 a minor charge of infringement is imperfectly pleaded, such minor allegations 
 will not give jurisdiction under the patent statute, see — Reliable v. Stahl, 
 105 Fed. 663; 44 C. C. A. 657. 
 
 The bill was for infringement and there was a subsisting contract of license, 
 the bill not alleging that the contract had been re.-^cinded, but alfeging that 
 defendants had forfeited the contract by denying the validity of the patent. 
 Held: Are there existing contracts between these parties? Has the conduct 
 of the respondents been such as to preclude them from availing themselves 
 of the license granted by said contracts? Docs the law give the complainant 
 a right to ignore the contracts and enforce the monopoly of its patent? 
 Stripped of all verbiage and extraneous matter, the question to which this 
 case would ultimately come is one of contract rights. — Am. Graphophone 
 V. Victor, 188 Fed. 428; 110 C. C. A. 308. 
 
 Following Wilson v. Sanford, 10 How. 99; Hartell v. TilKhman, 99 U. S. 5471 
 distinguishmg White v. Rankin, 144 U. S. 635; citg. McMullen v. Bowers, 102 
 Fed. 494; American Co. v. Jones, 122 Fed. 803; White v. Lee, 3 Fed. 222; 
 Adams v. Meyrose, 7 Fed. 208; Standard Co. v. National, 95 P\>d. 291. 
 
 The Federal courts have exclusive jurisdiction of all cases arising under 
 the patent laws, but not of all questions in which a patent may be the sub- 
 ject-matter of the controversy. For courts of a state may try questions of 
 title, and may construe and enforce contracts relating to patents. — New 
 Marshall Engine v. Marshall, 223 U. S. 473; 56 L. Ed. 513; 32 S. Ct. 238. 
 
 Wade V. Lawder, 165 U. S. 627. 
 
 § 715. Court of Claims. 
 
 That where the Government, with the consent of the owner of a patent, 
 and without denial or contest of the validity of the patent, uses the inven- 
 tion, a contract by implication arises which is justiceable in the Court of 
 Claims, see — Crozier v. Krupp, 224 U. S. 290; 56 L. Ed. 771; 32 S. Ct. 488. 
 
 § 717. Equity — Expiration of Patent Pendente Lite. 
 
 The bill was filed the 15th, subpoena served the 17th, and the patent 
 expired the next day, the 18th. The bill was demurred to as without equity, 
 because complainant had a plain, adequate and complete remedy at law, 
 and because the bill was filed so shortly before the expiration of the patent 
 that no motion for an injunction could have been regularly noticed. It is 
 manifest that complainant in an action at law could recover nominal 
 damages only. He could not prove loss of license fees, because he had no 
 estabhshed license fee; nor could he show lost sales, because he was not in 
 fact selling at all; nor could he show reduction in prices through competition,
 
 §§ 718-722 JURISDICTION 1001 
 
 because there was no competition; nor that his market was destroyed by 
 the mfringer, because he was not undertaking to establish a market. The 
 patentee's remedy at law would seem to be inadequate, if because of his 
 failure to estabhsh a Hcense fee, or to endeavor to market his invention, he 
 had lost the right to recover more than nominal damages, while under a 
 suit in equity there could be recovered the actual profits, possibly large, 
 which the defendant made by his unlawful piracy of plaintiff's invention. 
 The case stated in the bill seems to bring it within the category set forth 
 in Root V. Railway. — Tompkins v. International, 183 Fed. 773; 106 CCA. 
 529. 
 
 Root V. Railway, 105 U. S. 189; Clark v. Wooster, 119 U. S. 322; Miller v. 
 Schwarner, 130 Fed. 561; Am. Cable v. Chicago, 41 Fed. 522; Bragg v. Hartford, 
 56 Fed. 292; Davis v. Smith, 19 Fed. 823; Diamond v. Seus, 159 Fed. 497; 
 Suffolk V. Hayden, 70 U. S. 315; Coupe v. Royer, 155 U. S. 565; refusing to 
 concur in McCune v. Baltimore, 154 Fed. 63. 
 
 § 718. Equity — Rule. 
 
 The remedy which the complainant seeks may often determine whether 
 the suit is one arising under the patent law and cognizable only in a court of 
 the United States, or one upon a contract between the patentee and his 
 assigns or licensees, and, therefore, cognizable only in a state court, unless 
 there be diversity of citizenship. Thus, a bill to enforce a contract concern- 
 ing the title to a patent, or an interest therein, or to declare a forfeiture of 
 an assignment of an interest in a patent, or even a license to make, sell or 
 use the patented thing or an action to recover damages for a breach of con- 
 tract relating to a patent or a license thereunder, would not, because of the 
 character of remedy or relief sought, be a suit cognizable in a United States 
 court, although the facts stated might have justified a suit for infringement 
 in a United States court, if the complainant had elected that remedy. To 
 sustain the contention that a breach of the implied agreement not to use the 
 machine in question except in a particular way might have supported a suit 
 to forfeit the license, or an action for damages upon the broken contract, 
 counsel have cited and commented at great length upon the cases of Wilson 
 V. Sanford, 10 How. 90; Dale v. Hyatt, 12.5 U. S. 46; Albright v. Teas, 106 
 U. S. 613; Hartell v. Tilghman, 99 U. S. 547; Pratt v. Paris, 168 U. S. 255; 
 Keeler v. Standard, 157 U. S. 659, and Bement v. National, 186 U. S. 70; but 
 an examination of these cases will disclose that while in some of them a suit 
 for infringement might have been brought, the complainants had in fact 
 brought suits to set aside or enforce contracts relating to j^atents, or licenses 
 under patents. They were, therefore, not " patent cases," but cases deter- 
 minable upon principles of general law. * * * The test of jurisdiction is 
 this: Does the complainant " set up some right, title or interest under the 
 patent laws of the United States, or make it appear that some right or priv- 
 ilege will be defeated by one construction, or sustained bv another, of those 
 laws? " — Henry v. Dick, 224 U. S. 1; 56 L. Ed. 645; 32 S. Ct. 364. 
 
 Quoting Excelsior v. Pacific, 185 U. S. 282; citg. Pratt v. Paris, 168 U. S. 255: 
 White V. Rankin, 144 U. S. 628. 
 
 § 721. Infringement. 
 
 Obviously, a suit for infringement, which must turn upon the scope of the 
 monopoly or privilege secured to a patentee, presents a case arising under 
 the patent law. — Henry v. Dick, 224 U. S. 1; 56 L. Ed. 645; 32 S. Ct. 364. 
 
 § 722. Licensor and Licensee. 
 
 Whether a patentee may lawfully impose such restrictions (restrictions 
 to use the machine only with supplies sold by the patentee), and whether
 
 1002 THE FIXED LAW OF PATENTS §§723-728 
 
 their violation constitutes an infringement, arc obviously questions arising 
 under the patent law. —Henry v. Dick, 224 U. S. 1; 56 L. Ed. 645; 32 
 S. Ct. 364. 
 
 Littleficld V. Perry, 21 Wall. 205. 
 
 Were the court to assume supervision of this continuous contract now, and 
 enforce its performance by its injunction, it must continue this supervision, 
 and see to it during the whole existence of tlie contract that both parties 
 fulfill their mutual obligations. This has been repeatedly declared to be 
 outside of the functions of a court of equity. — Berliner v. Seaman, 110 Fed. 
 30; 49 C. C. A. 99. 
 
 Strang v. Railroad, 101 F(>d. .511; Marble v. Riplev, 10 Wall. 3:59; Texas 
 & P. V. Marshall, 136 U. S. 405; Ross v. Railway, Fed. Ca.s. 12,1S1. 
 
 § 723. Residence. 
 
 That an assignment of a cause of action merely to give jurisdiction is in- 
 effective, see — Consolidated v. Ferguson, 183 Fed. 756; 106 C. C. A. 330. 
 
 § 724. State Court. 
 
 That an action to rescind a contract respecting a patent is not a Federal 
 question, see — Wade v. Lawder, 165 U. S. 624; 41 L. Ed. 851; 17 S. Ct. 
 425. 
 
 LACHES. 
 
 § 727. Application. 
 
 If during Dean's suspension of activities, McCormick had either patented 
 the device or brought it into public use without a ]:)atcnt, the public would 
 have been indebted to McCormick for benefits conferretl, and Dean might 
 well be held estopped by his delay from claiming the public grant; but in our 
 judgment neither reason nor authority sanctions an estoppel against the first 
 and true inventor unless the later comer has cut in between and made the 
 public his debtor by being the first to get to the patent office or the market. 
 International v. Kellogg, 171 Fed. 657; 96 C. C. A. 395. 
 
 Kendall v. Winsor, 21 How. 328; Consolidated v. Wright, 94 U. S. 92; Savary 
 V. Lauth, Fed. Cas. 12,389; White v. Allen, Fed. Cas. 17,535; Universal v. 
 Comptograph, 146 Fed. 984. 
 
 It is urged that we should regard unfavorably the patent on account of 
 this delay in the Patent Office, should seek to avoid giving it a broad con- 
 struction, and should permit the alleged abuse of the law to weigh against 
 the standing of the complainants in a court of equitj'. But the patentee 
 acted wholly within his rights. He merely took advantage of the delays 
 which the law permitted him. He followed strictly the statutes and rules of 
 procedure, and the courts cannot exact a greater measure of diligence from 
 him. When the patent was granted under the authority of the law, it be- 
 came entitled to the construction accorded to anj^ other patent. If the 
 statutes and rules permit unnecessary delays, they should be changed; 
 but we reject the view that this court owes a duty to relieve against their 
 operation. This patent, even if it be useful only for tribute, must be \aewed 
 without prejudice and with absolute judicial impartiality. — Columbia v. 
 Duerr, 184 Fed. 893; 107 C. C. A. 215. 
 
 § 728. Bringing Suit. 
 
 The proofs show that the complainant waited for 12 years before bringing 
 this action, and is guilty of such laches as will preclude a recovery for profits
 
 §§735-744 LAW ACTIONS 1003 
 
 and damages. -Safety Car Heating .. Consolidated, 174 Fed. 65S; 98 
 C. C. A. 412. 
 
 LAW ACTIONS. 
 
 Whefe th!'h^yTas decided the questions of invention and infringement 
 
 reached a different conclusion. — Heide v. Panouiias, ib5 J^ea. yi , 
 C. C. A. 656. 
 
 Tucker v. Spalding, 13 Wall. 455. 
 
 LETTERS PATENT. 
 
 S 741. Contract Theory. ^ u n Uo 
 
 Bossert v. Pratt, 179 Fed. 385; 103 C. C A. 45. 
 
 Grant v. Raymond, 6 Pet. 240; Blanchard v. feprague, Fed. Gas. 1517. 
 
 A ,...tPnt is a contract made by the acceptance by the government of the 
 
 and sale ot it toi 1/ years. y%"/;. ' „, • „„ppntpd and with his claims 
 191 Fed. 350; 112 C. C. A. 8. 
 
 — Krupp V. Midvale, 191 Fed. 588; 112 C. C. A. 194. 
 
 S 744. Monopoly. , 
 
 ThVmanufacturino- company had the right to select its customers, and to 
 selTaXo rrfu e o^sell to whomsoever it chose, and the provision making 
 the Creamery Company its sole sales agent was a f ^^^J^nd ^^f ^J^^^l^ 
 method oT providing for the disposition of its product. The effect of tins 
 Contract if,^indeed,1t had any effect, upon interstate or international cx,m- 
 merce was only inci^dental and indirect. - Virtue v. Creamery, 179 Fed. 115, 
 102 C C A 413 
 
 Union Pacific t;. U. S. 173 Fed. 737; Whitwell v. Continental, 125 Fed. 454; 
 Gincinnati v. Bay, 200 U. S. 179. 
 
 The mere fact that the Creamery Company was a party to an unlawful 
 combination would not deprive it of the right to sue and recover damages
 
 1004 THE FIXED LAW OF PATENTS §§745-755 
 
 against an infringer of patents owned by it, or to bring suit if it believed 
 the patents were being infringed. — Virtue v. Creamery, 179 Fed. 115; 102 
 C. C. A. 413. 
 Strait V. National, 51 Fed. 819. 
 
 Monopoly in production and use being the legitimate purj)osc of the grant, 
 the sole test of right thereto is the validity and scope of the patent. — Gen. 
 Electric v. Winona, 183 Fed. 418; 105 C. C. A. 652. 
 
 Note: In connection with this decision attention is called to the circuit 
 court decision in United States v. Standard Sanitary Co. 191 Fed. 172. 
 
 § 745. Nature of Grant. 
 
 A patent is not the grant of a right to make or use or sell. It docs not, 
 directly or indirectly, imply any such right. It grants only the right to ex- 
 clude others. The supposition that a right to make is created by the 
 patent grant is obviously inconsistent with the established distinctions 
 between generic and specific patents, and with the well-known fact that a 
 very considerable portion of the patents granted are in a field covered by a 
 former relatively generic or basic pat<3nt, and are tributary to such earlier 
 patent, and cannot be practised unless by license thereunder. — Herman 
 V. Youngstown, 191 Fed. 579; 112 C. C. A. 185. 
 
 LICENSE. 
 
 § 755- Forfeiture. 
 
 The license contained a forfeiture clause, operative on failure of licensee 
 to pay royalties, or render accounts, after notice from licensor. The licensor 
 gave such notice in wTiting terminating the license. The licensee paid all 
 accrued royalties. Complainant brought this suit for infringement, and 
 defendant filed a cross-bill for a decree holding the license to be in force and 
 effect. The cross-bill was stricken out, and the bill of complainant dismissed 
 for want of equity. Held: We think that the defendant asking affirmative 
 relief followed the better practice in filing the cross-bill. It seems to us that 
 payment of the royalty in licenses is, so far as the licerLsor is concerned, the 
 main object of the contract, and that a court of equity ought to relieve 
 against the forfeiture if paj^ment with interest will fully compensate him, 
 and this whether the provision as to forfeiture is self executing or at the op- 
 tion of the licensor or in a mode prescribed, as in this case, by giving notice 
 in writing. The complainant contends that, the parties having agreed 
 upon their respective rights in a precise manner, the court would be making 
 a new contract for them if it relieved against the cancellation of the license 
 (on the authority of White v. Lee, 3 Fed. 222; Hammacher v. Wilson, 26 
 Fed. 239; Piatt v. Fire Extinguisher, 59 Fed. 897). We can go with these 
 authorities so far as to ho'd that, when the contract provides the manner 
 in which the licensor may forfeit the license, he need not apply for assistance 
 to any court, but not to say that in such a case a court of equity is without 
 power to relieve against the forfeiture at the instance of the licensee. Royal- 
 ties having been paid in full at the time the bill was filed, though with a little 
 delay, and the licensee being readj', willing, and able to pay punctually 
 thereafter, the licensor was not injured, and we think the court properly 
 dismissed the bill. — Foster v. Taylor, 184 Fed. 71 ; 106 C. C. A. 467. 
 
 Giles V. Austin, 62 N. Y. 486; Horton v. N. Y. Central, 12 Abb. N. C. 30; 
 Atkins V. Chilson, 11 Mete. 112; Klein v. Ins. Co. 104 U. S. 88; N. Y. Life v. Statham, 
 93 U. S. 24; distinguishing Wilson v. Sanford, 10 How. 99; Kartell v. Tilghman, 
 99 U. S. 547; White v. Lee, supra; Hammacher v. Wilson, supra; Piatt v. Fire 
 Extinguisher, supra.
 
 §§ 758-761 LICENSE 1005 
 
 That where the license agreement did not contain definite terms of for- 
 feiture, held: In the absence of any such provision, mere delay in payment, 
 though long continued, would, of course, give a right to sue for royalties but 
 would not ipso facto operate to annul the contract. — Rowland v. Biesecker, 
 185 Fed. 515; 107 C. C. A. 615. 
 
 That a licensee holding a non assignable license to make and sell may 
 organize a corporation which he controls and have that corporation manu- 
 facture the articles for him exclusively, he accounting personally to the 
 licensor, without forfeiture of his license, see — Foster v. Taylor, 191 Fed. 
 1003; 111 C. C. A. 667. 
 
 § 758. Non-Assignable. 
 
 The inventor assigned patents to the West Virginia company with the 
 restriction, among others, that it should not assign the contract without the 
 inventor's consent. By bill of sale the company convej^ed all its contracts, 
 good will and property to the Ohio company, its successor without the 
 consent of the inventor. Held: The Ohio company was not the successor 
 (or heir) of the West Virginia company. Hibbard's contract, being personal, 
 could not pass to the Ohio company save by assignment, and the assi-gnment 
 could not be effective without Hibbard's consent. — Niagara v. Hibbard, 
 179 Fed. 844;, 103 C. C. A. 330. 
 
 Dillingham v. Snow, 5 Mass. 554; Overseers v. Sears, 39 Mass. 122; Hapgood 
 V. Hewitt, 119 U. S. 226; Boston v. Potter, 123 Mass. 28; Bowers v. Lake Su- 
 perior, 149 Fed. 983. 
 
 § 759. Parol. 
 
 The license was oral, it is true; but that is no objection to its validity. — St. 
 Louis V. Sanitary, 178 Fed. 923; 103 C. C. A. 565. 
 
 Sharpies v. Moseley, 75 Fed. 595; Gayler v. Wilder, 10 How. 477. 
 
 § 760. Royalties. 
 
 The licensee gave a sub license, receiving $20,000 lump sum for the first 
 800,000 articles, regardless of the validity of the patent and regardless of 
 whether the sub-licensee took that number or not; and a further royalty of 
 one cent each on all articles over 800,000. The licensee contended that the 
 $20,000 was a bonus to him, for which he did not have to account to his 
 licensor. Held: We cannot assent to this construction. It is immaterial 
 when the banks were made, or 'whether the whole number are ever made. 
 Royalties freeing them from the patent have been paid once for all, under an 
 agreement not to make reclamation for any part of them, should the patent 
 be held invalid. To the extent of the 800,000 his licensors are entitled to 
 look to Brigham for the royalties he agreed to pay to them at the stinulated 
 rate of one cent each. — Reizenstein v. Koopman, 178 Fed. 546; 101 C. C. A. 
 462. . 
 
 That where a licensee consigned a shipment of goods and the same were 
 destroyed by fire in transit and the licensee collected insurance on the goods, 
 the licensor was entitled to regular royalties on the same — the insurance 
 company being regarded as a purchaser, see — Reizenstein v. Koopman, 
 178 Fed. 546; 101 C. C. A. 462. 
 
 § 761. Scope of. 
 
