and the equity of Pfeil is fully satisfied by the use of the patented ap. paratus on the "Rainbow."

Let a decree be drawn in favor of the plaintiffs in accordance with the views expressed in this opinion.

[Supreme Court of the District of Columbia.!

MARVIN v. LILLIE.

Decided May 31, 1867.

27 O. G., 299.

1. It is against the spirit and letter of the law to grant an independent patent to an applicant for an invention shown and described, though not claimed, in a prior patent issued to the same person.

2. The pretext that no claim was made to the invention in the original patent will not avail, since the law provides for the amending of patents by enlargement or restriction, or even by division of the subject-matter.

3. No interference can lie except as between claimants of the same invention. If an applicant claims that which is shown in a previous patent, the patentee should be notified of it and an opportunity first offered to him to lay claim to the invention.

APPEAL from the Commissioner of Patents.

OLIN, J.:

This is nominally an interference case in which the question of priority alone should be at issue; but the appeal is taken on grounds which, if sustained, vitiate the proceedings under the interference. It is proper, therefore, that I should inquire into these grounds.

It appears from the papers in the case, and it is not denied by the counsel for the appellee, that the invention now sought to be patented and claimed in the application in interference is shown and described in the patent issued to L. Lillie, the appellee, on August 8, 1865. Such being the case, I am of opinion that an application for an independent patent cannot be entertained. It is contrary to the spirit and, I believe, the letter of the law to grant a new patent to an applicant who has already obtained one for the same invention. The pretext that he did not specifically claim the device he might have claimed in the original patent will not avail, since the law provides for the amending of patents by enlargement or restriction, or even by division of the subjectmatter of any patent at any time during the term for which it is granted. The first reason of appeal is therefore sustained.

As to the second reason of appeal: On comparison of the claims of Marvin and of Lillie no conflict is apparent. Marvin claims a combination of devices which is not claimed by Lillie; but the construction given to Lillie's claim is such as to embrace a feature shown but not

claimed by Marvin. This interference, therefore, is declared between two parties who do not claim the same thing.

In my opinion no interference can lie except as between claimants of the same invention. If, as in this instance, an applicant claims that which is shown in a previous patent, the patentee should be notified of it and an opportunity first offered to him to lay claim to the invention. This seems to me to be the safe rule; for the patentee may either acknowledge that the particular feature in question is not his invention, but that of the claimant, and if so there would be no occasion for an interference; or he may show that the thing had been in public and common use for many years, and therefore had become public property; or he may assert his right to it by filing in the regular form a claim, and then an interference would be in order, not otherwise.

The second reason of appeal is sustained so far as the first clause is concerned. In view of the fundamental errors pointed out in the initi atory proceeding in this case, I deem it unnecessary to say anything on the question submitted under the third reason of appeal.

Upon the whole I am of opinion that the decision of the Commissioner of Patents in deciding the interference between Lillie and Marvin in favor of Lillie is erroneous; and I do, this 31st day of May, 1867, sustain the appellant's first and second reasons of appeal, and reverse the judgment of the Commissioner; and I do further adjudge and order that the said interference be dissolved, and that the application of the said Lillie be finally rejected.

[United States Circuit Court-District of California.]

CAHN v. WONG TOWN ON.

Decided February 4, 1884.

27 O. G., 299.

COMBINATION OF SEPARATE DEVICES-SUB-COMBINATION.

The fact that a device comprising several patentable elements. has been patented as a whole will not prevent the patentee from afterward securing a patent for a combination of any number of the elements less than the whole, provided he applies for it before the lesser combination has been two years in public use.

Mr. M. A. Wheaton for the complainant.

Mr. J. L. Boone contra.

SAWYER; J. (orally):

This action is upon a patent. The patent consists of lapping over two pieces of leather in making the seam of a boot or any other work of the kind, running a line of rivets along, and then a line of stitching on each side of the line of rivets, so as to make a compact, tight seam. The plea sets up that the patentee in this case on a prior occasion procured a pat

ent, and that this other and prior patent is for the same thing with the addition of a piece of india-rubber inserted between the two pieces of leather. The strip of india-rubber having been inserted, a line of rivets is run along with two lines of stitching-one on each side of the line of rivets in the same manner as in the second patent. The defendant claims that the second patent is not a new invention; that it is merely a combination of a part of the elements of the first patent, or of the prior invention, and therefore that the second patent is void as not covering a new invention. I think probably that would be the case if the patentee were a different inventor. If the patentee in the prior patent had been a different person from the patentee in the second, I am inclined to think 80. But the prior patentee is the same man, and doubtless if he had made the invention at the time he obtained his first patent he might have got a patent for the sub-combination, omitting one element, the slip of india rubber; and it does not appear in the plea that this second invention has been in public use or on sale for more than two years, whereby it would be abandoned to the public. The inventor failed, therefore, if he is the inventor of both at the same time, to obtain a patent for all he was entitled to. If he was the inventor at that time he was entitled to patent the second or sub combination of elements, omitting the inserted strip of india-rubber, as well as the first-combining all the elements. He might, perhaps, have got a reissue covering both if his invention of the sub-combination is sufficiently indicated in the specification of the first patent; but he has chosen to obtain an independent patent for the sub-combination. If he invented it at the same time with the other, he might undoubtedly have obtained a patent in the first instance. I think if it was patentable with the additional element of the india-rubber, the sub-combination without the addition of the india rubber, invented at the same time, would be patentable. Justice Field says in the Giant Powder Case (4 Fed. Rep., 720; 5 Fed. Rep., 197) that this is the proper mode of proceeding when there is another invention for which an independent patent might have been obtained but has been omitted. If he was the inventor of both, he was entitled to patent both-the sub-combination without the strip of india-rubber as well as the entire combination of the lapping of the leather and the intervention of a piece of indiarubber to make the seam tighter, and better still in combination with the line of rivets and line of stitching on each side of it. He being the first person to invent both, I think it was patentable as to, both. He doubtless did invent the sub-combination as well as the entire combination at the same time. He embraced the sub-combination in the last patent without the additional element intervening; and it does not appear that it was on sale for two years before the application for the last patent. I think the plea, then, should be overruled. And it is so ordered.

