of the "Bayonet Vise," the "Michigan Southern," and the "Beebee & Smith," which were adjudged to be non-infringing machines. The total amount of profits arising from the use of all the machines, infringing and non-infringing, was settled, and the judgment of the court was that the profits had properly been estimated by comparing the cost of mending on the machines with the cost of inending on a common anvil. This was found to be about 36 cents per foot mended in favor of the machines. (Page 709.) Nothing was left open for further inquiry but the amounts of the former recoveries for the use of the non-infringing machines. It was quite right therefore for the circuit court, when the cases went 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 rendered had been made by the use of the non-infringing machines. This the master attempted to do, and in the case of the Illinois Central Company there is no doubt in our miu'ls that the conclusion he reached was entirely correct. In fact, we do not understand that this is disputed. It is argued that a sufficient allowance was not made in the accounting for cut rails, but that question was settled by the original decree, and could not be re-examined on this reference. The inquiry now is limited to the amount of mending done by the use of the non-infringing machines and its comparative cost.

In the case of the Michigan Southern and Northern Indiana Company the evidence is not as satisfactory as in that of the Illinois Central. The shop-books in which the accounts for repairing rails were kept, if kept at all, were not produced, and had probably been destroyed, as of no value, before the accounting took place. In their absence it is difficult to determine with accuracy what the facts were, but upon full consideration we are satisfied the circuit court did not in its decree underestimate the amount of deduction to be made in favor of this company.

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 for error. As a general rule a patentee is not entitled to interest on profits made by an infringer. The reason is that profits are regarded in the light of unliquidated 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; Littlefield v. Perry, 21 Wall., 230. Here, as has been seen, in effect the original decrees rendered in July, 1874, were affirmed in 1876, 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 1874. That was settled in Railroad Company v. Turrill (101 U. S., 836), which

was one of the cases affirmed in whole at the former hearing in this court. Under these circumstances it seems to us not all inequitable to allow interest on the corrected amounts from the date of the master's report in 1879. The cases are entirely different in this particular from what they would have been if the original decrees had been reversed for error in the principles of the accounting. Those decrees may very properly be considered as affirmed in part and reversed in part, the new reference being had only to find out the exact extent of the reversals. Since the present appeals were taken the patentee has died, and the appellants now suggest 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 every day 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.

The decree in each of the cases is affirmed.

Mr. Justice Blatchford did not sit in these case, and took no part fu their decision.

[United States Circuit Court-Southern District of Iowa.]

ANDREWS ET AL. v. HOVEY.

Decided May 9, 1883.

26 O. G., 1011.

What the causes were that led to a long silence on the part of the patentee are not so material as the fact itself that he made public the knowledge and use of his invention, and then for four years remained wholly silent and took no action for the procurement of a patent: Held, that under the circumstances the invention must be regarded as dedicated or abandoned to the public.

Patent No. 73,425, January 14, 1868, and Reissue No. 4,372, May 9, 1871, granted to Nelson W. Green, construed, compared, and the reissue held to cover an invention different from that embraced in the original patent, and to be therefore void.

It being true that in 1849 and 1850 wells were driven at Milwaukee by a process not distinguishable from that devised by the patentee in 1861, and these wells were driven, not as mere experiments, nor for the purpose of exhibition, but for public and continuous use, it is held that the defense of want of novelty is sustained.

STATEMENT OF THE CASE.

This suit, with a large number of others against other defendants. now pending in this court, is based upon Reissue Letters Patent No. 4,372, granted to Nelson W. Greeu, one of the complainants, under date of May 9, 1871, the original patent, No. 73,425, bearing date January 14, 1868, and having been issued for an improved method of constructing artesian wells.

9373 PAT-—9

The bill alleges au infringement ou part of the defendant, and prays for an injunction, accounting damages, and further relief.

The answer, in substance, denies that Green was the original inventor of the alleged improvement; avers that the alleged invention was known and in public use for more than two years prior to the date of the original letters patent; that Green, if he was an original inventor, aban. doned his invention and knowingly permitted its public use for more than two years before applying for a patent; that the reissue is a departure from the original letters patent and embraces different and more extensive claims than are covered by the original, and also denies that defendant has infringed upon the rights and invention held and owned by the complainants.

As already stated, there are pending in this court a large number of causes brought by the complainants for alleged infringements upon their rights, and in the district of Minnesota similar suits are pending, in which the issues are substantially the same.

For convenience' sake it was agreed that these causes should be heard at one and the same time before the judges of the district of Minnesota and the districts of Iowa, and accordingly at the October term, 1882, of this court such hearing was had and the questions at issue were fully and ably presented both in print and by oral argument before the court. At that time there was pending before the Supreme Conit at Washington the case of Wahl v. Hine, on appeal from the district of Indiana, in which cause this same patent was invoived, and it was hoped the decision of that case would give us a final and authoritative decision upon the more important questions discussed in this

court.

When the judgment in Wahl v. Hine was announced, however, it ap peared that the judges were equally divided in opinion therein, eight only of the members of that court having sat in the case, and hence no opinion upon the merits was reached or announced in that cause.

It became, therefore, the duty of this court to consider the questions submitted, unaided by the decision in Wahl v. Hine, aud we have endeavored to give them the consideration which their importance demands. Upon many of the questions involved a very large amount of evidence has been adduced, and the questions of law and fact have been ably argued and presented by the counsel in the case.

Messrs Sioneman, Rickel & Eastman, Messrs. Hubbard, Clark & Dawley, Mr. A. R. West, and Messrs. Rogers & Rogers, for the complainants. Messrs. Lake & Harman and Messrs. Wilson & Gale for the defend

ants.

SHIRAS, D. J.:

Assuming for the present that Nelson W. Green is entitled to the credit of being the inventor of what is commonly known as the "driven well," we shall first consider the defense of abandonment-that is

to say, the averment that he allowed the use of his invention to become part of the property of the public without asserting his right to a patent for the protection of his rights as an inventor.

In the case of Shaw v. Cooper (7 Peters, 292) it was held that

Vigilance is necessary to entitle an individual to the privileges secured under the patent law. It is not enough that he should show his right by invention, but he must secure it in the mode required by law; and if the invention, through fraudu. lent means, should be made known to the public, he should assert his right immediately and take the necessary steps to legalize it.

The patent law was designed for the public benefit as well as for the benefit of inventors. * No matter by what means an invention may be communicated to the public before a patent is obtained, any acquiescence in the public use by an inventor will be an abandonment of his right. If the right were asserted by him who fraud. ulently obtained it, perhaps no lapse of time could give it validity; but the public stand in an entirely different relation to the inventor. The invention passes into the possession of innocent persons, who have no knowledge of the fraud, and, at a considerable expense, perhaps, they appropriate it to their own use. A strict construction of the act, as it regards the public use of an invention before it is patented, is not only required by its letter and spirit, but also by sound policy. The doctrine of presumed acquiestence, where the public use is known or might be known to the inventor, is the only safe rule which can be adopted on this subject. Whatever may be the intention of the inventor, if he suffers the invention to go into public nse through any means whatever without an immediate assertion of his right, he is not entitled to a patent, nor will a patent obtained under such circumstances protect his right.

In the case of the Consolidated Fruit Jar Company v. Wright (94 U. S., 96) it is said that

The inventor must comply with the conditions prescribed by law. If he fails to do this he acquires no title, and his invention or discovery, no matter what it may be, is lost to him, and is henceforward no more his than if he had never been in any wise connected with it. It is made thereupon, as it were, by accretion irrevocably a part of the domain which belongs to the community at large.

From the evidence in the cause it appears that in the summer of 1861 Nelson W. Green was a resident of Cortland, N. Y.; that he was engaged in drilling and organizing volunteers for the Army, and especially in connection with the Seventy-sixth Regiment of New York Infantry, of which regiment he was appointed colonel. That while thus employed his attention was called to the subject of procuring pure water for the use of his men, and that he set about to devise a means by which water could be readily procured from beneath the surface of the earth, thus avoiding danger from poisoned wells and springs, and also from the risk of being cut off from access to the ordinary sources of supply when in the presence of the eneiny.

The patentee himself testifies that in the summer of 1861 he had devised in his own mind a method of accomplishing this result, which he explained first to his drill squad, and then to the officers of his regiment, and which consisted in driving a rod sharpened at the end into the ground, and into the water-bearing stratum, then withdrawing the same and inserting a tube, througo which the water could be drawn by any

ordinary style of pump. As a test of the method proposed, under the direction of Colonel Green, an experiment of driving a rod down to the water was made near his house, and this experiment was followed by driving a well at the fair-grounds at Cortland, at the expense and for the use of one Graham, who had the contract for furnishing food and other supplies at the camp on the fair-grounds. This well was driven between the 1st and 15th of October, 1861, and was used generally by the men in camp, as well as by Graham and his employés.

We further find in the testimony of Colonel Green the following: Question 60. After this experiment at the house, and the making and use of the well at the fair-grounds, what was your opinion as to the practicability of making wells by that process, either for general use or for the purpose of the Army, as you had originally intended ?—Answer. The result of the two experiments referred to had upon my mind the effect to convince me of the entire practicability and feasibility of the process for all the purposes named in the question.

Q. 61. Did you take any steps, give any orders or directions for the procurement of material to be taken with your regiment into the field for the purpose of miking wells to supply that regiment with water, wherever it might be situated?-A. I gave Lientenant Mudge orders to procure such material for the purposes named and gave Adjutant Robinson orders to furnish him with transportation for the same, and when at Albany made arrangements with the quartermaster-general for the transportation of that material with the regiment when it went to the front.

By the testimony of the patentee himself it is shown that the inven tion claimed by him was perfected in conception in the summer of 1861, was demonstrated to be a success by practical use in October, 1861; that the patentee caused the necessary apparatus to be procured to be taken with the regiment for its use when it moved to the seat of war, and arranged with the authorities at Albany for the transportation needed therefor. The testimony of the patentee shows beyond the possibility of a doubt that his object and purpose in 1861 was to provide a means of supplying the men under his care with pure water and protecting them from the danger to be apprehended from the polluted or poisoned springs and wells, or from being cut off by the enemy from access to the usual sources of supply, and to this end he caused the apparatus to be used in driving wells to be procured and transportation therefor to be provided. The sinking of the well at the fair-grounds at Cortland, and the providing the means for driving these wells whenever and wherever they might be needed by the regiment, establishes beyond question the intent on part of Colonel Green that this invention should be publicly and commonly used by his regiment at any and all times and places. His own testimony shows that he explained his invention and the means of carrying it into effect, first to his drill-squad, and then to the officers of his regiment, and subsequently consented to the sinking and public use of the well at the camp-ground, and yet he never cautioned any one to keep the method a secret, nor is it shown that in 1861 he ever mentioned to any one the idea of obtaining a patent, or that he purposed doing so, or that he took any action looking to that end. All that he did tended to spread the knowledge of the mode of making these wells and of the