 That when defendants agreed to pay plaintiff $500 upon demonstration 
 of his invention and the further sum of $2500 from sales under the patent, 
 and plaintiff failed to obtain a patent and one of the defendants subsequently
 
 1006 THE FIXED LAW OF PATENTS §§762-774 
 
 I 
 obtained a patent on the device, held: Treating tlie action as in tort, which 
 was the theory on which it was tried, to recover damages for the wrongful 
 appropriation by the dei'endants of plaintiff's invention, the measure of dam- 
 ages is obviously the value of the invention. But the proof showed that no 
 clutch was manufactured or sold between the date of the patent to Forman 
 and the trial. The evidence is that the invention was conunercially a failure. 
 What the defendants had agreed they would pay the plaintiff upon a con- 
 tingency which never happened, viz., S20U0 out of the first profits earned, 
 is no evidence of the actual value of the invention. — Childs v. LeBrocq, 
 178 Fed. 719; 102 C. C. A. 211. 
 
 A limited license convoys only the rights defined therein, and if the licensee 
 makes any other or different use, either as to time or place, than that author- 
 ized by the license, he becomes an infringer, and his limitetl license is no jus- 
 tification. — St. Louis V. Sanitary, 178 Fed. 923; 103 C. C. A. 565. 
 
 Heaton v. Eureka, 77 Fed. 288. 
 
 § 762. Termination of. 
 
 The license provided: " This agreement to extend 5 years from date with 
 privilege of 10 years, or terminate at any time if by mutual consent of both 
 parties." Held: Defendant's privilege of continuing for 10 years was one 
 which he could exercise ex parte. The case differs materially from Seal i'. 
 Bookkeeper, 130 Fed. 449, relied on by complainant, where it was provided 
 that the second party might renew for an extended period " by mailing first 
 party written notice of his intention so to do." — Rowland v. Biesecker, 185 
 Fed. 515; 107 C. C. A. 615. 
 
 § 764. Miscellaneous. 
 
 Neither does the fact that the license was granted after the application 
 was filed, but before the issuance of the letters patent, render it invalid. — 
 St. Louis V. Sanitary, 178 Fed. 923; 103 C. C. A. 565. 
 
 Brush V. California, 59 Fed. 945. 
 
 MACHINE AND PROCESS. 
 
 § 770. General Rules. 
 
 A process and an apparatus by which it is performed are distinct things. 
 Thev may be found in one patent; they may be made the subject of different 
 patents. — Leeds v. Victor, 213 U. S. 301; 53 L. Ed. 805; 29 S. Ct. 495. 
 
 That the fact that the patented process cannot be used without the pa- 
 tented apparatus, or the apparatus without the process, does not make them 
 the same invention and not separately patentable, and that as the statute 
 makes no such distinction, the courts may not, see — Century Electric v. 
 Westinghouse, 191 Fed. 350; 112 C. C. A. 8. 
 
 Armour v. United States, 153 Fed. 1. 
 
 MANUFACTURE. 
 
 § 774. Novelty. 
 
 A new article of commerce is not necessarily a new article patentable as 
 such. But patentable novelty in a case like the present may be founded 
 upon superior efficiency; upon superior durability, including the ability to 
 retain a permanent form when exposed to the atmosphere; upon a lesser 
 tendency to breakage and loss; upon purity, and, in connection with other 
 things, upon comparative cheapness. So, as supplementing other considera- 
 tions, commercial success, may properly be compared with mere laboratory
 
 §777 MARKING " PATENTED " 1007 
 
 experiments. — Union Carbide v. Am. Carbide, 181 Fed. 104; 104 C. C. A. 
 522. 
 
 MARKING "PATENTED." 
 
 § 777. Rulings under the Statute. 
 
 The design was used upon a belt and upon a hatband. To all the belts he 
 niade and sold he affixed the notice " Lichtenstein Pennant Belt, Pat. Jan. 
 15, 1907." To the hatbands, however, which he made, placed on women's 
 sailor hats and sold with the hats, he affixed no notice; but upon the lining 
 in the inside of the hats he printed the notice, " Lichtenstein Pennant Sailor, 
 Pat. Jan. 15, 1907." We do not think it can be fairly said that the label 
 inside on the lining of the hat was affixed to the band, or that the hat was a 
 package within which one or more bands were enclosed. Inasmuch as com- 
 plainant admits that no labels other than these were affixed to anything, he 
 has failed to make sufficient proof of notice to entitle him to recover damages, 
 profits, or statutory penalty. — Lichtenstein v. Phipps, 168 Fed. 578; 93 
 C. C. A. 483. 
 
 Note: This case is believed to be the cUmax of this sort of hair-splitting 
 that has been indulged in of late in the misinterpretation of the statute. 
 While we must bow to the dictates of this court, we sincerely hope it will 
 not be long before the Supreme Court puts a stop to this line of decisions, 
 and reverses a goodly number of them. 
 
 The testimony is unpersuasive that all the monuments sold were marked. 
 Indeed, the evidence with respect to several — the Coon monument, for 
 example — is convincing that they were not marked. The complainant 
 has failed to establish a case in which damages can be recovered. — Crier 
 V. Innes, 170 Fed. 324; 95 C. C. A. 508. 
 
 Note: This is carrying the rule as to marking a step beyond what has 
 ever before been held. Not only must the complainant have marked every 
 article sold, but the burden of proof is apparently upon him to establish that 
 fact. While this is a holding with reference to a penalty in a design case, with 
 the present tendency of this court on this subject, the next step may be to 
 extend this rule generally to all cases. 
 
 The opinion of Judge Brown covers the following points in qui tam actions 
 under §4921, R. S.: 
 
 1. That the statute does not prescriiie a distinct penalty for each individ- 
 ual article marked, but merely a penalty for the offense of marking, and 
 that, therefore, where the marking is all done on the same day and at the 
 same time, so that it is practically a single, continuous act, but one offense 
 is committed and only a single penalty is recoverable, though more than 
 one article may have been marked. Hotchkiss v. Cupples, 53 Fed. 1018; 
 Hoyt V. Computing, 96 Fed. 250; Taft v. Stephens, 38 Fed. 28. 
 
 2. As the penalty is not measured by the extent of publication of the false 
 statement, the statute must be read as making the fraudulent purpose or 
 intent to deceive the public the gravamen of the offense, and the marking 
 as the overt act whereby the intent is made manifest. U. S. Condensed v. 
 Smith, 101 N. Y. Supp. 129. 
 
 3. That a plaintiff, in order to recover more than a single penalty, must 
 go further than to prove the marking of a number of unpatente 1 articles. 
 The proof must be sufficiently specific as to the time and circ in stances to 
 showa number of distinct offenses, and to negative the possibility that the 
 marking of the different articles was in the course of a single and continuous 
 act.
 
 1008 THE FIXED LAW OF PATENTS §777 
 
 4. Though a single violation of the statute may be proved by general 
 evidence that the article was falsely marked within the period of the statute 
 of limitations, yet concerning the article of the character in question in tliis 
 suit there can arise no presumption that each act of marking was so separated 
 from the others as to constitute a distinct offense. 
 
 5. In order to prove distinct offenses, however, it was not essential that 
 the plaintiff should be able to prove the specific date of marking. It was 
 sufficient if the evidence showed such divergence of time and circumstances 
 as to make one act of marking separable and distinct from the other acts 
 of marking. 
 
 6. The commission of a single offense could be proved by evidence that 
 the marking was done within the period of limitations. The ruling that the 
 plaintiff was bound to prove some speciftc date of marking, and could not 
 recover without doing so, was error. 
 
 7. That where the evidence is sufficient to raise the question of commission 
 of an act of marking, it should be submitted to the jury. 
 
 8. The purpose to deceive the public is an essential element of the offen.se, 
 and the burden is upon the plaintiff to establish this purpo.se, as well as the 
 fact that the article is unpatented. The .statute does not extend to one 
 who has an honest, though mistaken, belief that upon a proper construction 
 of the patent, it covers the article which he marks. The question of guilt 
 does not depend upon such close or exact construction of the patent aa is 
 usual upon bills for infringement where the issue is as to the extent of the 
 patentee's right under letters patent. 
 
 9. Where the article marked is obviously very remote from the patent 
 referred to in justification of the marking, this difference alone may be suffi- 
 cient to show an intention to deceive; but where the difference is slight, and 
 the question of the breadth of the invention or of the claims is so clo.se as to 
 permit of an honest difference of opinion, then it may become necessary 
 for the plaintiff to adduce testimony additional to the fact that the article 
 is unpatented, in order to show guilty knowledge as distinguished from erro- 
 neous opinion. 
 
 10. Though the article was without the terms of the patent, the question 
 of the defendant's good faith in assuming it to be witliin the patent was a 
 question of fact for the jury. 
 
 11. The defendant contends that this offense is one that cannot be com- 
 mitted by a corporation; but we are of opinion that this objection is without 
 merit. N. Y. Central v. U. S. 212 U. S. 481; United States v. Union, 215 
 U. S. 50. 
 
 12. An officer of a defendant corporation may not refuse to testify on the 
 ground that he is privileged. Hale v. Henkel, 201 U. S. 43. — London v. 
 Dunbar, 179 Fed. 506; 103 C. C. A. 130. 
 
 That where complainant alleged " that it has apphed the said improve- 
 ments to practical use, and has always stood read}' and now stands ready to 
 supply any and all demands of the public for said improvement," etc., and 
 upon giving supplemental proofs before the master asserts that it never 
 gave notice required by § 4900 because one of the patented articles had been 
 in existence, in order to avoid the force and effect of that section ; held: We 
 think such a contention cannot be sustained. What right of recovery of 
 profits or damages the complainant might have had, if in its bill it had sub- 
 stituted for the allegations above quoted allegations showing that it had locked 
 up its patent and had not used it, we need not consider. It is sufficient for 
 us at present to say that the defendant was not called on by the bill to defend 
 against the complainant's present contention. — Lorain v. N. Y. Switch, 
 184 Fed. 301; 106 C. C. A. 443.
 
 §§779-795 OATH 
 
 1009 
 
 OATH. 
 
 § 779. Statutory Requirements and General Rule. 
 
 That it is not perjury under § 5392, R. S. for an applicant to swear that he 
 is the sole inventor when in fact he is a joint inventor, see — Patterson v. 
 U. S. 181 Fed. 970; 104 C. C. A. 434. 
 
 § 780. Supplemental Oath. 
 
 He made no claim for a process and disclosed no invention of a device. 
 This being so, the amendment required an oath that Dolan might have found 
 it difficult to make, and for want of it the patent is void. — Steward v. 
 American, 215 U. S. 161; 54 L. Ed. 139; 30 S. Ct. 46. 
 
 R S §4892; Chicago v. Sayles, 97 U. S. 554; Eagleton y West, 111 U. S. 
 490;' Kennedy v. Hazleton, 128 U. S. 667; De La Vergne v. Featherstone, 147 
 U. S. 209. 
 
 That where a claim is added by amendment without supplemental oath, 
 if the claim is narrower than the invention previously claimed and the 
 subject-matter is shown, it is not invalid for want of oath, see — General v. 
 Morgan-Gardner, 168 Fed. 52; 93 C. C. A. 474. 
 
 PATENT OFFICE. 
 § 787. Miscellaneous. 
 
 For an instance of the inadequacy and superficiality of some Patent Office 
 actions, see — Am. Specialty v. New England, 176 Fed. 557; 100 C. C. A. 
 193. 
 
 PLEADING AND PRACTICE. 
 § 790. Bill of Review. 
 
 That where, upon the affirmance of a decree dismissing a bill, the com- 
 plainant files a disclaimer and asks amendment of the mandate to permit 
 the filing of a supplemental bill in the nature of a bill of review, such motion 
 is made in season, see - Fellows v. Borden's, 187 Fed. 1005; 109 C. C. A. 535. 
 
 § 794. Multifariousness. 
 
 That where judgment has been had against several defendants for in- 
 fringement and execution returned unsatisfied, in a suit brought to reach the 
 property of one of the defendants — the liability of the several defendants 
 not being identical — the bill is not multifarious as joimng different causes 
 and conditions, see - Hobbs v. Gooding, 176 Fed. 259; 100 C. C. A. 83. 
 
 § 795' Notice. 
 
 That where a substantial defense of anticipation, not pleaded, was de- 
 veloped upon cross-examination of complainant's witnesses, and no objec- 
 tion to want of statutory notice was made, such objection cannot be raisecl 
 for the first time on ^he appeal; and to allow further evidence to be taken 
 , after decision in the Circuit Court of Appeals would introduce a novel prac- 
 tice and one which should not be encouraged. — Dey v. Bundy, 178 l^ed. 
 8I2'; 102 C. C. A. 260. 
 
 Objection is made to certain testimony of anticipation and prior use be- 
 cause notice was not given of it in the answer. It was admissible to show the
 
 1010 THE FIXED LAW OF PATENTS §§803-806 
 
 state of the art, to show what was old, to distinguish what is new, and to " 
 aid the court in the construction of the patent. — Stevens v. Rodgers, 186 
 Fed. 631; 108 C. C. A. 495. 
 
 Dunbar v. Myers, 94 U. S. 187; May v. Juneau, 137 U. S. 408. 
 
 § 803. Sufficiency. 
 
 We do not intend to approve the action of the complainant in witlihald- 
 ing the prior application until after the defendant's jiroofs had been taken 
 and the introduction of rebutting testimony had commenced. It would seem 
 that defendant is entitled to know by allegations in the bill when the appli- 
 cation for patent was filed and prepare his defen-se accordingly. — Corring- 
 ton V. Westinghouse, 178 Fed. 711; 103 C. C. A. 479. 
 
 That where the answer to a bill on several patents was a general denial of 
 infringement, and the proofs showed two .separate causes of action, so that 
 the bill might have been treated as multifarious, the answer cannot be treated 
 as a denial of one cause and an admission of the other, see — Perry v. Chicago, 
 178 Fed. 449; 101 C. C. A. 433. 
 
 § 804. Suit on Plurality of Patents. 
 
 The only difference in the two patents consists in the fact that the inven- 
 tion of the patent of 1901 improved one of the elements of the combination 
 of the earlier patent. The infringement was of both patents, in the same 
 machine, and by the same parties. We think there could be no valid objec- 
 tion to the joinder of the patents in one suit, and that it was warranted by 
 the precedents. — Vrooman v. Penhollow, 179 Fed. 296; 102 C. C. A. 484. 
 
 Walk. Pat. § 417, and cases cited. 
 
 § 805. Supplemental Bills. 
 
 That while leave to file a supplemental bill is discretionary with the court, 
 in a case where the officers of a defendant corporation have dissipated the 
 assets of the company to avoid paying damages, the proper course is' by a 
 creditor's bill, see — Brookfield v. Novelty, 170 Fed. 960; 96 C. C. A. 127. 
 
 10 Cyc. 665; Jackson ». Ludeling, 21 Wall. 616; Weston v. Empire, 166 Fed. 
 869. 
 
 § 806. Title. 
 
 That where it appears that a party apparently holding a legal interest 
 should have been made a party complainant, the court will permit amend- 
 ment to bring in such party, see — Snead v. Scheble, 175 Fed. 570; 99 C. C. A. 
 
 578. 
 
 Clark V. Wooster, 119 U. S. 322; Busch v. Jones, 184 U. S. 598; Carnegie v. 
 Colorado, 165 Fed. 195. 
 
 That where the record shows a legal part interest in the patent outstanding 
 in a corporation assignee, although such corporation may never have actually 
 assumed title and although such corporation may have been closed out by 
 a receiver, in the absence of positive record showing that the entire title has 
 been reinvested in complainant, such corporation will be presumed to be 
 in existence and must be made a party, see — Snead v. Scheble, 175 Fed. 570; 
 99 C. C. A. 578. 
 
 Railroad v. Trimble, 10 Wall. 367.
 
 §§807-817 PROCESS 101 1 
 
 § 807. Miscellaneous Rules of Practice and Pleading. 
 
 The Circuit Court was right in striking out the file-wrapper and contents 
 and the prior patents as amendments to the bill, it stUl bemg improper to 
 plead evidence. — Lange v. McGuin, 177 Fed. 219; 101 C. C. A. 389. 
 
 That a statement in pleading which might be construed as an admission 
 of a fact is not to be so interpreted and held when the context of the pleadmg 
 is to the contrary and the other party has not been misled thereby, see — 
 American Stoker' v. Underfeed, 188 Fed. 314; 110 C. C. A. 292. 
 
 PRIORITY. 
 
 § 812. Miscellaneous Holdings. 
 
 If the two applications disclose substantially the same subject-matter, 
 in the absence of any other evidence of the date of invention, the date of the 
 first application would be prima facie taken as the date of the first inven- 
 tion. — Electric v. Westinghouse, 171 Fed. 83; 96 C. C. A. 187. 
 
 Drewson v. Hartje, 131 Fed. 734. 
 
 In view of the action of the patentee in requesting the suppression of the 
 earlier application it is contended by the defendant that it cannot be used to 
 enable the patentee to avail himself of an earlier application date than that 
 stated in the patent. Though the question is not free from doubt, we have 
 concluded that the reasoning of the judge of the circuit court in this regard 
 is sustained by the weight of authority and we therefore accept May 16, 
 1903 (the date of filing of the first and abandoned application), as the filing 
 date of the application. In so deciding we do not intend to approve the action 
 of the complainant in withholding the prior application until after the de- 
 fendant's proofs had been taken and the introduction of rebutting testimony 
 had commenced. — Corrington v. Westinghouse, 178 Fed. 711; 103 C. C. A. 
 479. 
 
 Victor V. Am. Graphophone, 145 Fed. 350; Tooth CrowTi v. Richmond, 30 
 Fed. 775. 
 
 PROCESS.* 
 
 § 817. Mechanical. 
 
 It is undoubtedly true, and all the cases agree, that the mere function 
 or effect of the operation of a machine cannot be the subject-matter of a 
 lawful patent. But it does not follow that a method of doing a thing, so 
 clearly indicated that those skilled in the art can avail themselves pf mecha- 
 nism to carry it into operation, is not the subject-matter of a valid patent. 
 The contrary has been declared in decisions of this court. We therefore 
 reach the conclusion that an invention or discovery of a process or method 
 involving mechanical operations, and producing a new and useful result, 
 may be wdthin the protection of the Federal statute, and entitle the inventor 
 to a patent for a discoverv. —Expanded v. Bradford, 214 U. S. 366; 53 
 L. Ed. 1034; 29 S. Ct. 652. 
 
 Cochrane v. Deener, 94 U. S. 780; Tilghman v. Proctor, 102 U. S. 707; East- 
 ern V. Standard, 30 Fed. 63; Union v. Waterbury, 39 Fed. 389; Travers v. Amer- 
 ican, 64 Fed, 771; Carnegie v. Cambria, 185 U. S. 403; Telephone Cases, 
 126 U S. 1; Leeds v. Virtor, 213 U. S. 301: distinguishing Westinghouse v. 
 Boyden, 170 U. S. 537; Wicke v. Ostrum, 103 U. S. 461. 
 
 Note: While this case merely distinguishes the process from such as that 
 in the Westinghouse case, it is the entering wedge for the reversal of the 
 bad law of that case.
 
 1012 THE FIXED LAW OF PATENTS §§819-837 
 
 That a mechanical process, such as making wire glass, is patentable, see — 
 Western Glass v. Schmertz, 185 f'ed. 788; 109 C. C. A. 1, 
 
 Expanded v. Bradford, 214 U. S. 366; Streator v. Wire Glass, 97 Fed. 950. 
 
 § 819. Patentability. 
 
 The word " process " is not used in the statute. The inventor of a new and 
 useful art is distinctly entitled to the benefit of the statute as well as he who 
 inv^ents a machine, manufacture, or composition of matter. The word 
 " process " has been brought into the decisions because it is supposedly an 
 equivalent form of expression, or included in the statutory designation of. 
 a new and useful art. — Expanded v. Bradford, 214 U. S. 306; 53 L. Ed. 
 1034; 29 S. Ct. 652. 
 
 That where the steps of the process produce a chemical change, the procesa 
 is patentable, see — i3ycrley v. Sun, 184 Fed. 455; 106 C. C. A. 455. 
 
 PROFITS. 
 
 § 830. Deductions — Manufacturer's Profits. 
 
 We are clear that the complainants are entitled to recover from the de- 
 fendant what are termed " manufacturer's profits; " that is, profits which 
 the defendant company made in the manufacture and sale of weather strips 
 embodying complainant's patent. — Nat. Metal v. Brediu, 186 Fed. 490; 
 108 C. C. A. 468. 
 
 § 836. Master in Chancery. 
 
 In view of this well settled rule, we think the court below would not have 
 been warranted in setting aside the finding of fact to which we have referred, 
 and that therefore this court, of course, should not do so. — Cimiotti v. 
 American, 168 Fed. 529; 93 C. C. A. 546. 
 
 In the absence of manifest error, it is not the province of this court to dis- 
 turb the findings of a master reached upon conflicting testimony, which find- 
 ings have been examined and adopted by the Circuit Court. — Brown v. 
 Drohen, 175 Fed. 576; 99 C. C. A. 192. 
 
 His conclusion was reviewed on exceptions by the learned trial judge. 
 Both of them found against the contention. There being no obvious error of 
 law or serious mistake of fact, their findings will be accepted as true. — 
 Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. 526. 
 
 Moline v. Carson, 72. Fed. 387; BrouTi v. Lanyon, 179 Fed. 309. 
 
 § 837. Measure of — Actual Gains. 
 
 The portion of the profit paid out in dividends during the accounting 
 period and the sums paid for legal and expert services in the litigation over 
 the patent were added together, and from the sum was deducted the deficit 
 existing at the end of the accounting period. Assuming that the company 
 paid no exorbitant salaries, and that it did not in any other manner unfairly 
 dispose of its earnings, we think the method was as fair a one as could have 
 been adopted. — Nat. Metal v. Bredin, 186 Fed. 490; 108 C. C. A. 468. 
 
 A manufacturer who de\dses a machine that he honestly believes he has a 
 right to use * * * is not to be mulcted in punitive damages. Equity is 
 satisfied if he accounts for all the pecuniary benefits he derived from the use 
 of the infringing machine. If there were no other wav of obtaining the result, 
 he might rightly be held for all the profits he made" from the output of his
 
 §§838-840 PROFITS 1013 
 
 establishment. But if, as here, other machines for doing the same work, 
 though less effectively, were available at the date of the patent, the whole 
 advantage would lie in the increase of efficiency * * * If, however, he 
 should adopt a machine that finally was adjudged to be an nifrmgement 
 aU that he would actuaUy gain by the infringement would be the excess ot 
 effectiveness of the machine over the later, available, competitive machines. 
 (That is machines available later than the date of the infringed patent.) — 
 Columbia Wire v. Kokomo, 194 Fed. 108; 114 C C A 186. 
 
 Note- This evidently extends the well-known rule of the cases cited m the 
 foot-note, page 109, to include all machines which are available at the time 
 the infringement occurred. Would this include machines subsequently 
 patented to others? This opens a serious question. 
 
 § 838. Measure of — Entire Profits. 
 
 No doubt the saving or advantage to the defendants is the true measure. 
 Cawood Pat. 94 U. S. 695. But this may well be taken as represented by 
 the difference between profitable and unprofitable commercial manufacture 
 More accurately, it wodd be the difference between the cost of insulators 
 as made by the machine of the patent and the cost as made by those open 
 to the defendants. But for all practical purposes, the two under the evi- 
 dence are the same. If salable articles, m other words, could not be made 
 at the rising prices by the old methods, without a loss, while with the machine 
 the paSthere lould be a profit, the profit so made ha^ certairdy l^en 
 saved or gained from the invention. - Novelty v. Brookfield, 170 l^ed. 946, 
 95 C. C. A. 516. 
 
 When the entire profit of a business results from the use of the patented 
 invention, the patentee will be entitled to f,^«J^V4qo'^%'c C 1 468 
 elects that remedy. - Nat. Metal v. Bredin, 186 Fed. 490 108 C U A. 4bb. 
 
 Crosby .. Safety Valve, 141 U. S 452; Wales ^- Waterbury, 101 Fed. 126, 
 On V. Murray, 163 Fed. 54; Ehzabeth v. Pavement Co. 97 U. b. l^b. 
 
 Complainant made sewing machines containing the combinations of an 
 expiS patent and a valid, lining patent. Defendant bought up old machines 
 of'^ompk inant's make containing the combination of the expired patent 
 Rebuilt the machines and added the combination of the living patent. The 
 roaster reported entire profits of defendant upon the ground that the sala- 
 Sbtv of the machines was due to the presence of the valid combination. 
 Affirming the decree it was held: The general rule relied upon by the appel- 
 ant hi rLard to the recovery of profits in infringement cases is that quoted 
 rom WesSouse v. N. Y. Ah Brake Co. 140 Fed. 545-9 (quoting) But, 
 n Sating this rule, the court caUed attention to circumstances which may 
 except a'case from' its application as where the '' ^^<^f-^l^^^^'^;^Z 
 to be calculated on the whole machine, for the reason that the ent re value 
 of the whole machine, as a marketable article, is properly and legally attribu- 
 teble thereto^ (i. e., to the patented feature). There are many cases m which 
 this rule is affirmed and there is no controversy as to its propriety. The only 
 qSns that aris^ are as to its applicability to f « P-uhar c-um^^^^^^^^ 
 of a given case. — Maimin v. Umoa Special Mach. Co. 187 Fed. IA6, iuy 
 C. C. A. 41. 
 Goulds V. Cowing, 105 U. S. 253. 
 
 § 840. Measure of — Savings by Use. 
 
 It is not as though they were being charged for infringing ^^j^^ ^Mh^ 
 machine where the profits recoverable would properly be confined to those 
 Szed fr^m the features which constituted the patentable advance on the
 
 1014 THE FIXED LAW OF PATENTS §§811-845 
 
 prior art. Force v. Sawver, 143 Fed. 894. The infrinKcment here is in the 
 use of the patented macliine, and response must be made m consequence 
 for the saving effected, not from any particular part, but from the whole. 
 
 — Novelty v. Brookfield, 170 Fed. 946; 95 C. C. A. 516. 
 
 Instead of making money in carrying out his contract with the government, 
 he lost money, and the decree against him is sustained upon the theory that 
 but for the use of the infringing machines, he would have lost more money. 
 
 — Brown v. Drohen, 175 Fed. 576; 99 C. C. A. 192. 
 
 The comparison between the cost of doing the work by hand labor and by 
 the patented machine was correctly adopted as the proper standard by which 
 to measure the defendant's profits. As there were no machines existing i)nor 
 to the date of the inventions covered by the complainant's patents, which 
 could do the work, hand lal:>or was the only available standartl of compari- 
 son. If the defendant had not used infringing machines he would have been 
 compelled to use hand labor. — Brown v. Drohen, 175 Fed. 576; 99 C. C. A. 
 192. 
 
 § 841. Measure of — Trustee ex Maleficio Rule. 
 
 For the full and final delimitation of the rule of trustee ex maleficio see 
 extended excerpt from Westinghouse v. Wagner, 225 U. S. 604; 56 L. Ed.—; 
 32 S. Ct. 691; under § 845. 
 
 The infringement in this case was deliberate, with every means taken to 
 avoid being responsible for it, and if there are any uncertainties m the situa- 
 tion it is for the defendants, and not the complainants, to clear them up. — 
 Novelty v. Brookfield, 170 Fed. 946; 95 C. C. A. 516. 
 Rose V. Hirsh, 94 Fed. 177; Regina v. Otto, 114 Fed. 508. 
 
 § 843. Segregation — Burden of Proof. 
 
 The general rule in patent cases, like all others, is that a complainant is 
 entitled to recover damages for the loss he has sustamed by reason of the 
 wrongful acts of the infringer, and the burden is on him to show how much 
 it is. — Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. 526. 
 
 Garretson v. Clark, 111 U. S. 120. 
 
 If the Ottofy device as limited had any special value when used as but 
 a small part of a large completed structure, the complainant as owner of the 
 patent should have introduced evidence of the profits realized by the in- 
 fringer and ascribable to the particular device m question so that they 
 could be ascertained and stated by the master. — Am. btreet Hushing Mach. 
 V. St. Louis, 192 Fed. 121; 112 C. C. A. 582. 
 
 Westinghouse v. Wagner, 173 Fed. 361; Bro^vTi v. Lanyon, 179 Fed. 309; 
 Dowagiac v. Plow Co. 183 Fed. 314. 
 
 § 845. Segregation — General Rules. 
 
 The final rule of the Supreme Court. 
 
 After more than a quarter of a century of misconstruction of the statute 
 and academic refinement and sophistry centering about the old Mop L_ase, 
 the Supreme Court in reversing Westinghouse v. Wagner 175 l^ed. 3bl, 
 and following the masterly dissenting opinion of Judge Sanborn, -has put on 
 sound foundations the rules of segregation and trustee ex maleficio. bo 
 important and far-reaching is this decision, it is excerpted liberally. 
 
 The writ was issued in \dew of the holding that, though the master found 
 that the defendant had made a profit of $132,000 from the sale of infringing
 
 §845 PROFITS 1015 
 
 transformers, the plaintiff could yet only recover one dollar because it failed 
 to separate the profits made by its patent from those made by the defend- 
 ant's addition. 
 
 1. The question as to who has the burden of proof, in cases like this, is 
 one of great practical importance and constantly arises in patent causes. 
 There has been much controversy on the subject and a conflict in the decisions. 
 * * * It will be sufficient for the present purposes to say that — 
 
 (a) Where the infringer has sold or used a patented article, the plaintiff 
 is entitled to recover all of the profits. 
 
 (b) Where a patent, though using old elements, gives the entire value 
 to the combination, the plaintiff is entitled to recover all the profits. (Hurl- 
 bwt V. Shillinger, 130 U. S. 472.) 
 
 (c) Where profits are made by the use of an article patented as an entiretj^, 
 the infringer is liable for all the profits — " unless he can show — and the 
 burden is on him to show — that a portion of them is the result of some 
 other thing used by him." (Elizabeth v. Paving Co. 97 U. S. 127.) 
 
 (d) But there are many cases in which the plaintift^'s patent is only a part 
 of the machine and creates only a part of the profits. His invention may 
 have been used in combination with valuable improvements made, or other 
 patents appropriated by the infringer, and each may have jointly, but un- 
 equally, contributed to the profits. In such case, if plaintiff's patent only 
 created a part of the profits, he is only entitled to recover that part of the 
 net gains. He must, therefore, " give evidence tending to separate or ap- 
 portion the defendant's profits and the patentee's damages between the 
 patented feature and the unpatented features, and such evidence must be 
 reliable and tangible, and not conjectural or speculative; or he must show, 
 by equally reliable and satisfactory evidence, that the profits and damages 
 are to be calculated on the whole machine, for the reason that the entire 
 value of the whole machine, as a marketable article, io properl}^ and legally 
 attributable to the patented feature." (Garretson v. Clark, 111 U. S. 121.) 
 
 The real controversy arises in appljang this principle to those cases where 
 it is impossible to separate the single profit into its component parts. 
 
 In considering the question presented by the record here, it is to be borne 
 in mind that Congress has legislated (R. S. 4921) with a view of affording 
 the patentee ample redress against the infringer. It not only makes the 
 latter liable for damages — sometimes threefold damages — but for all 
 profits derived from the use or sale of plaintiff's invention. The rale as to 
 the burden of proof has, however, been so applied that this statutor}' right 
 has been often nullified by those infringers who had ingenuity enough to 
 smother the patent with improvements belonging to themselves or to third 
 persons. In such cases the greater the wrong the greater the iinmumty; 
 the greater the number of improvements the greater the difficulty of 
 separating the profits. And if that difficulty could only be converted into 
 an impossibility the defendant retained all of the gains, because the injured 
 patentee could not separate what the guilty infringer had made impossible 
 of separation. Manifestly such consequences demonstrate that either the 
 rule or its application is wrong. The rule is so and, for it bat announces the 
 general proposition that the plaintiff must prove its case and carry the burden 
 imposed by law upon every person seeking to recover money or property 
 from another. But the principle must not be presse:! so far as to override 
 others equally important in the administratioa of justice. * * * 
 
 The plaintiff proved its patent and that it had been infringed. * * * But 
 no matter how great its presumptive or actual value, it did not follow that 
 the defendant had made a profit by the sale of the infringing transformers. 
 And so, having sued for profits, the Westinghouse ^Company was under the 
 burden of showing they had been made. Tliis it clid to the satisfaction of 
 the master. The defendant then had the right either to disprove the plain-
 
 1016 THE FIXED LAW OF PATENTS §845 
 
 tiff's case or to offer evidence in mitigation, or both. Accordingly it submitted 
 evidence tending to show that the spaces added by the defendants were 
 non-infringing and vakiable improvements wliich had contributed to the 
 making of the profits. In reply the We.stinghouse Company insisted that 
 claim 4 was an entirety. * * * For that reason the plaintiff contended that 
 it had shown that all the gains were " legally attributable to the patented 
 feature." (Garretson v. Clark, HI U. S. 121; Elizabeth v. Pavement Co. 97 
 U. S. 127; Crosby v. Safety Valve, 141 U. S. 454; Keystone v. Adams, 151 
 U. S. 144.) This view was sustained by the m:ister. But if it be assumed as 
 was found to be the fact by the court, that the spaces were non-infringing 
 and valuable improvements, it may then have prima facie appearcil that~ 
 these changes had contributed to the profits. If so, the burden of apportion- 
 ment was then logically on the plaintiff, since it was only entitled to recover 
 such part of the commingled profits as was attributable to the use of its 
 invention. 
 
 3. Lindley, L. J., said in Siddell v. Vickers, 9 Rep. Pat. Cas. 162, that 
 there " was no form of account more difficult to work out than an account 
 of profits." But that is no reason why the plaintiff should be denied its 
 rights. The problem here, though different, was in many respects analogous 
 to that presented in those cases where it was necessary to separate inter- 
 state from intrastate earnings made by a railroad. * * * The courts, " while 
 recognizing the impossibility of reaching a conclusion that is mathemati- 
 cally exact," have, in addition to the other evidence bearing on the question, 
 received " the testimony of experts as to the relative cost of doing a local 
 and through business." (Chicago v. Tompkins, 17G U. S. 178.) The con- 
 verse is true. What is permissible in an effort to separate costs may also 
 be done in a patent case where it is necessary to separate profits (Root v. 
 Railway, 105 U. S. 198. See also Rubber Co. v. Goodyear, 9 \Vall. 802). * * * 
 
 4. Having, bj' books and other data, proved to the satisfaction of the 
 master the existence of profits, the plaintiff had carried the burden imposed 
 by law, and established every element necessary to entitle it 'to a decree, 
 except one. As to t^hat, the act of the defendant had made it not merely 
 difficult but impossible to carry the burden of apportionment. But plaintiff 
 offered evidence tending to establish a legal equivalent. It had proved the 
 existence of a fact which, whether treated as a rule of evidence or as a matter 
 of substantive law, would entitle it to a decree for all the profits. The 
 method was different from that mentioned in the second branch of the rule 
 in the Garretson Case, but the plaintiff had now presented proof to demon- 
 strate its right to the whole of the fund because of the fact that the defend- 
 ant had inextricably coimningled and confused the parts composing it. This 
 result would not be in conflict with the principle which in the first instance 
 imposed the burden of proof on the plaintiff, but merely gave legal effect 
 to a new fact which as a matter of law entitled the patentee to a particular 
 judgment. It presented a case where the court was called on to determine 
 the liability of a trustee ex maleficio, who had confused his own gains with 
 those which belonged to the plaintiff. One party or the other must suffer. 
 The inseparable profit must be given to the patentee or infringer. The loss 
 had to fall on the innocent or the guilty. In such an alternative the law 
 places the loss on the wrongdoer. 
 
 5. It is said, however, that the rule does not apply in patent cases. Why 
 it should be limited does not appear. It is admitted that an injunction may 
 be granted against selling infringing devices, even though the result will be 
 to prevent the defendant from using valuable appliances confused with the 
 patented device. And Lord Eldon treated this conceded right to enjoin as 
 an application of the rule relating to the confusion of goods. He therefore 
 restrained the publication of a book, a large portion of which was origina', 
 because copyright matter was incorporated therein. * * * (Mawman y.
 
 846 PROFITS 
 
 1017 
 
 Tegg, 2 Russ. 390.) This case was cited and approved in Callaghan v. Myers, 
 128 CJ. S. 658, where the infringer who had blended his own witn copyright 
 matter, in a volume which sold for a profit, was made to " abide the conse- 
 quences on the same principle that he who has wrongfully produced a con- 
 fusion of goods must alone suffer." * * * In both, as in patent cases the 
 infringer was a " trustee for the plaintiff in respect of profits." (Root t'. Rail- 
 way, 105 U. S. 214.) And the liability is not lessened because the confusion 
 is due to a wrongful appropriation by a trustee de son tort instead of care- 
 lessness of a trustee la^vfl!lly appointed. , ^ ,. a 
 6. * * * This conclusion is said to be in conflict with the Liarretson ana 
 other decisions which, it is claimed, justify the conclusion that the defend- 
 ant is entitled to retain all of the profits even where the patentee is unable 
 to make an apportion. nent. (Warren v. Keep, 155 U. S. 26o.) An analysis 
 of the facts of those cases will sha>v that they do not sustain so extreme a 
 doctrine. For they deal with instances where the plaintiff apparently relied 
 on the theory that the burden was on the defendant, and for that, or other 
 reasons, made no attempt whatever to separate the profits, rs one o the 
 cases cited discuss the rights of the patentee who has exhausted all available 
 meansof apportiomuent, who has resorted to the books and employees ot the 
 defendant, and by them, or expert testimony, proved that it was impossible 
 to make a separation of the profits. This distinction, between difficulty 
 and impossibility, is involved in the ruling * * * in Brennan 2;. Dowagiac, 
 162 Fed 476, where the Garretson Case was distinguished. 
 
 It may be argued that, in its last analysis, this is but another way of saying 
 that the burden of proof is on the defendant. And no doubt such, in the 
 end, will be the practical result in many cases. But such burden is not im- 
 posed by law; nor is it so shifted until after the plaintiff has proved the 
 existence of profits attributable to his invention and demonstrated that they 
 are impossible of accurate or approximate apportionment. If tjien the burden 
 of separation is cast on the defendant, it is one which justly should be_ borne 
 by him as he wrought the confusion. — Westinghouse v. Wagner, 22o U. b. 
 604; 56 L. Ed. — ; 32 S. Ct. 691. 
 
 These authorities make it clear, we think, that an apportionment of profits 
 between the patented and unpatented parts of the drill was indispensably 
 necessary The invention did not inhere in the entire machine as an entirety, 
 but was only an improvement in a single element of an othervyise well-known 
 device. — Dowagiac v. Minnesota, 183 Fed. 314; 105 C. C. A. d26. 
 
 fiarrptson v Clark 111 U. S. 120; Tilghman v. Proctor, 125 U. S. 136; Mc- 
 Cr?ary?.TennsyS^^^ S. 459; c'osby .. Supply 141 U. 8^441; Sessions 
 
 V. Romadka, 145 U. S. 29; Keystone v. Adams, 151 U. S. 139; Westinghouse v. 
 Wagner, 173 Fed. 361; Brown v. Lanyon, 179 Fed. 309. 
 
 § 846. Segregation — Miscellaneous Rules. 
 
 That where the main efficiencv of the machine depends entirely upon the 
 patent in suit, and where subsequent minor patented improvements have 
 been added which contribute in some measure to the machine, segregation 
 is not necessary, see — Novelty v. Brookfield, 170 Fed. 946; 9o C. C. A. 
 516. 
 
 That where the patented article consisted of three elements only one of 
 the elements being covered by the patent, the profits should be limited to 
 the patented element, see — Nat. Metal v. Bredm, 186 Fed. 490; 108 C. C. A. 
 468.
 
 1018 THE FIXED LAW OF PATENTS §§847-802 
 
 § 847. Miscellaneous Rules Concerning Profits. 
 
 Even if James Brediu's claim as licensee could have been properly joined 
 with the claim of the owners of the patent, it was not so jouied, and the awar. 
 to the complainants jointly of profits arising, not from the manufacture and 
 sale of the strips, which did belong to the complamants, but from the installa- 
 tion of the strips, which belonged exclusively to the licensee was to extend 
 the decree quite beyond the scope of the pleadings. — Nat. Metal v. Bredin, 
 186 Fed. 490; 108 C. C. A. 468. 
 
 Brookfield v. Novelty, 170 Fed. 960. 
 
 PUBLIC USE. 
 
 § 851. Experiment. 
 
 He did not sell or lease his completed device; he did not permit others to 
 use it- he did not use it himself. He did, to the knowledge of others, couple 
 it to a telephone line to see whether it would do what he hoped He lost 
 nothing by such a use. — International v. Kellogg, 171 Fed. 60I; 96 C. C. A. 
 395. 
 
 Elizabeth v. Pavement, 97 U. S. 126. 
 
 §856. Single Use. 
 
 The fact that there was only a single sale of a single machine does not save 
 the patent. One sale before the two years' period will invalidate a patent 
 as well as many. — National v. American, 178 Fed. 79; 101 C. C. A. 569. 
 
 Smith V. Sprague, 123 U. S. 249; Consolidated v. Wright, 94 U. S. 92; Covert 
 V. Covert, lOG Fed. 183; Henry v. Francestown, 2 Fed. 78. 
 
 REDUCTION TO PRACTICE. 
 §861. Diligence. 
 
 The question is not which of the two, Boothroyd or Tillinghast, ran the 
 faster in giving to tlie world a material and practical exhibit of his conception. 
 It is simply whether Tillinghast, the first to conceive the improvement, Avas 
 reasonably diligent in putting into a practical and useful form the idea which 
 he expressed to others in July, 1890. If he was, his patent is valid notwith- 
 standing the later conception of Boothroyd was given to the world before 
 Tillinghast had succeeded in putting into actual use one of his tires. — Con- 
 tinental V. Single Tube, 178 Fed. 452; 101 C. C. A. 436. 
 
 Reed V. Cutter, Fed. Cas. 11,645; ^larshall v. Mee, Fed. Cas. 9129; White 
 V. Allen, Fed. Cas. 17,535; McCormick v. Minneapolis, 42 Fed. 152; Christie 
 v. Seybold, 55 Fed. 69; Automatic v. Pneumatic, 166 Fed. 288. 
 
 § 862. Essential to Patentability. 
 
 In contemplation of law an invention does not exist until the inventor's 
 ideas have been reduced to practical form. — American v. Leeds, 170 Fed. 
 327; 95C. C. A^Sll. 
 
 Standard v. Peters, 77 Fed. 630. 
 
 It seems to us that Drawing N shows little more than a tentative illustra- 
 tion of an untried experiment. Certainly if the invention were fully devel- 
 oped at that time and understood by the inventor, he showed no diligence 
 in perfecting and reducing it to practice. We have been unable to discover 
 any satisfactory proof to establish the complainant's contention that the 
 invention was made in July, 1901. He may have had a mental conception 
 thereof, but, so far as the testimony shows, there was no tangible reduction 
 to practice, no practical illustration until the date of the drawings in April,
 
 5871 REISSUES 
 
 1903 The patentee may have had a well defined theory »' «!;»'. he|™^^^^ 
 
 ;?I:„mplish h, 1901; he may have «»™'--;^«^ST1' e^^^^^^^ » 
 
 rntafrctSn''t^'^^eTrd.%S',rrWesti.|house.n8 
 
 ""t:^- ^^,^iL°io"l« a S. «, Machine Co. . Pneu.at., 160 .ed. .8S. 
 
 REISSUES. . .^, _ ^^„^^^i 
 
 S871. Broadening -Not Permissible -In General. 
 
 see — Cassin t^. Collms, 1/4 Fed. 341 , 98 L. ^. A. ^16. 
 
 Potthoff V. Hanson, 174 Fed. 983; 98 C. C. A. o\)o. 
 
 The apphcation .« -af^e^f^rrrit*^^^^^^^^^^ 
 not for the purpose of narro^mg the ori ma^^ .^^^. ^^nop. 
 
 Electric v. Richmond, 178 Fed. 84; 102 C. U A. i^J- 
 
 Miller .. Brass Co. 104 U. S. 250; and see foot-note 1.8 Fed. 90. 
 
 The following is the law of the Seventh Circuit affecting change of claim 
 in reissues: _ . -^.i ,,+ rinwer to reissue a patent to 
 
 J^/:th?cT^rrn1hrsrecSi^' (^ °dle^^^^^ not the claim, 
 
 is sufficient. ' ,, cnpfifi cation " in the first sentence 
 
 Bv settled interpretation the word specmcauou ui • ^„;„„ there- 
 
 sizing the one just stated are that /^^^^^f^^-^^X^^^^ for a machine, 
 
 the specification;;- -^j /^e orignml a^^^^ . 
 
 and no model being filed, that ^^^^/^^^^^^'^^^^^^ nnntained in the or ginal 
 But if enlarga:nent is to come, not froin f^f^^^^^^^ ^'rihe inventor subse- 
 patent (or in tl^e V^o^^^^^^^^^^^^^ was nLlSnd prior to filing the 
 quently says (truthfully or untrutmuiiy; '^^ . . ^ ^ deception, 
 
 original application, a region of danger, of temptation to ^^^^^^ a P^^^^^ 
 
 would be opened wide wn-h Congress has c^^^^^^ inoperative 
 
 For the reissue must be limited to ^^^ ^!^^® '^""f y ? ', igj Fed 814; 109 
 patent discloses as the invention. - McDowell v. Ideal, 187 l^ca. 5 , 
 
 ''•se';-intfosborne, U Wall. 516; <^j^^^^. '^^:f^E:% 
 
 Huber v'. Nelson, 148 U. S. 270. 
 
 Authoritv to grant reissues is now derived exclusi«J^ta^ 
 R. S. § 4916. And the Commissioner goes beyond his jurisaicLion &
 
 1020 THE FIXED LAW OF PATENTS § 873 
 
 a reissue for an invention (though conceded to be the invention of the appli- 
 cant) which is not the same invention that was disclosed and described as 
 the applicant's invention (not merely that lurked in the drawings or descrip- 
 tion of the machine as a machine) in the original patent, which, by reason of 
 inadvertence, accident, or mistake, is inoperative to secure the monopoly 
 it shows on its face was intended to be secured. — Moneyweight v. Toledo, 
 187 Fed. 826; 109 C. C. A. 586. 
 McDowell V. Ideal, supra. 
 
 2. That when reissue is applied for promi)tly and there are no intervening 
 rights, where the combination sought to Ije covered by the rei.s.sue has not 
 been abandoned by previous rejection and amendment, where the spccifica-' 
 tion and drawings disclose the combination, and where the failure to claim 
 arose through inadvertence, accident, or mistake — in such case a rei.ssue 
 with a specific claim covering such unclaimed comljination is valid. 
 
 The original patent and the file wrapper and contents were on their face 
 sufficient proof that, if a claim adequate to cover the improve<l scale was 
 ever drawn, it had been omitted, by accident in copying or otherwise, from 
 presentation to the Patent Office. Tlie original specification alone on its 
 face was sufficient proof that, if a claim adequate to cover the impro\ed scale 
 was never drawn, the failure came from the lack of attentive comparison of the 
 submitted claims with the invention particularly pointed out in the specifi- 
 cation. This was inadvertence, " lack of heedfulness or attentivenf>>s," 
 irrespective of the real competence or incompetence of the solicitors. Was 
 this inadvertence excusable? After the solicitors delivered the patent to 
 their client, they could not be expected to give the matter any further at- 
 tention. De Vilbiss (the patentee) was a layman and may be supposed to 
 have been inexpert in construing patents. He may liave resteil on the as- 
 sumption that his solicitors had procured a fully operative patent. How 
 far such a reliance may go generally is not necessary to determine in this 
 instance. Here the situation is the same as if De Vilbiss had applied for the 
 reissue the very hour the patent issued, for no intervening rights of any sort 
 accrued. Respecting the other reissue claims, it is sufficient to say that, 
 while the original specification was notice of what the invention as an entirety 
 was, the allowed claims were notice that the inv^cntion also covered combina- 
 tions of less than all the parts; that none of the reissue claims corresponds 
 with the subject-matter of any abandoned claim; and that no reissue claim 
 is broader than the allowed claims. — Moneyweight v. Toledo, 187 Fed. 826; 
 109 C. C. A. 586. 
 
 Note: These two cases are in accord with previous tendencies in the 
 Seventh Circuit, and may be regarded as extreme interpretations of the 
 Supreme Court rules; but whether within these rules remains to be deter- 
 mined by the Supreme Court. The writer goes no farther than to say that 
 it would seem that we have, with this line of decision, another situation of 
 mixed and variable law, varying with no other logic than the arbitrary lines 
 between circuit and circuit established by statute. 
 
 The inference seems plain that it was only when he found that chains 
 with pintles composed of more than two parts would operate successfully 
 that he sought by a reissue to compel them to pay tribute. The reissue 
 statute was not intended to produce a result so inequitable. — Morse Chain 
 V. Link Belt, 189 Fed. 584; 110 C. C. A. 564. 
 
 § 873. Broadening — When Permissible. 
 
 A patentee by a reissue is not permitted to extend the invention which he 
 described and intended to be protected in his original patent. In the original
 
 §§ 880-885 REISSUES 1021 
 
 patent in this case the features of the appellee's invention are clearly de- 
 scribed. One of them is the use of the cardboard backings. The other is 
 the arrangement of the record sheets and the carbon sheets. Both are cov- 
 ered by a single claim, but the patent did not cover the use of either when 
 not conibined with the other. Therein was the defect. — Kitchen v. Levison, 
 188 Fed. 658; 110 C. C. A. 424. 
 
 Note: From a reading of this case it .would seem that here is direct conflict 
 with the present rule of the Seventh Circuit. Certainly the claim is broad- 
 ened in this case. 
 
 § 88o. Decisions of Commissioner. 
 
 Findings by the Commissioner that a legal condition exists and is avail- 
 able are conclusive in so far as they depend upon credibility and weight of 
 evidence; but, in so far as they depend upon the legal interpretation and ef- 
 fect of admittedly genuine documents or other undisputed evidence, they are 
 reviewable in court. — Gen. Electric v. Richmond, 178 Fed. 84; 102 C. C. A. 
 138. 
 
 From the reissuance of the patent it is to be presumed that the law was 
 complied with, and the proceedings can only be impeached for fraud. — 
 Kitchen v. Levison, 188 Fed. 658; 110 C. C. A, 424. 
 
 Seymour v. Osbourne, 11 Wall. 516. 
 
 § 88 1. Different Invention. 
 
 Patent No. 607,304 was a mechanical invention, the process one of art, 
 and complainant could not, under an application for a reissue, have included 
 the process claim, as the machine and the process are separate inventions. 
 — Model Botthng Mach. v. Anheuser-Busch, 190 Fed. 573; 111 C. C. A. 389. 
 
 Powder v. Powder, 98 U. S. 126; Eachus v. Broomall, 115 U. S. 429. 
 
 § 883. General Rules. 
 
 That the fact that the claims in the original patent were functional and 
 did not cover patentable subject-matter is not ground within the statute for 
 obtaining a reissue, see — • Penn v. Conroy, 185 Fed. 511; 107 C. C. A. 611. 
 
 § 884. Grounds for. 
 
 Without the existence of one or the other of two conditions precedent, 
 the Commissioner of Patents is not authorized to grant a reissue. Either the 
 original specification must be defective or insufficient, or the original claims 
 must embrace more than the patentee had a right to claim as new. Neither 
 condition is available unless the error arose from inadvertence, accident, or 
 mistake, and without any fraudulent or deceptive intention. — Gen. Elec- 
 tric V. Richmond, 178 Fed. 84; 102 C. C. A. 138. 
 
 Note: This statement is in accord with previous expressions of Judge 
 Baker, but it is believed that it is too broad. A literal construction of the 
 statement would bar, absolutely, every reissue containing a broader claim 
 than the original, regardless of promptitude or absence of intervening rights. 
 
 § 885. Inadvertence, Accident, or Mistake. 
 
 The inadvertence of his solicitors was the applicant's inadvertence, and 
 might therefore be availed of by him, if it existed. On the other hand, his 
 solicitors' erroneous judgment in submitting to the rejections is his erroneous 
 judgment, and he would be estopped from presenting any of the rejected
 
 1022 THE FIXED LAW OF PATENTS §§887-899 
 
 claims in an application for a reissue. — Money weight v. Toledo, 187 Fed. 
 826; 109 C. C. A. 586. 
 
 Yale V. Berki-hirc, 135 U. S. 342; Corbin v. Eagle, 150 U. S. 38. 
 
 § 887. Surrender — Effect of. 
 
 The bill was based upon the reissue. And inasmuch as there existed none 
 of the conditions precedent to the right of the Commissioner to grant a re- 
 issue, the grant is utterly void. — Gen. Electric v. Richmond, 178 Fed. 84; 
 102 C. C. A. 138. 
 
 General v. Blackmore, 156 Fed. 968. 
 
 RES JUDICATA. 
 
 § 893. Conclusiveness. 
 
 Our prior ruling was made upon an appeal from an interlocutory decree 
 granting an injunction, but that did not render it less obligatory upon the 
 Circuit Court, and does not except it from the settled rule that propositions 
 once decided by an appellate court are not open to consideration in that 
 court upon a subsequent appeal or writ of error. — Brown v. Lanyon, 179 
 Fed. 309; 102 C. C. A. 497. 
 
 Smith V. Vulcan, 165 U. S. 518; In re Potts, 166 U. S. 263; United States v. 
 California, 148 U. S. 31; Iti re Sanford, 160 U- S. 247; Illinois v. Illinois Central, 
 184 U. S. 77; Bissell v. Goshen, 72 Fed. 545; Burns v. Cooper, 153 Fed. 148; 
 Crotty V. Chicago, 169 Fed. 593; Messinger v. Anderson, 171 Fed. 785. 
 
 That where the complainant declared on certain claims which were held 
 void, such decree is conclusive as to the entire patent in favor of the defend- 
 ant and all in privity to the suit, see — Marshall v. Bryant, 185 Fed. 499; 
 107 C. C. A. 599. 
 
 ROYALTIES. 
 
 § 897. General Statement and the Decisions. 
 
 The contract provided " That the Goodyear Co. * * * doth agree to pay 
 to the said Dancel in each year while the letters patent remain in force as a 
 valid patent the sum of .15000 as an annuity, such annuity to be payable 
 monthly." Dancel died before the expiration of the patent. Held: If it 
 had been the intention of the parties that the pajmients should cease with 
 the life of Dancel, that intention could have been easily expressed. We 
 think such was not the intention of the parties. — Goodyear v. Dancel, 119 
 Fed. 692; 56 C. C. A. 300. 
 
 SALE OF PATENTED ARTICLE. 
 
 § 899. General Statement and Holdings. 
 
 By a sale of a patented article subject to no conditions the pm-chaser 
 undeniably acquires the right to use the article for all the purposes of the 
 patent so long as it endures. He may use it where, when and how he pleases, 
 and may dispose of the same unlimited right to another. * * * An absolute 
 and unconditional sale operates to pass the patented thing outside the bound- 
 aries of the patent, because such a sale implies that the patentee consents 
 that the purchaser may use the machine so long as its identity is preserved. 
 * * * The argument for the defendants ignores the distinction between the 
 property right in the materials composing a patented machine, and the right 
 to use for the purpose and in the manner pointed out by the patent. The 
 latter may be and often is the greater element of value, and the buyer may 
 desire it only to apply to some or all of the uses included in the invention. 
 But the two things are separable rights. If sold unreservedly the right to
 
 §§ 901-905 SPECIFICATION 1023 
 
 the entire use of the invention passes, because that is the impHed intent; but 
 this right to use is nothing more nor less than an unrestricted hcense pre- 
 sumed from an unconditional sale. A license is not an assigimient of any 
 interest in the patent. It is a mere permission granted by the patentee. It 
 may be a license to make, sell and use, or it may be limited to any one of 
 these separable rights. If it be a license to use, it operates only as a right to 
 use without being liable as an infringer. If a licensee be sued, he can escape 
 liability to the patentee for the use of his invention by showing that the use 
 is within his hcense. But if his use be one prohibited by the license, the latter 
 is of no avail as a defense. As a hcense passes no interest in the monopoly, 
 it has been described as a mere waiver of the right to sue by the patentee. 
 We repeat. The property right to a patented machine may pass to a pur- 
 chaser with no right to use, or with only the right to use in a specified way, or 
 at a specified place, or for a specified purpose. The unlimited right of ex- 
 clusive use which is possessed by and guaranteed to the patentee will be 
 granted if the sale be unconditional. But if the right of use be confined by 
 specific restriction, the use not permitted is necessarily reserved to the 
 patentee. If that reserved control of use of the machine be \aolated, the 
 patent is thereby invaded. Tliis right to sever owTiership and use is deducible 
 from the nature of a patent monopoly and is recognized in the cases. — 
 Henry- v. Dick, 224 U. S. 1; 56 L. Ed. 645; 32 S. Ct. 364. 
 
 Note: This is the final authority on this question. Justice Lurton reviews 
 all the leading cases, and in a foot-note gives a list of previous holdings. 
 Reference thereto is sufficient. 
 
 However men may differ — as do the dissenting minority by the opinion 
 of Chief Justice White — upon the moral and economic aspect of this par- 
 ticular case, there is little doubt that the opinion of the majority is enforced 
 by prior decisions, both American and English; and since motion for rehear- 
 ing — in which the Attorney General joined — has been denied, the law is 
 fixed. 
 
 If the manufacture of a machine upon an order for its construction, fol- 
 lowed by its delivery and acceptance, constitutes a " sale " within the mean- 
 ing of the patent statute, a sale is shown here. The transaction was completed ' 
 by the dehvery and acceptance of the machine. The title then passed. — 
 National v. American, 178 Fed. 79; 101 C. C. A. 569. 
 
 Campbell v. Mayor, 36 Fed. 263; Eastman v. New York, 134 Fed. 844. 
 
 SPECIFICATION. 
 
 § go I. General Statement. 
 
 By settled interpretation the word " specification " in the first sentence 
 of § 4916, R. S., may cover the entire original patent. — McDowell v. Ideal. 
 187 Fed. 814; 109 CCA. 574. 
 
 § 905. Sufl&ciency — Accuracy. 
 
 An objection is that the specification is so vague and indefinite that no 
 one could learn from it how to practise the alleged invention. The preferred 
 proportions are stated, and if that is not a sufficient direction to those " skilled 
 in the art or science to which the invention appertains, or with which it is 
 most nearly connected," the deficiency will have to be established by evi- 
 dence. — Westrumite v. Commissioners, 174 Fed. 144; 98 C C A. 178. 
 
 A patent is granted for solving a problem, not for stating one. Its descrip- 
 tion must explain the invention itself, the manner of making it, and the 
 mode of putting it in practice. In the absence of knowledge upon these 
 points, the invention is not available to the public without further experi-
 
 1024 THE FIXED LAW OF PATENTS §§907-920 
 
 merits and further exercise of inventive skill. — Columbia v. Duerr, 184 
 Fed. 893; 107 C. C. A. 215. 
 
 § 907. Sufficiency — Ambiguity. 
 
 The teaching of the specification and the disclosure by the patentee must 
 be such that, after the patent has expired, a user thereof shall not be left 
 to the blind groping of experimental work, but by the plain teaching of the 
 specification be enabled to use the process with certainty. — Ivrupp v. 
 Midvale, 191 Fed. 588; 112 C. 6. A. 194. 
 
 § 908. Su : ciency — Distinguishing New from Old. 
 
 The specification does not indicate how much is new, or what is the im- 
 provement on the old art. The claims would indicate that the entire device 
 was the product of Jacobs. It is fairly obnoxious to the criticisms expressed 
 of a similar obscure and misleading patent in Evans v. Eaton, 7 Wheat. 356. 
 — Jacobs V. Almond, 177 Fed. 935; 101 C. C. A. 215. 
 
 § 915. Sufficiency — Rules for Determining. 
 
 To allow this negligible, unnoted, and indeed unlettered extreme section 
 of the drawing to be made, as it must be, the foundation upon which this 
 new claim rests, would be to ba.se the monopoly on possible, instead of cer- 
 tain, disclosure. — Hestonville v. McDuffee, 185 Fed. 798; 109 C. C. A. 606. 
 
 § 916. Suflaciency — Scientific Knowledge. 
 
 He must, indeed, make such disclosure and description of his invention 
 that it may be put into practice. In this he must be clear. He must not put 
 forth a puzzle for invention or experiment to solve, but the description is 
 sufficient if those skilled in the art can understand it. This satisfies the law, 
 which only requires as a condition of its protection that the world be given 
 something new and that the world be taught how to use it. It is no concern 
 of the world whether the principle upon which the new construction acts 
 be obvious or obscure, so that it inheres in the new construction. — Diamond 
 Rubber V. Consolidated, 220 U. S. 428; 55 L. Ed. 527; 31 S. Ct. 444. 
 
 STATE STATUTES AND REGULATIONS AFFECTING PATENT 
 RIGHTS. 
 § 920. General Statement and Decisions. 
 
 That the Arkansas statute (Kirby's Dig. §§ 513-6) which makes void a 
 promissory note given in payment for a patented article, unless it shows upon 
 its face that it was so given is void, is constitutional, see — Ozan v. Union 
 County, 207 U. S. 251; 52 L. Ed. 195; 28 S. Ct. 89. 
 
 See — Union County v. Ozan, 179 Fed. 710. 
 
 That the statute of Arkansas (Kirby's Dig. §§ 513-6) which makes a note 
 given in payment of a patented article void unless stated on its face to be 
 so given, which statute was held constitutional in 207 U. S. 251, applies to 
 notes given in usual course of business, notwithstanding the provisions of 
 § 516, see — Union County v. Ozan, 179 Fed. 710; 103 C. C. A. 584. 
 
 Note: This is a most technical construction of the statute. Special atten- 
 tion is called to the dissenting opinion of Judge Hook, which I regard as a 
 most masterful and sound statement.
 
 §§ 924-936 THREATS 1025 
 
 THREATS. 
 § 924. General Statement. 
 
 That the o^Tier of a patent may notify infringers of his claims, and warn 
 them that, unless they desist, suits will be brought to protect him in his 
 legal rights, is sustained by numerous decisions. The only limitation on the 
 right to issue such warnings is the requirement of good faith. — Virtue v. 
 Creamery, 179 Fed. 115; 102 C. C. A. 413. 
 
 Kelley v. Ypsilanti, 44 Fed. 19; Computing v. National, 79 Fed. 962; Farquhar 
 V. National, 102 Fed. 714; Warren v. Landauer, 151 Fed. 130; Mitchell v. Inter- 
 national, 169 Fed. 145; 30 Cyc. 1054. 
 
 TITLE. 
 
 § 927. Miscellaneous Rules. 
 
 That where, through oversight, complainant fails to prove his title, and 
 the omission is not discovered until the case is before the appellate court, 
 the case may be remanded for the taking of further proofs on condition of 
 the payment of costs of both courts by the complainant, see — St. Claire 
 V. Union Jack, 184 Fed. 989; 106 C. C. A. 667. 
 
 WORDS AND PHRASES. 
 
 § 936. " Means." 
 
 The word '"' means " appearing in claim 4 alleged to be infringed must be 
 construed as referring to the condenser mentioned in the specifications. — 
 Kellogg V. Dean, 182 Fed. 991; 105 C. C. A. 545.
 
 GENEKAL INDEX 
 
 [Note. — The actual case law excerpted is set in Roman; other matter in italics. 
 References are to pages. Cross-references are enclosed in parentheses] 
 
 ABANDONMENT 
 
 Brief Survey, 1 
 
 Statutory Provision, 77, 849, 863 
 
 General Rules, 77, 915 
 
 After Application, 78 
 
 Amendment, 79, 916, (102) 
 
 Application 
 
 Abandonment and Renewal, 79, 
 
 916 
 Delay, 80 
 Constructive, 80 
 Decision of Commissioner — Not 
 
 Final, 81 
 Division of Application, 81, 916, 
 
 (315, 322) 
 Experimental Use, 82, 916, (371, 
 
 375) 
 Evidence of, 83, 917, (352, 356) 
 Failure to Claim, 83 
 Prosecution of Application, 84 
 Of Interference, 85 
 Of Renewal Application, 85 
 Piracy, 85 
 Prior Patent, 85 
 Public Use, 85, 917, (772) 
 Subsequent Patent, 86 
 Miscellaneous Rulings^ 87 
 See — Anticipation, 106, 919; 
 
 Claims, 178, 932; Defenses, 
 
 284, 949; Evidence, 376, 961; 
 
 Invention, 521, 981; Reissue, 
 
 790, 1019. 
 
 ABATEMENT 
 
 Brief Survey, 3 
 
 Assignment of Patent Pending 
 Suit, 88 
 
 Death of Complainant, 88 
 
 Dissolution and Merger of Corpo- 
 ration, 88 
 
 See — Pleading, 728. 
 
 ACTIONS 
 Brief Survey, 3 
 Statutory Provision, 857, 858 
 
 General Statement, 89 
 
 To Compel Issue of Patent, 89, 917 
 
 Cancellation of Patent, 90, 917 
 
 Interfering Patents, 92 
 
 See — Administrator, 98; Arbi- 
 tration, 156; Assignment, 157, 
 930; Defenses, 284, 949; De- 
 murrer, 294, 949; Designs, 
 298, 950; Equity, 332, 955; 
 Fraud, 388; Government, 391, 
 965; Interferences, 517, 981; 
 Interfering Patents, 520; Law 
 Actions, 676, 1003; Pleading 
 and Practice, 718, 1009; Un- 
 fair Trade, 850. 
 
 ADJUDICATION, (242) 
 Brief Survey, 4 
 General Statement, 92 
 Effect of, 92 
 
 Patent Office Decision, 93, 918 
 Prior 
 
 Conclusiveness, 93, 918 
 
 Different Parties, 96 
 
 Estoppel on Complainant, 96, 
 
 (350) 
 Judicial Notice, 96 
 New Evidence, 96 
 Privity, 97 
 Stare Decisis, 97, 919 
 See — Arbitration, 156; Comity, 
 242, 943; Commissioner of Pa- 
 tents, 2^7; De/ewses, 298,'950; 
 Estoppel, 350, 958; Injunc- 
 tion, 477, 974; Interferences, 
 517, 981; Patent Office, 716, 
 1009; Res Judicata, 820, 1022. 
 
 ADMINISTRATOR OR EXECU- 
 TOR, OR GUARDIAN OF IN- 
 SANE PERSON, (280) 
 Brief Survey, 6 
 Statutory Provision, 98, 879 
 Powers of, 98
 
 1028 
 
 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentlicsen) 
 
 (Con- 
 
 ADMINISTRATOR (280) 
 tinned) 
 
 License, 98, (687) 
 Right to Sue, 98 
 
 See — Attorneys, 177; Death of 
 A'pplicant, 280. 
 
 AGGREGATION 
 
 Brief Survey, 6 
 General Statement, 99 
 Arrangement of Parts, 99 
 Combination, 99 
 Duplication, 99 
 Manufacture, 100, (708) 
 Old Elements 
 
 General Rule, 100 
 
 Independent Functions, 100 
 
 Old Results, 101 
 Old Function, 102 
 Utility — Patentability, 102 
 See — Invention, 527, 537, 600, 013. 
 
 AMENDMENT 
 
 Brief Survey, 7 
 
 Statutory Provisions, 102 
 
 General Statement, 103 
 
 Broadening Scope of Invention, 
 103 
 
 New Matter 
 Broadening, 104 
 Miscellaneous, 105 
 
 Delay, 105 
 
 See — Abandonment, 77; Attor- 
 neijs, 177; Claims, 178, 932; 
 Divisional Patenting, 315, 9.53; 
 Reissue, 790, 1019; Specifi- 
 cation, 829, 1023. 
 
 ANTICIPATION 
 
 Brief Survey, 8 
 
 Statute Authority, 106, 859, 889 
 General Rules, 107, 919 
 Abandoned Device or Experi- 
 ment, (77) 
 
 Anticipatory, 108 
 
 Non-Anticipating, 109, 919 
 
 Application, 110, 919 
 Analogousness 
 
 Art, 110, 919 
 
 Use, 110, 919 
 Anticipating an Anticipation — 
 
 Burden of Proof, 110, 920 
 Application, HI 
 Combining Old Elements 
 
 Different Devices, HI 
 
 Different Patents, 112, 920 
 
 Mechanical Skill, 113 
 
 Doul)le Patenting, 113, (315, .322) 
 Evidence of, (356) 
 
 Burden of Proof, 113, 921 
 
 Device or Exhibit. 114, 921 
 
 Expert, 117 
 
 Parol, 117,921 
 
 Prior Patent, 119 
 
 Rebuttal, 119 
 
 Miscellaneous Holdings, 120, 
 922 
 Experiment, 121, 922, (375) 
 Foreign Invention, 122 
 Foreign Patent or Publication, 
 (379) 
 
 Burden of Proof, 123 
 
 Date of, 123 
 
 Invention, 123 
 
 I'ublication — Date, 125 
 
 Same Inventor, 125 
 
 Sufficiency, 125 
 " Infringe-if-later " Test, 126 
 Inoperative Device, 127, 922 
 Knowledge, 127, 923 
 Old I'^llements or Device 
 
 Different Use, 128 
 
 Function, 129 
 
 Requiring Adaptation, 129, 923 
 Paper Patent 
 
 Insufficient, 1.30 
 
 Sufficient, 130 
 Prior Art 
 
 Insufficient, 131, 923 
 
 Sufficient, 131, 923. 
 Prior Patent 
 
 Date, 132 
 
 Insufficient, 132 
 
 Sufficient, 133, 924 
 
 Reference on Application, 133 
 Process, (737) 
 
 Machine, 134, 924, (704, 706) 
 
 Process Rule, 134, 924 
 
 Miscellaneous, 134, 925 
 Public Use, (772) 
 
 Sufficient, 134, 925 
 
 Miscellaneous, 135 
 Publication 
 
 Insufficient, 136 
 
 Sufficient, 136 
 Uncontemplated Use or Function, 
 
 137 
 Miscellaneous Rulings, 137 
 See — Defenses, 284, 949; De- 
 murrer, 294, 949; Designs, 
 298, 950; Evidence, 356, 961; 
 Infringement, 438, 470; In- 
 terfering Patents, 520; Ju-
 
 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 1029 
 
 ANTICIPATION — {Contimied) 
 
 dicial Notice, 655; Public Use, 
 772, 1018; Public Use Pro- 
 ceedings, 782. 
 
 APPEALS 
 
 Brief Survey, 11 
 The Statutes 
 
 Appeals to the Supreme Court, 
 138, 860 
 
 Appeals to Circuit Court of Ap- 
 . peals, 139, 860 
 Assignments of Error 
 
 Sufficienc}^ 139, 925 
 
 Miscellaneous Rules, 141 
 Certification, 141 
 
 Commissioner of Patents — Ac- 
 tions, 141 
 Cross-Appeals, 141 
 Decrees, (281) 
 
 Final — What Constitute, 142 
 
 Interlocutory — Defined, 144, 
 925 
 
 Interlocutory — What Deter- 
 mined on Appeal, 144, 926 
 
 Interlocutory — When Appeal- 
 able, 146 
 
 Interlocutory — Miscellaneous 
 Rules, 146 
 
 Stipulation, 146 
 Demurrer — Injunction, 146, 
 
 (294) 
 Dismissal 
 
 On Motion, 147 
 
 Without Prejudice, 147 
 Exceptions 
 
 Master's Report, 148, 926 
 
 Sufiiciency, 148 
 
 Waiver, 148 
 Finality, 148, 926 
 Findings, 148, 927 
 Jurisdiction, 149, (658) 
 Law Actions, (676) 
 
 What considered on, 149, 927 
 
 Miscellaneous, 150 
 Orders, 151, 928 
 Parties, 151 
 Record 
 
 Encumbering, 151 
 
 Stipulated, 152, 928 
 
 Miscellaneous, 152, 928 
 Rehearings, 153, (789) 
 Remanding, 153 
 Second Appeal, 153 
 Subject-Matter, 154, 929 
 Supersedeas, 154 
 
 Supreme Court, 155, 929 
 Miscellaneous Rules, 155, 929 
 
 See — Comity, 238; Costs, 242, 
 943 ; Decrees, 281 ; Injunction, 
 477, 974; Interferences, 517, 
 981; Jurisdiction, 658, 999. 
 
 APPENDIX 
 
 Decisions Reported Since First 
 Edition, 915-1025 
 
 APPLICATION 
 
 Statutory Provision, 862 
 
 ARBITRATION 
 Brief Survey, 12 
 
 Decision of Arbitrator — Force 
 and Effect, 156 
 
 ART 
 
 Brief Survey, 12 
 Statutory Promsion, 156 
 Definition, 156 
 Art and Process, 157 
 See — Process, 737. 
 
 ASSIGNMENT 
 Brief Survey, 13 
 Statutory Provisions, 158 
 Definition, 158 
 
 Action to Compel, 159, 930, (89) 
 Before Patent, 160 
 Conditions and Reservations, 161 
 Construction, 162 
 Copartnership, 163, (250) 
 Corporation, 163, (25D 
 Debtor and Creditor, 163. 931 
 Evidence, 164, 931, (356) 
 Execution, 166 
 Future Inventions 
 
 Legality, 166, 931 
 
 Recording, 167 
 
 What are Not, 168 
 
 Miscellaneous Rules, 168 
 Interests Assignable, 169, 931 
 License, 170, (687) 
 Notice 
 
 Bona Fide Purchaser, 171 
 
 Constructive, 172 
 Parol, 173, 931 
 Part Interest, 173 
 Pendente Lite, 174 
 Power of Attorney, 174 
 Recording, 175, (356) 
 Reissue, 175, (790) 
 Specific Performance, 175, 932
 
 1030 GENERAL INDEX 
 
 (References are to pages. Cross-references are eneloeed in parentheses) 
 
 ASSIGNMENT — (Continued) 
 Territorial, 175, 932 
 Miscellaneous Rulinp;s, 176 
 See — Attorneys, 177; Bankruptcij, 
 178; Employer and Employee, 
 327, 924; Evidence, 356, 961; 
 Infringement, 407-408; 460- 
 462; License, 687, 1004: Li- 
 censor and Licensee, 702; Mort- 
 gage, 712; Royalties, 825, 
 1022; Slate Statutes, 843, 1024; 
 Title, 847, 1025. 
 
 ATTORNEYS 
 
 Brief Survey, 14 
 Statutory Provision, 177, 868 
 Actions Binding, 177, (102) 
 Assignment by — Notice, 177, 
 
 (157) 
 Statements on Argument — Not 
 
 Evidence, 178 
 Miscellaneous, 178 
 See — Amendment, 102. 
 
 BANKRUPTCY 
 
 Statutory Provision, 178, 866 
 Title to Patent, 178 
 
 CERTIORARI 
 
 Statutory Provision, 898 
 
 CIRCUIT COURTS OF APPEAL 
 
 {See Appeals) 
 
 CLAIMS 
 
 Brief Survey, 15 
 Statutory Provision, 179 
 Purpose of the Claim, 179 
 Ambiguity, 180, 932 ' 
 Combination, 180 
 Construction 
 
 Beneficial Use, 180, 932 
 
 Broad and Narrow, 181, 932 
 
 Comparison, 181 
 
 Dissecting, 182, 933 
 
 Drawings, 182, (326) 
 
 Duplication, 182, 933 
 
 Equivalents, 182, 933, (334) 
 
 Expanding, 183, 934 
 
 Functional, 186, 935, (389) 
 
 Generic, 186 
 
 Iinprovement, 188, (392) 
 
 Limitation 
 
 Broadening by Amendment, 
 
 189, 935, (102) 
 Disclaimer, 190, (307) 
 
 Bv Applicant, 190, 935 
 Elements of Claim, 192, 9.35 
 Failure to Claim, 193, 936, 
 
 (77) 
 General Rules, 193. 9.3r) 
 Improvement, 195, 93(). (392) 
 Narrow Improvement, 195, 
 
 937 
 Patent Office Action Limit- 
 ing, 195. 937 
 Patent Office Action Not Lim- 
 iting, 204. 939 
 Patent Office Action — Pro- 
 test, 205, 940 
 Patent Office Action — Rule, 
 
 206 
 Specific Claim.s, 206 
 Specifications and Drawings, 
 
 207, 940, (829) 
 State of Art, 208, 941 
 Words of Limitation, 209, 941, 
 
 (8.53) 
 Miscellaneous Rules, 210 
 Limitation to Avoid Anticipa- 
 tion. 211 
 Narrow, 213 
 Omitting Element, 214 
 Plain Intent and Meaning, 214 
 Reading in Elements, 216, 942 
 Reference Characters, 216 
 Rules — General, 217, 942 
 Specification, 222, 942, (829) 
 State of Art, 226 
 Unclaimed Elements, 228 
 Undue Limitation by Patentee, 
 
 228 
 Unduly Broad, 229 
 Valeat quam Pereat Rule, 230, 
 
 942 
 Words and Phrases, 230, 943, 
 
 (S.53) 
 Miscellaneous Rulings, 232 
 Designs, 234, (298) 
 Elements, (241) 
 Essential, 234 
 Redundant, 234 
 Reference Characters, 235 
 Terminology, 235 
 Excessive 
 
 Duplication, 235 
 Effect, 235 
 
 Foreclosing Improvement, 236 
 Expansion, 236 
 Failure to Claim, 236 
 Generic, 236, 943 
 Novelty, 237
 
 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 1031 
 
 CLAIMS — {Continued) 
 
 Process, 237. (737) 
 
 Purpose, 237 
 
 Scope, 238 
 
 Specific, 240, 943 
 
 Sufficiency, 240, 943 
 
 Void, 241, 943 
 
 See — Divisional Patenting, 315, 
 953; Double Patenting, 322, 
 954; Equivalents, 334, 956; 
 Improvement, 392, 965; In- 
 vention, 537-546, 981; Process, 
 737, 101 1 ; Words and Phrases, 
 853, 1025. 
 
 COMBINATIONS 
 
 General Statement, 242 
 
 See — Aggregation, 95; Anticipa- 
 tio7i, 106, 919; Claims, 178 
 932; Improvement, 392, 965 
 Infringement, 418-429, 966 
 Invention, 537-548, 981. 
 
 COMITY 
 
 Brief Survey, 17 
 
 General Statement and Definition, 
 
 242, 943 
 Between Circuit Courts, 243, 944 
 Between Circuit Court of Appeals 
 
 and Circuit Court, 243, 944 
 Between Circuit Courts of Appeal, 
 
 244 
 Prior Adjudication, 244 
 Supreme Court and Circuit Court 
 
 of Appeals, 245 
 Weight of, 245 
 Miscellaneous, 245 
 See — Adjudication, 92, 918; De- 
 fenses, 284,9^9; Estoppel, 350; 
 
 958; Injunction, 477, 974; 
 
 Interferences, 517, 981; Res 
 
 Judicata, 820, 1022. 
 
 COMMISSIONER OF PATENTS 
 
 Brief Survey, 17 
 
 Statutory Provision, 247, 868 
 
 General Statement, 247 
 
 Actions, 247 
 
 Decisions, 247 
 
 Duties, 248 
 
 Powers of, 248 
 
 See — Appeals, 138, 925; De- 
 fenses, 284, 949; Interferences, 
 517, 981; Patent Office, 716, 
 1009; Reissue, 790, 1019; 
 Res Judicata, 820, 1022. 
 
 COMPOSITION OF MATTER 
 
 Brief Survey, 18 
 
 Statutory Provision, 249, 889 
 
 General Statement, 249 
 
 General Rules, 249 
 
 See — Manufacture, 108, 1006; 
 
 Process, 737, 1011; Product, 
 
 747. 
 
 CONGRESS 
 Constitutional Powers, 250, 870 
 Plenary Powers, 250 
 
 CONTEMPT 
 
 General Statement, 250 
 
 See — Injunction, 478-480, 513. 
 
 COPARTNERSHIP 
 
 Brief Survey, 18 
 Miscellaneous Rulings, 251 
 See — Assignment, 167, 930; Joint 
 Inventions, 654, 999; License, 
 687, 1004; TiUe, 847, 1025. 
 
 CORPORATIONS 
 Miscellaneous Rulings, 251, 945 
 
 See — Abatement, 88; Assignment, 
 157, 930; Infringement, 436- 
 438, 966; Injunction, 489, 974. 
 
 COSTS 
 Brief Survey, 18 
 
 Statutory Provisions, 252, 870-871 
 Appeals, 252, 945, (138) 
 Disclaimer, 253, 945, (307) 
 Record, 254 
 Taxation, 254 
 Miscellaneous, 254, 946 
 
 COURT OF APPEALS D. C. 
 
 General Act, 871, 895 
 
 DAMAGES (748, 1012) 
 
 Brief Survey, 19 
 
 Statutory Provisions, 256, 871-872 
 General Statement, 257 
 Actual, 257 
 Designs, 257, (298) 
 In Equity, 258 
 Increasing, 259, 947 
 Interest, 260 
 Law Actions, 261, (676) 
 Master's Report, 263 
 Measure 
 Absence of License or Royalty 
 Measure, 264
 
 1032 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 DAMAGES (748, 1012) — {Contin- 
 ued} 
 
 Complainant's Loss, 265, 947 
 Deductions and Mitigations, 
 
 265, 947 
 Defendant's Gains, 266 
 Full Damages, 269 
 License Fee, 270, 947 
 Nominal, 272 
 Royalty, 273, (825) 
 Speculative, 273 
 Miscellaneous, 274 
 Proof of .275 
 Segregation, 275 
 
 Miscellaneous Rulings, 280, 948 
 See — Designs, 298, 950; Injunc- 
 tion, 496, 505, 974; Marking 
 " Patented;' 710, 1007; Pro/i<s, 
 748, 1012; Statute of Limita- 
 tions, 845. 
 
 DEATH OF APPLICANT 
 
 Miscellaneous Rulings, 280, (98) 
 
 DECREES 
 General Statement, 281 
 Appellate Power Over, 281 
 Classes, 281 
 Interlocutory, 282 
 Miscellaneous, 282 
 See — Adjudication, 92, 918; Ap- 
 
 peals, 138, 925; Injunction, 
 
 477, 974. 
 
 DEFENSES 
 Brief Survey, 22 
 Statutory Provisions, 284, 873 
 General Statement, 284 
 General 
 
 Invalidity — Acts of Commis- 
 sioner, 285 
 Invalidity — Defective Grant or 
 
 Specification, 285, (829) 
 Invalidity — Reissue, 285, (790) 
 License or Purchase, 286 
 Non-Infringement, 287, (405) 
 Non-Patentability, 288 
 Non-Utility, 288 
 Res Judicata, 289 
 Statutory 
 Abandonment, 290, (77) 
 Fraud or Misrepresentation in 
 
 Specification, 289, (829) 
 Fraud or Unfairness as Against 
 Another Inventor, 290 
 Non-Inventorship, 290 
 
 Prior Patent or Publicatnon, 290, 
 (106) 
 
 Prior Public Use or Sale, 292, 
 (106,772) 
 
 Miscellaneous, 292, 949 
 See — Adjudication, 92, 918; An- 
 ticipation, 106, 919; Demurrer, 
 294, 949; Double Patenting, 
 322, 954; Estoppel, 350, 9.58; 
 Foreign Patent, 379, 9<)2; In- 
 fringement, 405, 966; Judicial 
 Notice, 655; Jurisdiction, 658, 
 999; Laches, 671, 1002; Li- 
 cense, 687, 1004; Marking 
 "Patented," 710, 1007; Oath, 
 714, 1009; Pleading and Prac- 
 tice, 718, 1009; Public Use, 
 772, 1018; Reissue, 7\)0, 1019; 
 Res Judicata, 820, 1022; Stat- 
 ute of Limitations, 845; Title, 
 847, 1025. 
 
 DEMURRER 
 
 Brief Surveii, 23 
 
 Dismissing Bill on, 294, 949 
 
 Judicial Notice, 295, 950, (655) 
 
 Patentability and Novelty, 295, 
 950 
 
 Validitv, 296 
 
 Miscellaneous, 297, 950 
 
 See — Appeals, 138, 925; Juris- 
 diction, 658, 999; Pleading, 
 718, 1009; Title, 847, 1025. 
 
 DESIGNS 
 
 Brief Survey, 23 
 
 Statutory Provis^ions, 298, 874 
 
 Definition, 299 
 
 Identity, 300 
 
 Infringement, 300, 950, (405) 
 
 Invention, 302, 951, (521) 
 
 Mechanical, 303 
 
 Novelty, 303, 951 
 
 Patentability, 304, 95i 
 
 Penalty, 305 
 
 Miscellaneous, 305 
 
 See — Claims 234 ; Damages, 255. 
 
 DESTRUCTION OF INFRIN- 
 GING MACHINE 
 An Obsolete Rule, 307 
 
 DISCLAIMER 
 Brief Survey, 24 
 Statutes, 308, 876
 
 GENERAL INDEX 
 
 1033 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 DISCLAIMER — (Continued) 
 
 Delav, 308, 951 
 
 Effect of, 309, 952 
 
 Failure to File, 310, 952 
 
 Pending Suit, 310 
 
 Purpose and Effect, 311, 952 
 
 Miscellaneous, 313 
 
 See — Abandonment, 77, 915; Costs, 
 252, 945; Double Patenting, 
 322, 954; Reissue, 790, 1019. 
 
 DISCOVERY 
 Brief Survey, 25 
 Statutory Origin, 314 
 General Statement and Definition, 
 314, 953 
 
 DIVISIONAL PATENTING (102) 
 
 Brief Survey, 26 
 
 Statute and General Rule, 315, 
 953 
 
 Co-Pending Applications, 316, 953 
 
 Dates of Issue, 318 
 
 Distinguished from Double Pa- 
 tenting, 319, 953 
 
 Extending Monopoly, 320 
 
 Generic and Specific Inventions, 
 320 
 
 Identity, 321, 953 
 
 Second Patent Void, 321 
 
 See — Abandonment, 77, 915; An- 
 ticipation, 106, 919; Reissice, 
 790, 1019. 
 
 DOUBLE PATENTING 
 
 Brief Survey, 26 
 
 General Rules, 322 
 
 Disclaimer in Later Patent, 223, 
 (307) 
 
 Extending the Monopoly, 323, 
 954 
 
 Seniority and Priority, 324, (733) 
 
 Unitary Device, 325 
 
 Miscellaneous Rules, 325 
 
 See — Abandonment, 77,915; A71- 
 ticipation, 106, 919; Defenses, 
 284, 949; Improvement, 392, 
 965; Invention, 521, 981. 
 
 DRAWINGS 
 
 Brief Survey, 27 
 
 Statutory Provisions, 326, 876 
 
 General Statement and General 
 
 Rules, 327, 954 
 See — Claims, 178, 932. 
 
 EMPLOYER AND EMPLOYEE 
 
 Brief Survey, 27 
 
 General Statement, 327 
 
 Government, 877 
 
 Contract — Future Inventions, 
 328, 392, 954 
 
 License — Implied, 328, 687, 954 
 
 Rights of 
 Employee, 329 
 Employer, 330 
 
 Miscellaneous Rulings, 331 
 
 See — Assignment, 157, 930; Gov- 
 ernment, 391, 965; License, 
 687, 1004; Licensor and Li- 
 censee, 702. 
 
 EQUITY 
 
 The Statutes, 332 
 
 Jurisdiction, 333, 955 
 
 Miscellaneous, 334 
 
 See — Actions, 89, 917; Damages, 
 255, 947; Decrees, 281; De- 
 fenses, 284, 949; Injunction, 
 477, 974; Interferences, 517, 
 981; Interfering Patents, 520; 
 Jurisdiction, 658, 999; Plead- 
 ing and Practice, 718, 1009; 
 Profits, 748, 1012. 
 
 EQUIVALENTS 
 
 Brief Survey, 29 
 
 General Statement and Definitions, 
 334, 956 
 
 Combinations, 336, 956 
 
 Generic Inventions, 338 
 
 Improvements, 341, 956, (392) 
 
 Known Elements, 342 
 
 Range, 343, 957 
 
 Identity, 346, 957 
 
 Miscellaneous Rulings, 346 
 
 See — Claims, 178, 9.32; Infringe- 
 ment, 419, 4.50, 966; Process, 
 737, 1011; Specification, 829, 
 1023. 
 
 ESTOPPEL 
 
 Brief Survey, 30 
 
 Corporations, 350, 958 
 
 Evidence, 351 
 
 Interference Adjudication, 351, 
 
 (517) 
 Licensor or Former Owner, 351, 
 
 958 
 Owner of Patent or Licensee, 352, 
 
 959 
 Privity, 354, 960
 
 1034 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 E8T0FPEL— {Continued) 
 
 Miscellaneous, 355, 960 
 
 See — Abandonment, 77 , 915; Ad- 
 judication, 92, 918; Amend- 
 ment, 102; Assignment, 157, 
 930; Attorneys, 177; De- 
 fenses, 284, 949; Disclaimer, 
 307, 951; Employer and Em- 
 ployee, 327, 954; Infringe- 
 ment, 405, 966; Laches, 671, 
 1002; Licen.se, 687, 1004; 
 Licensor and Licensee, 702; 
 Pleading and Practice, 718, 
 1009; Res Judicata, 820, 1022. 
 
 EVIDENCE 
 
 Brief Survey, 30 
 Statutory Provisions, 356, 878 
 Anticipation, (106) 
 Prior Art, 357, 961 
 Prior Patent or Publication, 358, 
 
 961 
 Prior Use, 358, 961 
 Rebuttal, 359 
 Miscellaneous, 359 
 Assignment, 360, (157) 
 Depositions, 360, 961 
 Documentary, 360 
 Exhibits, 362 
 Expert, 362, 961 
 Infringement, 365, (405) 
 Invention — Fact of, 366, 962, 
 
 (521) 
 Law Actions, (676) 
 Depositions, 366 
 Directions and Instructions, 367 
 Facts — For Court, 367, 962 
 Facts — For Jury, 368, 962 
 Rules, 369 
 Miscellaneous, 369 
 Objections and Exceptions, 369 
 Parol, 370 
 Prima Facie, 371 
 Records and Documents, 371 
 Miscellaneous, 372 
 See — Abandonment, 77, 915; An- 
 ticipation, 106, 919; Assign- 
 ment, 157, 930; Infringement, 
 405, 966; Invention, 557-588, 
 981; Judicial Notice, 655; 
 Priority, 733; Public Use, 
 772, 1018; Reopening Case, 
 818. 
 
 EXAMINERS - IN - CHIEF 
 
 Statutory Provision, 878 
 
 EXECUTOR 
 
 {See Administrator) 
 
 EXPERIMENT 
 
 General Statement, 375 
 
 Abandonment, 376, (77) 
 
 Experimental Use, 377, 962 
 
 Public Use, 377, (772) 
 
 Reduction to Practice, 377 
 
 Secret U.se, 378 
 
 See — Abandonment, 77, 915; An- 
 ticipation, 106, 919; Priority, 
 733; Public Use, 772, 1018; 
 Reduction to Practice, 782, 
 1018; Secret Process or Ma- 
 chine, 827 ; Unpatented Inven' 
 lion, 851. 
 
 EXTENSIONS 
 General Statement and Holdings, 
 378 
 
 FALSE MARKING 
 Statutory Penalty, 880 
 
 FEES 
 Statutory — Patent Office, 880 
 
 FEIGNED ISSUES 
 
 {See Equity) 
 
 FOREIGN PATENT 
 
 Brief Survcij, 32 
 
 Statutory Provision, 379, 882 
 
 General Rulings, 381, 962 
 
 Expiration, 384, 963 
 
 Lapse, 386, 965 
 
 Prior, 387 
 
 Miscellaneous Holdings, 387 
 
 <Sce — Anticipation, 106, 919; De- 
 fenses, 284, 949; Evidence, 
 356, 961; Public Use, 772, 
 1018. 
 
 FOREIGN USE 
 Statutory Provision, 882 
 
 FRAUD 
 
 Statute and General Statement, 388 
 See — Defenses, 284, 949. 
 
 FUNCTION 
 
 Brief Survey, 32 
 
 Patentability, 389, 965 
 
 Miscellaneous Rules, 390 
 
 See — Claims, 178, 932; Infringe-
 
 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 1035 
 
 FUNCTION — {Conlinuecl) 
 
 ment, 405, 966; Invention, 521, 
 981- Machine and Product, 
 707; Process, 737, 1011; Prod- 
 uct, 747; Specification, 829, 
 1023. 
 
 GOVERNMENT 
 
 Statutory Provisions, 391, 883, 965 
 
 General Rulings, 391 
 
 See — Employer and Etnployee, 
 327, 954; Infringement, 405, 
 966; Injunction, 477, 974; 
 Jurisdiction, 658, 999; Li- 
 cense, 687, 1004. 
 
 IMPROVEMENT 
 
 Brief Survey, 32 
 
 Statute Authority and General State- 
 ment, 392, 889, 965 
 
 Carrying Forward, 393 
 
 Claims, 394, (178) 
 
 Combinations, 394, (241) 
 
 General Rules, 394, 965 
 
 Generic, 395, 966 
 
 Infringement of, 397, (405) 
 
 Mechanical Skill, 397 
 
 Old Device, New Use, 398 
 
 On Prior Patent to Same Inventor, 
 399 
 
 Patentability, 399, 966 
 
 Scope — Limitations, 401, 966 
 
 Specific, 402 
 
 Utility, 404 
 
 Miscellaneous, 404 
 
 See — Assignment, 157, 930; 
 Claims, 178, 932; Divisional 
 Patenting, 315, 953; Double 
 Patenting, 322, 954; Em- 
 ployer and Employee, 327, 
 954; Equivalents, 334, 956; 
 Infringement, 405, 966; In- 
 vention, 521, 981. 
 
 INFRINGEMENT 
 Brief Survey, 33 
 The Statute, 406, 884 
 General Statement, 406 
 Additions 
 
 Elements, 406 
 
 Functions, 407 
 Assignor and Assignee 
 
 By Assignee, 407 
 
 By Assignor, 407 
 
 By Inventor-Assignor, 408 
 
 Avoidance 
 
 Adding Elements or Functions, 
 
 409, 966 . 
 Concealment or Subterfuge, 409 
 Impairing Efficiency, 410 
 Improving Efficiency, 411 
 Omitting Element, 411, 966 
 Transposition of Parts, 412, 967 
 Miscellaneous Conditions, 413, 
 967 
 Change of Form 
 Colorable, 413, 967 
 Location, 416, 968 
 Modification, 417, 968 - 
 Number of Parts, 417, 968 
 Change of Material, 417 
 Combinations, (241) 
 Adding Elements, 418 
 Concealment and Subterfuge, 
 
 418 
 Construction of, 418 
 Different Combination, Same 
 
 Result 419 
 Equivalents, 419, 968, (334) 
 Identity, 423, 968 
 Impairing Efficiency, 424, (410) 
 Improvements, 424, (392) 
 Old Elements, New Function, 
 
 424 
 Omitting Element, 425 
 Contributory 
 
 Furnishing Material, 429, 969 
 Intent, 430 
 
 Making Elements, 430, 969 
 Rules, 433, 969 
 Miscellaneous Rules, 435 
 Corporations, (251) 
 Common Carriers, 436 
 Joint Stock, 436 
 Officers of, 432, 970 
 Miscellaneous Holdings, 438 
 Defenses, (284) 
 
 Anticipation, 438, (106) 
 Miscellaneous, 438 
 Division or Union of Parts or 
 
 Elements, 440, 970 
 Duplication, 440 
 Evidence of, (356) 
 
 Acts of Defendant, 441, 970 
 Burden, 442, 970 
 Expert, 442, 970 
 Function, 442, 970, (389) 
 Identity, 443, 971 
 Law x\ctions, 443, (676) 
 Parol, 443 
 Sufficiency, 443, 971
 
 1036 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parent licses) 
 
 INFRINGEMENT — {Continued) 
 
 Utility — Use by Defendant, 
 444, 971 
 
 Miscellaneous Holdings, 445, 
 971 
 Generic Patent, 447, 971 
 Government, 449, 972, (391) 
 Identity 
 
 Equivalents, 450, (334) 
 
 Means Employed, 450, 972 
 
 Non-Essentials, 451 
 
 Result or Function, 451 
 
 Tests, 452, 972 
 
 Miscellaneous Rules, 454 
 Importation and Exportation, 454, 
 
 973 
 Improvement, (392) 
 
 By an Improvement, 456, 973 
 
 Of an Improvement, 458, 973 
 Intent, 460, 973 
 License, (687) 
 
 Implied, 460 
 
 By Licensee, 460, 973 
 
 Patentee, 461 
 
 Territorial, 462 
 
 Miscellaneous, 462 
 Machine, 462, (700) 
 Machine and Manufacture, 463 
 Notice, 463, (710) 
 Prior Patent, 463 
 Process, (737) 
 
 Additions, 464 
 
 Tests, 464, 974 
 
 Miscellaneous, 465, 974 
 Product, 466, (747) 
 Reissue, 462, (790) 
 Repairs 
 
 Rebuilding, 467 
 
 What Constitute, 468 
 Tests 
 
 Anticipation Test, 470, (106) 
 
 Device and Claims, 471 
 
 Function, 472, (389) 
 
 Interchangeability, 472, 974 
 
 Means and Result, 473 
 
 Utility and Use, 473 
 
 Miscellaneous, 473, 974 
 Miscellaneous Infringement Rules, 
 
 474 
 See — Abandonment, 77, 915; An- 
 ticipation, 106, 919; Dam- 
 ages, 255, 947; Defenses, 284, 
 949; Designs, 298^! 950; Evi- 
 dence, 356, 961; Government, 
 391, 965; Improvement, 392, 
 965; Jurisdiction, 658, 999; 
 
 License, 687, 1004; Pleading 
 and Practice, 7 IS, 1009; Un- 
 fair Trade, 850. 
 
 INJUNCTION 
 
 Brief Survey, 39 
 
 Statutory Provision, 477, 886 
 
 General Statement, 478 
 
 Appeals, (138) 
 Comity, 478, 974 
 Contempt, General, 474, 974, 
 
 (250) 
 Contempt, Rule in Debs Case, 
 
 479, 975 
 Contempt, Rule in Bessette 
 
 Case, ISO 
 Decision on Merits, 480, 975 
 Dismissing Bill. 481. 975 
 Prior Adjudication, 481 
 Refusal to Grant, 483 
 Sound Discretion, 483, 975 
 What Considered on. 484, 975 
 Miscellaneous Rulings, 488, 976 
 
 Bond, 489, 976 
 
 Corporations and Corporation 
 Officers, 489, (251) 
 
 Discontinuance or Non-Use, 490, 
 976 
 
 Discretion of Court, 491, 977 
 
 Expiration of Patent, 491 
 
 General Rules for Granting, 492 
 
 General Rules for Refusing, 493, 
 977 
 
 Government, 494, (391) 
 
 Grounds for Granting 
 Acquiescence, 494, 977 
 Conduct of Defendant, 495, 977 
 Damages InsuflBcient Remedy, 
 
 496 
 Infringement, 496 
 Laches Excusable, 497, (671) 
 Nature of Act, 497, 977 
 Prima Facie Right, 497 
 Prior Adjudication, 497, 977 
 Sufficiency, 501, 978 
 
 Grounds for Refusing 
 
 Acquiescence Not Established, 
 
 503 
 Conflicting Proofs, 504. 978 
 Damages Adequate Relief, 505 
 Infringement Not Clear, 505, 979 
 Insufficiency — General. 505 
 Laches, 508, (671) 
 License, 508, (687) 
 Prior Adjudication Insufficient, 
 509
 
 GENERAL INDEX 
 
 1037 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 INJUNCTION — {Continued) I 
 
 Title in Doubt, 509, (847) 
 Validity Contested, 510 
 Modification, 510 
 Non-User, 511, 979 
 Patent Office Decisions, j>12 
 Power and Scope, 512, 979 
 Violation of 
 
 Contempt, 513, 979 
 Miscellaneous Rules, 514, 980 
 Miscellaneous Injunction Decis- 
 ions, 515, 980 
 See — Adjudication, 92, 91S] Ap- 
 peals, 138, 925; Comity, 242, 
 943; Decrees, 281; Equity, 
 332, 955; Jurisdiction, 658, 
 999; Laches. 671, 1002; Plead- 
 ino, 718, 1009; Res Judicata, 
 820, 1022; Title, 817, 1025. 
 
 INTERFERENCES 
 
 Brief Survey, 42 
 
 The Statute, 517, 887-888 
 
 General Statement, 518 
 
 Actions to Compel Issue of Patent, 
 518 
 
 Appeals, 518, (138) 
 
 Conclusiveness, 518, 981 
 
 Miscellaneous, 519, 981 
 
 See — Actions, 89; Adjudication 
 92, 918; Appeals, 138, 925 
 Commissioner of Patents, 247, 
 Estoppel, 350, 958; Injwic- 
 tion, 477, 974; Interfering 
 Patents, 520; Patent Office, 
 716, 1009; Priority, 733; 
 Protests, 771; Public Use Pro- 
 ceedings, 782; Reduction to 
 Practice, 782, 1018; Res Judi- 
 cata, 820, 1022. 
 
 INTERFERING PATENTS 
 
 Brief Survey, 42 
 
 Statutory Provision, 520, 889 
 
 Rulings, 520 
 
 g^Q^ Priority, 733; Protests, 771; 
 
 Public Use Proceedings, 782; 
 
 Reduction to Practice, 782, 
 
 1018. 
 
 INVENTION 
 
 Brief Survey, 42 
 Statutory Provisions, 523, 889 
 General Statement, 523 
 Abandonment, 524, (77) 
 Brief Survey, 42 
 
 Adaptation 
 
 Brief Survey, 42 
 
 Arrangement or Grouping, o24, 
 
 981 
 Strengthening or Increasing 
 
 Weight, 525 
 Miscellaneous Cases, 526 
 Aggregation, (99) 
 
 Co-Action Wanting, 527, 981 
 Distinguished from Combina- 
 tion, 528 
 Not Invention, 529, 982 
 Old Elements, Old Result, 531, 
 982 
 Beneficial Use and Scope, 531, 982 
 
 Brief Survey, 43 
 Carrying Forward, 533, 983 
 
 Brief Survey, 43 
 Change of Form 
 Brief Survey, 43 
 Same Function, 534 
 Mere Change, 535, 983 
 When Patentable, 536, 984 
 Combinations, (241) 
 Brief Survey, 44 
 Co-Action of Elements, 537, 
 
 984, (99) 
 Entirety, 539, 984 
 Limitation, 539 
 Necessary Elements, 540 
 New Results, 541 
 Old Elements, New Results, 542, 
 
 985 
 Old Elements, Old Result, 544 
 Presumptions, 545 
 Sub-Combinations, 546 
 Miscellaneous Rulings, 546 
 Date of Completion, 548 
 
 Brief Survey,' 4:4: 
 Definitions of, 551, 985 
 
 Brief Survey, 45 
 Dividing or Uniting Parts, 553, 
 
 985 
 Double or Analogous Use 
 Brief Survey, 45 
 Analogous Use Non-Patentable, 
 
 554, 986 
 Double Use Non-Patentable, 
 
 556 
 Double Use Patentable, 557 
 Duplication, 557 
 Evidence of, (356) 
 Brief Survey, 45 
 Acquiescence, 557, 986 
 Attempted Evasion, 558 
 Commercial Success, 558, 986
 
 1038 GENERAL INDEX 
 
 (References arc to pages. Cross-references arc enclosed in parenthesM) 
 
 INVENTION — (Continued) 
 
 Commercial Success — When ' 
 Not, 5G0, 986 
 
 Efficiency, 5G0, 987 
 
 Extensive Litigation, 562, 987 
 
 Extensive Use, 562, 987 
 
 Extensive Use — When Not, 
 566, 988 
 
 Obvious Demand, 567. 988 
 
 Patent Prima Facie, 567, 988 
 
 Patent Office Action, 570 
 . Prior Failures, 571,988 
 
 Simplicity, 575, 989 
 
 Turning Failure Into Success, 
 575 990 
 
 Use by Defendant, 576, 990 
 
 Utilitj When Evidence, 578, 
 
 991 
 
 Utility — When Not, 584, 991 
 
 Want of Invention, 587, 992 
 
 Miscellaneous Holdings, 588 
 Force of Nature, 589 
 
 Brief Survey, 47 
 Generic 
 
 Brief Survey, 47 
 
 Construction, 590 
 
 Definition, 591 
 
 Improvement, 592 
 
 Scope, 592 
 
 What is, 593 
 Immoral Object, 594 
 
 Brief Survey, 45 
 Improvement, (392) 
 
 Brief Survey, 45 
 
 Non-Patentable, 595, 992 
 
 Patentability, 596 
 
 Miscellaneous, 596 
 Manufacture, 597, 992 
 
 Brief Survey, 46 
 Mathematical Formula, 598 
 
 Brief Survey, 46 
 Means, 598 
 
 Brief Survey, 46 
 Mechanical Skill 
 
 Brief Survey, 47 
 
 Adaptation, 600, 992 
 
 Aggregation, 600, 992, (99) 
 
 Carrying Forward, 600, 992 
 
 Change of Form, 601, 992 
 
 Definition and Distinction from 
 Invention, 603, 993 
 
 Degree of Knowledge and Skill, 
 605, 993 
 
 Dividing or Uniting Parts, 606, 
 
 993 
 Improvement, 606, (392) 
 
 Increased Efficiency, 007, 993 
 
 Old Device, Analogous Use, 607 
 
 Old Device, New Use, 608 
 
 Old l':i(>m('nt.s, Old Result, COS 
 
 Portability, (309 
 
 Strengthening or Increasing, 609, 
 993 
 
 Miscellaneous Decisions, 6Q9, 
 993 
 Novelty 
 
 Bi:ief Survey, 48 
 
 Definitions and Distinctions, 
 610, 994 
 
 Evidence, 612, 994, (356) 
 
 Miscellaneous, 613 
 Old Device, New Use 
 
 Brief Survey,, 49 
 
 Aggregation, 613, (99) 
 
 General Rules. ()14. 994 
 
 Non-i'atentable, 618, 995 
 
 Patental)le. 623, 995 
 OKI IClements, New Result, 625, 
 996 
 
 Brief Survey, 49 
 Old Elements, Old Result, 629, 
 
 996 
 Old Process, New Use 
 
 Brief Surveif, 49 
 
 Non-Patentable, 630, 996 
 
 Patentable, 631 
 Omitting Element, 631 
 
 Bri^f Surrey, 49 
 Patentability 
 
 Brief Survey, 49 
 
 Definition, 631, 996 
 
 Patentable Difference, 633, 996 
 
 Duty of Court, 634 
 
 Mental Conception, 635, 996 
 
 Scientific Principles and Ideas, 
 636 
 
 Miscellaneous Rules, 637, 997 
 Process, (737) 
 
 Brief Survey, 53 
 
 Definition, 637 
 
 Mechanical, 638 
 
 Non-Patentable, 640 
 
 Process and Machine, 640 
 Property of Matter, 641 
 Result or Function, 641, 997 
 
 Brief Survey, 54 
 Scientific Principles or Laws, 643, 
 
 997 
 Simplicity 
 
 Brief Survey, 54 
 
 Does Not Negative Invention. 
 644, 997
 
 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 1039 
 
 im^NTION — (Continued) 
 
 Ex Posto Facto Judgment, 645, 
 997 
 Simplification, 646 
 Substitution 
 Brief Survey, 54 
 'Elements, 646 
 New Material — Non-Patent- 
 
 able, 646, 998 
 New Material — Patentable, 
 648, 998 
 Systems and Arrangements, 649, 
 998 
 Brief Survey, 54 
 Tests of 
 
 Last Step Rule, 650 
 Miscellaneous, 651 
 Transposition of Parts, 652, 999 
 Utility, 652, 999 
 
 Brief Survey, 55 
 See — Anticipation, 106, 919; Art, 
 156; Composition of Matter, 
 249; Designs, 298, 950; Evi- 
 dence, 356, 961; Experiment, 
 375, 962; Function, 389, 965; 
 Improvement, 392, 965; Ma- 
 chine, 704; Machine and Prod- 
 uct 707; Manufacture, 708, 
 1006; Process, .737, 1011; 
 Product, 747; Reduction to 
 Practice, 782, 1018; Uyipa- 
 tented Invention, 851. 
 
 INVENTOR 
 
 Statute and General Statement, 6o3 
 See — Administrator, 98; Assign- 
 ment, 157, 930; Copartnership, 
 250; Death of Applicant, 280; 
 Employer and Employee, 327, 
 954- Joint Inventions, 654, 
 999; License, 687, 1004. 
 
 JOINT INVENTIONS 
 Brief Survey, 55 
 General Statement and Rules, bo4, 
 
 999 
 See — Letters Patent, 679, 1003. 
 
 JUDICIAL NOTICE 
 Brief Survey, 55 
 General Statement, 655 
 Common Knowledge, 655 
 Novelty, 656 
 Patentability, 656 
 Prior Art, 657 
 Public Use, 657 
 
 Records, 658 
 Miscellaneous, 658 
 See — Demurrer, 294. 
 
 JURISDICTION 
 Brief Survey, 56 
 The Statute, 658, 898 
 Contracts, 659, 999 
 Court of Claims, 662, 1000, (391) 
 District Judge, 662 
 Equity, f332) 
 
 Expiration of Patent Pendente 
 
 Lite, 662, 1000 
 Rule, 664, 1001 
 For Determining Profits and 
 Assessing Damages Only, 665 
 Miscellaneous, 666 
 Infringement, 668, 1001, (405) 
 Licensor and Licensee, 669, 1001, 
 
 (702) 
 Residence, 670, 1002 
 State Court, 670, 1002, (843) 
 Supreme Court, 671 
 See — Appeals, 138, 925; Decrees, 
 281; Equity, 332, 955; Plead- 
 ing, 718, 1009. 
 
 JURY TRIAL 
 
 Equity Cases — Question of Fact 
 — Statute, 899 
 
 LACHES 
 
 Brief Survey, 57 
 
 General Statement, 672, 899 
 
 Application, 672, 1002 
 
 Bringing Suit, 673, 1002 
 
 Excuses, 674 
 
 Injimction, 675, (477) 
 
 Reissue, 675, (790) 
 
 Miscellaneous Ruhngs, 675 
 
 See — Abandonment, 77, 915; De- 
 fenses, 284, 949; Disclaimer, 
 307, 951 ; Injunction, 477, 974. 
 
 LAW ACTIONS 
 
 Brief Survey, 57 
 
 General Statement, 676 
 
 Directing Verdict, 676 
 
 Findings, 677, 1003 
 
 Instructions, 678 
 
 Miscellaneous Rules, 678 
 
 See — Avpeals, 138, 925; Dam- 
 ages, 255, 947; Defenses, 284, 
 949; Evidence, 356, 961; In- 
 fringement, 405, 96G; Juris- 
 diction, 658, 999; Pleading 
 and Practice, 718, 1009.
 
 1040 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 LETTERS PATENT 
 
 Brief Survey, 58 
 
 Statutory Requirements, 679, 899 
 
 General Statement, 680 
 
 Construction, 680 
 
 Contract Theory, 680, 1003 
 
 Defective, 680 
 
 Definition, 681 
 
 Monopoly, 681, 1003 
 
 Nature of Grant, 684, 1004 
 
 Property Rights in, 685 
 
 Scope, 687 
 
 Miscellaneous Decisions, 687 
 
 See — Assignment, 157, 030; Co- 
 partnership, 250; Joint In- 
 vention, 654, 999; License, 
 687, 1004; Licensor and Li- 
 censee, 702; Reissue, 790, 1019; 
 Royalties, 825, 1022; Title, 
 847, 1025; Unpatented In- 
 ventions, 851. 
 
 LICENSE 
 
 Brief Survey, 59 
 
 Statutory Provision, 688, 902 
 
 General Distinction from Assign- 
 ment, 688 
 
 Assignment, 688, (157) 
 
 Construction, 689 
 
 Contract, 690 
 
 Estoppel, 691, (350) 
 
 Forfeiture, 692, 1004 
 
 Implied, 692 
 
 Machine, 695, (704) 
 
 Non-Assignable, 696, 1005 
 
 Parol, 696, 1005 
 
 Royalties, 696, 1005, (825) 
 
 Scope, 697, 1005 
 
 Termination. 698, 1006 
 
 Territorial, 699 
 
 Miscellaneous, 700, 1006 
 
 ^See — Administrator, 98; Assign- 
 ment, 157, 930; Copartner- 
 ship, 250; Corporations, 251, 
 945; Damages, 255, 947; De- 
 fenses, 284, 949; Employer 
 and Employee, 327, 954; Es- 
 toppel, 350, 958; Infringe- 
 ment, 405, 966; Injunction, 
 477, 974; Jurisdiction, 658, 
 999; Licensor and Licensee, 
 702; Royalties, 825, 1022; Sale 
 of Patented Article, 827, 1022. 
 
 LICENSOR AND LICENSEE 
 Right to Sue, 702 
 Title, 703, (847) 
 
 Miscellaneous, 704 
 
 See — Assignment, 157, 930; CO' 
 partnership, 250 ; Defeyises, 
 284, 949; Employer and Em- 
 ployee, 327, 954; Estoppel, 
 350, 958; Infringement, 405, 
 966; Injunction, 477, 974; 
 Jurisdiction, 658, 999. 
 
 LITHOGRAPHING AND EN- 
 GRAVING 
 Statutory Provision, 901 
 
 MACHINE 
 
 Statute and Definition, 704 
 
 Right to Use, 706 
 
 See — Anticipation, 106, 919; De- 
 signs, 298, 950; Destruction 
 of, 307; Infringement, 405, 
 966; Invention, 521, 981; 
 License, 687, 1004; Machine 
 and Process, 706, 1006; Ma- 
 chine and Product, 707 ; Proc- 
 ess, 737, 1011; Secret Process 
 or Machine, 827. 
 
 MACHINE AND PROCESS 
 Brief Survey, 61 
 General Rules, 706, 1006 
 See — Machine, 704. 
 
 MACHINE AND PRODUCT 
 
 Brief Survey, 61 
 General Rules, 707 
 
 MANUFACTURE (249) 
 
 Brief Survey, 61 
 
 Statute and General Statement, 708 
 
 Manufacture and Product, 708, 
 (707) 
 
 Novelty, 70S, 1006 
 
 Patentability, 709 
 
 See — Aggregation, 99; Art, 1.56 
 Composition of Matter, 249 
 Machine and Product, 707 
 Process, 737, 1011; Product, 
 747. 
 
 MARINE SERVICE 
 
 Adoption of Patented Article — 
 Statute, 902 
 
 MARKING ^' PATENTED " 
 
 Brief Survey, 62 
 The Statute, 710, 903 
 Rulings Under the Statute, 711, 
 1007
 
 GENERAL INDEX 
 
 1041 
 
 (References are to pages. Cross 
 
 MODELS 
 
 Statutory Provision, 903-904 
 
 MORTGAGE 
 
 General Statement and Rulings, 
 
 712 
 See — Assignment, 157, 930. 
 
 NOVELTY 
 
 Statutory Provision, 904 
 
 OATH 
 
 Brief Survey, 63 
 
 Statutory Requirements and General 
 
 Rule, 714, 905, 1009 
 Supplemental Oath, 714, 1009 
 See — Amendment, 102; Defenses, 
 
 284, 949. 
 
 OFFICIAL GAZETTE 
 Statutory Provision, 905 
 
 OPERATIVENESS 
 
 Brief Survey, 63 
 
 General Statement, 715 
 
 Decisions, 715 
 
 See — Anticipation, 106, 919; De- 
 fenses, 284, 949; Reduction to 
 Practice, 782, 1018; Reissue, 
 790, 1019. 
 
 PAPERS AND DOCUMENTS 
 Statute Providing for Printing, 905 
 
 PATENT OFFICE 
 
 Brief Survey, 63 
 
 The Statutes, 716, 906 
 
 Arbitrary Conduct, 716 
 
 Decisions of, 717 
 
 Rules, 717 
 
 Miscellaneous, 717, 1009 
 
 See — Adjudication, 92, 918- 
 Claims, 178, 932; Commis- 
 sioner of Patents, 247; In- 
 junction, 477, 974; Interfer- 
 ences, 517, 981; Invention, 
 521, 981; Res Judicata, 820, 
 1022. 
 
 PLEADING AND PRACTICE 
 
 Brief Survey, 64 
 General Statement, 718 
 Amendment, 718 
 BillofReview, 719, 1009 
 
 i-references are enclosed in parentheses) 
 
 Demurrer, 721 
 
 Infringement, 721, (405) 
 
 Laches, 722 
 
 Multifariousness, 722, 1009 
 
 Notice, 722, 1009 
 
 Parties 
 Complainant, 724 
 Defendant, 726 
 Joinder, 726 
 
 Patentability, 728 
 
 Pleas, 728, (88) 
 
 Profert, 728 
 
 Replication, 729 
 
 Sufficiency, 729, 1010 
 
 Suit on Plurality of Patents, 729, 
 1010 
 
 Supplemental Bills, 730, 1010 
 
 Title, 731, 1010, (847) 
 
 Miscellaneous Rules, 731, 1010 
 
 See — Abatement, 88; Actions, 89, 
 917; Adjudication, 92, 918; 
 Appeals, 13S, 925; Arbitra- 
 tion, 156; Comity, 242, 943; 
 Costs, 252, 945; Damages, 
 255, 947; Decrees, 281; De- 
 fenses, 284, 949; Demurrer, 
 294, 949; Equity, 332, 955; 
 Estoppel, 350, 958; Fraud, 
 388; Infringement, 405, 966; 
 Injunction, 477, 974; hiter- 
 ferences, 517, 981; Interfering 
 Patents, 520: Jurisdiction, 
 658, 999; Laches, 671, 1002; 
 Law Actions, 676, 1003; Mark- 
 ing "Patented," 710, 1007; 
 Profits, 748, 1012; Rehearings, 
 789; Reopening Case, 818; Res 
 Judicata, 820, 1022. 
 
 PRIORITY 
 
 Brief Survey, 64 
 
 General Statement, 734 
 
 Evidence, 734, (356) 
 
 Interference, 734, (517) 
 
 Reduction to Practice, 735, (782) 
 
 Miscellaneous Holdings, 736, 1011 
 
 See — Anticipation, 106, 919; Di- 
 visional Patenting, 315, 953; 
 Double Patenting, 322, 954; 
 Evidence, 356, 961; Experi- 
 ment, 375, 962; Foreign Pa- 
 tent, 379, 962; Improvement, 
 392, 965; Interferences, 517, 
 981; Interfering Patents, b2{); 
 Invention, 521, 981; Reduc- 
 tion to Practice, 782, 1018.
 
 1042 GENERAL INDEX 
 
 (Referencea are to pages. Cross-referencea are enclosed in parentheses) 
 
 PROCESS 
 
 Brief Survey, 64 
 
 General Statement, 737 
 
 Claims, 738, (178) 
 
 Definitions, 738 
 
 Equivalents, 739, (334) 
 
 Mechanical, 740, 1011 
 
 Old Elements, New Result, 742 
 
 Patentability, 742, 1012 
 
 Process and Product 
 Claims for, 744, (178) 
 Patentability, 744 
 
 Miscellaneous Rulings, 745 
 
 See — Anticipation, 106, 919; Art, 
 156; Claims, 178, 932; Com- 
 position of Matter, 249; Equiv- 
 alents, 334, 953; Infringe- 
 ment, 405, 966; Invention, 521, 
 981; Machine and Process, 
 106, 1006; Manufacture, 708, 
 1006; Secret Process or Ma- 
 chine, 827; Specification, 829, 
 1023. 
 
 PRODUCT 
 
 Brief Survey, 65 
 Patentability, 747 
 Miscellaneous Rules, 748 
 See — Composition of Matter, 249; 
 Infringement, 405, 966; Ma- 
 chine and Product, 707; Man- 
 ufacture, 708, 1006; Sale of 
 Patented Article, 827, 1022. 
 
 PROFITS 
 
 Brief Survey, 65 
 
 Statutory Provisions, 749, 907 
 
 General Statement, 749 
 
 Accountings, 750 
 
 Deductions 
 
 General Expenses — Not Proper, 
 751 
 
 Losses, 752 
 
 Manufacturer's Profits, 752, 
 1012 
 
 Rules, 753 
 
 Salaries, 753 
 
 Miscellaneous, 753 
 Definition, 754 
 Interest, 754 
 
 Master in Chancery, 755, 1012 
 Measure of 
 
 Actual Gains, 756, 1012 
 
 Entire Profits, 759, 1013 
 
 Rules, 760 
 
 Savings by Use, 760, 1013 
 
 Trustee Ex Maleficio Rule, 761, 
 
 1014 
 Miscellaneous Rules, 762 
 Segregation 
 
 Burden of Proof, 763, 1014 
 Failure to Make, 765 
 General Rules, 765, 1014 
 Miscellaneous Rules, 769, 1017 
 Miscellaneous Rules Concerning 
 
 Profits, 770, 1018 
 See — Damages, 255, 947; De- 
 signs, 298, 950; Jurisdiction, 
 658, 999; Marking " Pa- 
 tented," 710, 1007; Reissue, 
 790, 1019; Royalties, 825, 1022; 
 Statute of Limitations, 845. 
 
 PROTESTS 
 General Statement, 771 
 See — Interferences, 517, 981. 
 
 PUBLICATIONS 
 
 Provided for by Statute, 909 
 
 PUBLIC USE 
 
 Brief Survey, 67 
 
 The Statute and General Statement, 
 772 
 
 Evidence, 773, (356) 
 
 Experiment, 773, 1018, (375) 
 
 Foreign Use, 775 
 
 General Rules, 775 
 
 Publicitv, 778 
 
 Secret Use, 779 
 
 Single Use, 779, 1018 
 
 Two Years Use, 780 
 
 Miscellaneous Rules, 781 
 
 See — Abandonment, 77, 915; An- 
 ticipation, 106, 919; Defenses, 
 284, 949; Experiment, 375, 
 962; Judicial Notice, 655; 
 Priority, 733; Public Use 
 Proceedings, 782; Reissues, 
 790, 1019; Secret Process or 
 Machine, 827; Unpatented 
 Invention, 851. 
 
 PUBLIC USE PR0CEEDl5s^GS 
 General Statement, 782 
 See — Interference, 517, 981 ; Pub- 
 lic Use, 772, 1018. 
 
 REDUCTION TO PRACTICE 
 
 Brief Survey, 68 
 General Statement, 782 
 Diligence, 787, 1018
 
 GENERAL INDEX 
 
 1043 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 REDUCTION TO PRACTICE — 
 
 (Continued) 
 
 Essential to Patentability, 787, 
 lOlS 
 
 Experiment, 788, (375) 
 
 Last Step Rule, 788 
 
 Operativeness, 788 
 
 Priority, 788 
 
 What Constitutes, 789 
 
 See — Experiment, 375, 962; Op- 
 erativeness, 715; Priority, 733', 
 Public Use, 772, 1018. 
 
 REHEARINGS 
 
 General Statement, 789 
 
 See — Adjudication, 92, 918; Ap- 
 peals, 138, 925; Pleading and 
 Practice, 718, 1009; Reopen- 
 ing Case, 818. 
 
 REISSUES 
 
 Brief Survey, 69 
 The Statute, 782, 902 
 Abandoned Claim, 791, (77) 
 Broadening 
 
 Not Permissible — In General, 
 
 791, 1019 
 When Permissible — Omitting 
 
 Elements, 798 
 When Permissible, 799, 1020 
 Miscellaneous Rules, 801 
 Delay 
 Excusable, 802 
 Fatal, 802 
 General Rules, 804 
 Intervening Rights, 806 
 Miscellaneous Rules, 806 
 Decisions of Commissioner, 806, 
 
 1021 
 Different Invention, 808, 1021 
 Disclaimer, 808, (.307) 
 General Rules, 808, 1021 
 Grounds for, 810, 1021 
 Inadvertence, Accident, or Mis- 
 take, 810, 1021 
 Scope of, 812 
 
 Surrender — Effect of, 812, 1022 
 Tests of Validity, 81-1 
 Miscellaneous Rules, 815 
 See — Assignment, 157, 930; Com- 
 missioner of Patents, 247; De- 
 fenses, 284, 949; Disclaimer, 
 307, 951; Divisional Pateiit- 
 ing, 315, 953; Double Patent- 
 ing, 322, 954; Fraud, 388; In- 
 frijigement, 405, 966; Laches, 
 671, 1002. 
 
 REOPENING CASE 
 
 Brief Stirvey, 70 
 After Decree on Appeal, 818 
 Newly Discovered Evidence, 818 
 Miscellaneous Eules, 820 
 See — Adjudication, 92, 918; Ap- 
 peals, 138, 925; Decrees, 281; 
 Pleading and Practice, 718, 
 1009; Rehearings, 789. 
 
 RES JUDICATA 
 
 Brief Survey, 71 
 Conclusiveness, 820, 1022 
 Former Suit, 822 
 Patent Office Decisions, 824 
 Miscellaneous Rules, 825 
 See — Adjudication, 92, 918; Com- 
 ity, 242, 943; Estoppel, 3.50, 
 958; Injunction, 477, 974; 
 Interferences, 517, 981; Plead- 
 ing and Practice, 718, 1009. 
 
 ROYALTIES 
 
 Brief Survey, 71 
 
 General Statement and Decisions, 
 825, 1022 
 
 See — Assignment, 157, 930; Dam- 
 ages, 255, 947; License, 687, 
 1004; Profits, 748, 1012. 
 
 RULES AND REGULATIONS 
 
 Patent Office — Statutory Provis- 
 ion, 912. 
 
 SECRET PROCESS OR MA- 
 CHINE 
 
 General Rule, 827 
 See — Abandonment, 77, 915; Un- 
 patented Invention, 851. 
 
 SALE OF PATENTED ARTICLE 
 General Statement and Holdings, 
 
 827, 1022 
 See — Assignryient, 157, 930; Li- 
 cense, 687, 1004. 
 
 SPECIFICATION 
 Brief Survey, 71 
 
 Statutory Requirements, 829, 912 
 General Statement, 829, 1023 
 Amendment, 830, (102) 
 Construction, 830 
 Defective, 832 
 Sufficiency 
 Accuracy, 834, 1023 
 Alternative Constructions, 838
 
 1044 GENERAL INDEX 
 
 (References are to pages. Cross-references are enclosed in parentheses) 
 
 SPECIFICATION — {Continued) 
 Ambiguity, 836, 1024 
 Distinguishing New from Old, 
 
 836, 1024 
 Equivalents, 837, (334) 
 Excessive, 837 
 Function, 837, (389) 
 Immaterial Error, 838 
 Old Parts, 838 
 Process, 838, (737) 
 Rules for Determining, 839, 1024 
 Scientific Knowledge, 841, 1024 
 Unambiguousness, 841 
 Two Inventions, One Patent, 842 
 Miscellaneous Rules, 842 
 See — 'f Amendment, 102; Attor- 
 neys, 177; Claims, 178, 932; 
 Defenses, 284, 949; Drawings, 
 326, 954; Oath, 714, lOOO.' 
 
 STATE STATUTES AND REGU- 
 LATIONS AFFECTING PA- 
 TENT RIGHTS 
 
 Brief Survey, 73 
 
 General Statement and Decisions, 
 843, 1024 
 
 See — Jurisdiction, 658, 999; Let- 
 ters Patent, 679, 1003; Sale 
 of Patented Article, 827, 1022. 
 
 STATUTE OF LIMITATIONS 
 
 General Statement and Decisions, 
 
 845 
 See — Damages, 255, 947; Profits, 
 
 748, 1012. 
 
 STATUTES RELATING TO PA- 
 TENTS — THE PATENT STAT- 
 UTE 
 
 The Patent Statute Digested ivith 
 Patent Office Annotations, 857- 
 914 
 
 Cross-Reference Table of Patent 
 Laios, 856*, 856** 
 
 Brief Survey, 73 
 
 General Statement, 846 
 
 Decisions Relating to the Stat- 
 utes, 846 
 
 SURVEY OF THE FIXED LAW 
 OF PATENTS 
 
 General Survey Chapter , pages 1- 
 76 
 
 THREATS 
 General Statement, 846, 1025 
 
 TITLE 
 
 Brief Survey, 74 
 
 General Statement, 847 
 
 Actionable, 847 
 
 Miscellaneous Rules, 848, 1025 
 
 See — Abatement, 88; Assignment, 
 157, 930; Bankruptcy, 178; 
 Corporations, 251, 945; De- 
 fenses, 284, 949; Injunction, 
 477, 974; Letters Patent, 679, 
 1003; License, 687, 1004; 
 Licensor and Licensee, 702; 
 Mortgage, 712; Pleading and 
 Practice, 718, 1009; Sale of 
 Patented Article, 827, 1022. 
 
 TRADE MARKS 
 General Statement and Cases Re- 
 lating to Patents, 849 
 
 UNFAIR TRADE 
 General Statement and Cases, 850 
 See — Pleading, 718, 1009. 
 
 UNPATENTED INVENTIONS 
 
 Brief Survey, 74 
 
 Statutory Provision, 851, 913 
 
 Assignment, 852 
 
 Construction or Sale Before Pa- 
 tent, 852 
 
 Employee, 852 
 
 Non-Assignable, 852 
 
 Miscellaneous, 853 
 
 See — Abandonment, 77, 915; Li- 
 cense, 687, 1004; Secret Proc- 
 ess or Machine, 827 
 
 UTILITY 
 
 Statutory Provision, 913 
 
 WITNESSES 
 Statutory Provision, 913 
 
 WORDS AND PHRASES 
 
 Brief Survey, 75 
 
 " Means," 853, 1025 
 
 " Substantially," etc., 853 
 
 " Whereby " Clause, ' 855 
 
 See — Claims, 178, 932; Equiva- 
 lents, 334, 956; Specification. 
 829, 1023.
 
 UNIVERSITY OF CALIFORNIA LIBRARY 
 
 Los Angeles 
 
 This book is DUE on the last date stamped below. 
 
 NOV 5 1969 
 
 OCT 11982 
 
 Form L9-Series 4939
 
 UC SOUTHERN REGIONAL LIBRARY FACILITY 
 
 AA 000 758 264 6
 
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