[United States Circuit Court-District of New Jersey.]

DOYLE v. SPAULDING ET AL.

ILLINGWORTH v. SAME.

Decided March 15, 1884.

27 O. G., 300.

1. The use or kuowledge of the use of an invention in a foreign country by persons residing in this country will not defeat a patent which has here been granted to a bona fide patentee, who at the time was ignorant of the invention or its use abroad.

2. Letters Patent No. 166,700, granted August 17, 1875, to Illingworth, and No. 99,299, granted February 1, 1870, to Patrick Doyle, construed, sustained, and held to be infringed by machines used under Letters Patent No. 240,727, granted April 26, 1881, to Spaulding et al., as assignee of Alfred E. Jones.

Mr. J. C. Clayton for the complainants.

Mr. Francis Forbes, with whom was Mr. A. Q. Keasbey, for the defendants.

NIXON, J.:

These two cases will be considered together for reasons which will hereinafter appear.

On March 5, 1881, the complainant, Illingworth, commenced a suit in this court against the defendants for infringement of Letters Patent No. 166,700, dated August 17, 1875, for improvement in molds for ingots.

The defendants answered, setting up, among other things, that said letters patent were void (1) on account of prior knowledge and use of the alleged invention; (2) because every substantial and material part of the invention was described and claimed in Letters Patent No. 99,299, and granted to one Patrick Doyle, February 1, 1870, for improvement in molds for making combined ingots of steel and iron, and in English Letters Patent No. 3,801, issued to William Moore by the Queen of Great Britain and Ireland, dated November 21, 1873, and sealed May 19, 1874; and (3) denying the right of the complainant to recover because the defendants were the assignees and owners of Letters Patent No. 240,727, granted to one Alfred E. Jones, and were entitled to use the invention therein described and shown, notwithstanding the letters patent of complainant on which the suit was brought.

It appears in the testimony that for several years previous to the filing of the bill two of the defendants, Fitzsimmons and Jennings, were in the employ of the complainant's firm, and they became familiar with the use of molds made under the Doyle patent, which is set up as anticipating the alleged invention of Illingworth. It also appears that the complainant used the Doyle patent for several years previous to 1875 in the manufacture of iron and steel ingots, the inventor, Doyle, during the time being in business with the complainant; that the above patent was obtained by Illingworth in view of the fact that Doyle was about going out of the firm, after which it was supposed that the con

tinued use of his patent would not be allowed, and that he went out and remained away from the complainant from 1875 to 1880, when he returned and became the superintendent of his works.

On the 7th of May, 1881, Patrick Doyle began his suit against the defendants for the infringement of the letters patent which had been set up in the former action as an anticipation of the Illingworth patent. The answer of the defendants denies (1) that Doyle was the original and first inventor of the improvements therein claimed, and (2) alleges that every substantial and material part of the invention was known to several persons now residing in this country, and by whom it had been used in Sheffield, England, during their residence there. Pending the taking of testimony in these suits, two applications were made to the court by the respective parties-one by the defendants in the Illingworth suit, asking that they might be allowed to amend their answer by inserting the allegation that the invention claimed by Illingworth was known to certain persons residing in this country, who used it in the city of Sheffield, England, before coming hither, and the other by the complainant in the Doyle suit, who moved to strike out the said allegation in the answer filed therein. The question involves the interpretation of the clause "not known or used by others in this country" in section 4886 of the Revised Statutes, which first appeared in section 24 of the act of July 8, 1870, and which had never received judicial construction.

Being willing to afford the parties an opportunity without embarrassment to correct any mistake which the court might fall into in deciding a matter of first impression, we allowed the allegation to stand in the answer in the Doyle suit and to be inserted in the Illingworth answer, and directed the parties to make their proofs of the facts and to present their views more fully at the final hearing. (See Illingworth v. Spauld ing et al., 9 Fed. Rep., 611.)

After a careful consideration of the three sections of patent act which bear upon the subject-sections 4886, 4920, and 4923 of Revised Statutes-we are of the opinion that the use or a knowledge of the use of an invention in a foreign country by persons residing in this country will not defeat a patent which has here been granted to a bona fide patentee, who at the time was ignorant of the existence of the inven. tion or its use abroad.

When the parties began to take the proofs they united in a stipulation that the evidence should be entitled in both causes and that the two should be argued together. The defendants also admitted in writ ing in each of the cases that before the commencement of the suits, and since the granting of the letters patent, respectively, they had manufactured combined ingots of iron and steel in the following manner and for the following purposes: